T.P. Saddle Blanket & Trading, Inc.v.Tasha McCarter

Trademark Trial and Appeal Board

Jul 18, 2001

No. 92025246 (T.T.A.B. Jul. 18, 2001)

7/18/01
Paper No. 32
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

T.P. Saddle Blanket & Trading, Inc.
v.
Tasha McCarter
_____

Cancellation No. 25,246
_____

Thomas V. Smurzynski of Lahive & Cockfield, LLP for T.P.
Saddle Blanket & Trading, Inc.

James F. Palecek of Palecek & Skaja for Tasha McCarter.
_____

Before Hohein, Chapman and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On June 13, 1996, T.P. Saddle Blanket & Trading,
Inc. (petitioner) filed a petition to cancel Trademark
Registration No. 1,300,625. The underlying application
for this registration was filed on October 27, 1982, and
the registration issued October 16, 1984. Tasha McCarter
(respondent) is identified as the owner. The
registration is for the mark shown below.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 25,246
2

The goods in the registration are identified as
“men’s and women’s clothing, namely dresses, blouses,
sweaters, shorts, shirts, and jogging suits” in
International Class 25. The registration alleges a date
of first use and a date of first use in commerce of April
1980. On October 11, 1990, respondent filed a combined
§§ 8 and 15 affidavit, which was accepted and
acknowledged respectively.
Petitioner, in its petition to cancel, claims that
it has filed an application to register the mark TASHA
(typed form) for goods identified as “men’s and women’s
and children’s shirts, jackets and skirts” in
International Class 25. Petitioner alleges that
respondent’s registration is likely to bar the
registration of its application and, therefore, it seeks
the cancellation of the registration on the ground that
“respondent is no longer using the mark it has
registered. It has abandoned the mark.” Petition to
Cancel, p. 2.
Cancellation No. 25,246
3
In her answer, respondent denied the allegations of
nonuse and abandonment. Both parties have filed briefs1
in this case, but neither requested an oral hearing.
The record in this proceeding consists of the
pleadings, the registration file, and petitioner’s2 two
notices of reliance. With petitioner’s first notice of
reliance, it submitted a certified copy of the file of
petitioner’s trademark application, Serial No.
75/096,145; Petitioner’s First Request for Admissions;
and petitioner’s counsel’s Statement Regarding
Accompanying Request for Admissions3. With its second

1 Inasmuch as the Trademark Rules do not provide for a reply
brief by the party in the position of defendant, we have not
considered respondent’s Reply Brief.
2 Respondent also filed a notice of reliance. In addition to
referencing the deposition of respondent and an Office action
from petitioner’s application, which were included with
petitioner’s notices of reliance, she also submitted invoices
that were not previously of record. On January 29, 2001, the
Board granted petitioner’s unopposed motion to strike the
invoices.
3 Originally, petitioner argued that respondent admitted nonuse
when she failed to respond to petitioner’s requests for
admission that she did not use the mark TASHA and design in
1996, 1995, 1994, 1993, and 1992. During the original briefing
process, respondent submitted evidence that she had timely
responded to petitioner’s requests for admissions. The Board in
a decision dated November 24, 1997, reopened the discovery
period for the limited purpose of allowing petitioner to depose
respondent. The requests for admissions and the statement of
petitioner’s counsel accompanying the request for admissions
were relevant to petitioner’s original argument when it sought
cancellation on the sole basis that respondent admitted
abandonment when she failed to respond to petitioner’s requests
for admission.
Cancellation No. 25,246
4
notice of reliance, petitioner submitted the discovery
deposition of respondent (Tasha McCarter), with exhibits.
The Trademark Act provides that:
A mark shall be deemed to be “abandoned” when either
of the following occurs: (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 facia evidence of abandonment. “Use” of a
mark means the bona fide use of that made in the
ordinary course of trade, and not made merely to
reserve a right in a mark….

