Sur La Table, Inc.v.Myra Colby d/b/a Myra Designs

Trademark Trial and Appeal Board

May 22, 2009

No. 92047883 (T.T.A.B. May. 22, 2009)

Mailed: May 22, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE _______ Trademark Trial and Appeal Board _______ Sur La Table, Inc. v. Myra Colby d/b/a Myra Designs _______ Cancellation No. 92047883 _______ Shelley M. Hall of Stokes Lawrence, P.S. for Sur La Table, Inc. Myra Colby, pro se. _______ Before Walters, Bucher and Wellington, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Sur La Table, Inc. (“petitioner”) filed a petition to cancel the registration of Myra Colby (“respondent”) for the mark KISS THE COOK [in typed character format] for “wash cloths, towels, pot holders, and hot pad mittens,” in International Class 24 and “T-shirts, aprons, and chef hats” in International Class 25.1 1 Registration No. 1251618, issued September 20, 1983, and renewed in 2003. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Cancellation No. 92047883 2 As grounds for cancellation, petitioner asserted that respondent has abandoned her registered mark and that she fraudulently renewed the registration. Respondent, in her answer, denied the salient allegations in the complaint. However, respondent did state in her answer that she “concedes that [petitioner] is a big corp.” in response to petitioner’s allegation that, inter alia, “petitioner is a well-known, multi-million dollar retail company offering a wide range of products and services, including...kitchen appliances, kitchen utensils,...table linens, kitchen towels...and household furnishings...” (Pet. to Cancel, para. 2; Answer, para. 2.) In view of this response and that respondent did not deny any of the allegations, we deem this as an admission to all allegations contained in paragraph 2 of the Petition to Cancel. See Fed. R. Civ. P. 8(b); Trademark Rule 2.114(b)(1), 37 C.F.R. § 2.114(b)(1).2 Only petitioner filed a trial brief in this case. The Record The evidence of record automatically includes the pleadings and the file of the subject registration.3 2 In particular, Fed. R. Civ. P. 8(b)(6) provides in pertinent part: “An allegation - other than one relating to the amount of damages - is admitted if a responsive pleading is required and the allegation is not denied.” 3 Petitioner submitted exhibits with its petition to cancel. Exhibits to pleadings are not evidence and will not be considered unless they are properly introduced in evidence. Rule 2.122(c). Accordingly, we have not considered these materials. Cancellation No. 92047883 3 During its testimony period, petitioner filed a notice of reliance on the following materials: a copy of petitioner’s First Requests for Admission (and exhibits thereto); printouts from petitioner’s website “which shows Petitioner’s use of the phrase Kiss the Cook”; and a copy of “a Cease and Desist letter dated December 8, 2006 from counsel for Registrant to Petitioner.” As to petitioner’s website printouts submitted with the notice of reliance, it is well settled that Internet printouts are not self-authenticating and are “not proper subject matter for introduction by means of a notice of reliance under Trademark Rule 2.122(e).” Plyboo America Inc. v. Smith & Fong Co., 51 USPQ2d 1633, 1634 n.3 (TTAB 1999). See also Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1134 (TTAB 2000); and Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998). Likewise, the copy of the “Cease and Desist” letter is not proper matter for submission by way of notice of reliance alone because it is not self-authenticating and no testimony regarding this letter has been submitted (in fact, no testimony whatsoever has been submitted). In view of the above, the Internet printouts and letter submitted by way of petitioner’s notice of reliance are not in evidence and have not been considered. Cancellation No. 92047883 4 Finally, as to the petitioner’s First Requests for Admission, petitioner argues that respondent has not responded in spite of receiving an extension of time. Insofar as respondent has not responded to petitioner's requests for admissions, nor filed a motion to withdraw or amend those admissions, they are effectively admitted by rule and those matters are thus “conclusively established.” Fed. R. Civ. P. 36(b). Respondent’s admissions establish the following: • that respondent’s mark KISS THE COOK was not is use by respondent in interstate commerce as a trademark on or in connection with T-shirts, aprons, and chef hats for each and every year from 1977 to 2007;4 • that respondent’s mark KISS THE COOK was not in use by respondent in interstate commerce as a trademark on or in connection with wash cloths, towels, pot holders, and hot pad mittens for each and every year from 1981 to 2007;5 • that respondent has not used her KISS THE COOK mark in interstate commerce as a trademark on T-shirts, aprons and chef hats continuously since August 31, 1977;6 and • that respondent’s mark KISS THE COOK is “a common English phrase, which appears ubiquitously in the marketplace on kitchen-related items.”7 No testimony or evidence was submitted by respondent. Standing Although it is petitioner’s burden to establish its standing, we note that respondent has not challenged 4 Admission Requests Nos. 7-9 5 Admission Requests Nos. 10-13 6 Admission Request No. 14 Cancellation No. 92047883 5 petitioner's standing. Moreover, respondent has admitted (in her answer) that petitioner is essentially a competitor because petitioner is a retail company offering for sale kitchen-related items, including some of the same and/or related products as those identified in the subject registration. That admission, combined with respondent’s admission that her mark KISS THE COOK is “a common English phrase, which appears ubiquitously in the marketplace on kitchen-related items” demonstrates that petitioner is not a “mere intermeddler” and that it has standing to petition to cancel respondent’s mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); see also Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). We turn now to the abandonment ground for cancellation. Abandonment The Trademark Act provides for the cancellation of a registration if the registered mark has been abandoned. See Section 14 of the Trademark Act, 15 U.S.C. §1064. Under Section 45 of the Trademark Act, 15 U.S.C. §1127, a mark is considered abandoned when “its use has been discontinued with intent not to resume such use.” The definition of abandonment is found in this provision, as follows: A mark shall be deemed to be "abandoned" if either of the following occurs: 7 Admission Request No. 30 Cancellation No. 92047883 6 (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. … See 15 U.S.C. §1127. Because registrations are presumed valid under the law, the party seeking to cancel a registration on the ground of abandonment bears the burden of proof to establish the case by a preponderance of the evidence. See On-Line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); and Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989). If petitioner makes a prima facie case of abandonment, the burden of production, i.e., going forward, then shifts to the registration holder to rebut the prima facie showing with evidence. Cerveceria v. Cerveceria, Id. Based on the record before us, in particular the admissions identified above, we find that respondent has not used her registered mark KISS THE COOK since at least 1981 on all of the goods identified in the registration. Accordingly, a prima facie case of abandonment of the trademark has been established. Thus, the burden of going forward and rebutting the prima facie showing, with evidence, shifts to respondent. She has not met her burden in this regard. Indeed, as Cancellation No. 92047883 7 already noted, respondent did not submit any testimony or introduce any evidence. Therefore, we conclude that respondent has abandoned the mark in the subject registration.8 Decision: The petition to cancel on the ground of abandonment is granted. 8 Because we find that respondent has abandoned her mark and are granting the petition to cancel on this ground, we need not reach a decision on the ground of fraud.