15 U.S.C. § 1127.

Petitioner has the burden to establish the case for
cancellation of the registered mark on the ground of
abandonment by a preponderance of the evidence.
Cerveceria Centroamericana S.A. v. Cerveceria India Inc.,
892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989).
In an effort to meet its burden, petitioner
primarily relies on the deposition of respondent.
Petitioner acknowledges that “Ms. McCarter’s answers are
ambiguous, uncertain, inconsistent and sometimes
incomprehensible.” Petitioner’s Br., p. 5. Petitioner
concludes its brief with the following argument:
Ms. McCarter’s deposition is a series of
unstructured responses that refer to family
businesses, international licensing, designing
clothes, personal and family-owned corporations, and
hiatuses in work and business. Petitioner believes
that the explanation of Ms. McCarter’s situation is
that she was connected at one time with a family
business that allowed her to use her name in
Cancellation No. 25,246
5
designing clothes, and that she has not done
anything business-like with the TASHA mark for more
than three years. She has no documented plan to
resume use of the TASHA mark, if she ever actually
used it in a true trademark sense. Her inability to
get any assistance at all in preparing herself for
the deposition, or in documenting use of the mark
she generally claims as hers, belies a claim that a
business exists that she personally controls and
that uses a mark under her supervision and control.

Petitioner’s Br., pp. 7-8.
Respondent argues that petitioner has failed to meet
its burden of showing that respondent is no longer using
her mark. Respondent points to her own deposition. In
that deposition, she identifies licensees of the TASHA
mark. She also identified a tag and responded “yes” when
her counsel asked her: “Did you make clothes in 1991
that had this label on it.” Respondent’s Br., p. 6. She
gave the same affirmative answer when her counsel asked
her similar questions for years 1992 through 1999. Id.
Her other answers to questions during the deposition
indicate that respondent is still using the mark:
“[A]ll my licensees have been there many, many
years, they’ve been my customers today” (p. 43).

Q. To the best of your knowledge, when’s the last
time any women’s apparel was sold in the United
States under the Tasha name.
A. By me or by anyone?
Q. By anyone.
A. It’s being sold anytime. It’s available.
Q. When’s the last time that you are aware of any
sale of apparel under the Tasha name –
A. Yesterday.
Q. – in the United States? Yesterday?
Cancellation No. 25,246
6
A. By my licensee?
Q. By anyone.
A. Yesterday.
Q. Tell me what happened yesterday?
A. One of my licensees signed up a contract out of
Chicago. (p. 47).

Q. Can you recall whether Taiwell [identified as a
licensee (p. 59)] has ever sold women’s apparel
under the Tasha mark in the United States since
1984?
A. Yes.
Q. You can recall?
A. I know that they showed in New York last fall,
in October.
Q. Did they make any sales at that time in [the]
United States?
A. Yes, sir, they did.
Q. That was October 1998?
A. Yes.
Q. Do you recall whether Taiwell had any sales of
women’s apparel in the United States under the Tasha
mark in 1991?
A. Yes. They come every year.
Q. Every year Taiwell has had sales in the United
States?
A. Yes, sir. (p. 66).

Q. And the Tasha Fashion store in San Francisco is
still open today?
A. They are open, but I don’t operate them anymore
since I close[d] retail in California. It’s
operated through Europe. (p. 76).

“And I have to hire people and explore more – right
now I have pending inventory over $1,000,000 of
accessories on my label.” (p. 115).

Q. And it’s – to the best of your knowledge, Leon
Stone and Associates has shown Tasha apparel every
year?
A. Yes.
Q. In Los Angeles?
A. Every season, yes. (p. 142).

Q. Apart from what other people were showing at
shows and offering for sale, were you personally
Cancellation No. 25,246
7
offering any goods bearing the Tasha mark for sale
as of November 1996?
A. If I was offering to sell?
Q. (Nods head.)
A. During 1996?
Q. (Nods head.)
A. Yeah. I was selling my fashion.
Q. Where?
A. In California, in U.S.A., everywhere. But I
wasn’t well enough to do a lot of business. (p.
166).

While we agree with petitioner that respondent’s
deposition is sometimes ambiguous, uncertain,
inconsistent, or incomprehensible, nonetheless
petitioner, who has the burden of proof in this case,
chose to rely on respondent’s deposition almost
exclusively. It is simply not clear what inferences we
can draw from this evidence. Cerveceria, 13 USPQ2d at
1310 (“In this case an inference could properly be drawn
that the trademark was not used domestically for at least
two consecutive years. Based on its initial finding that
no imports arrived for the eight years between 1977 and
1986, combined with its finding that the 1970’s shipments
were ‘of very small quantities,’ TTAB could properly
infer that the mark was not used within the United States
for at least two consecutive years between 1977 and
1986.”).
Unlike in Cerveceria, we have no basis to infer that
respondent has not used her mark for at least three
Cancellation No. 25,246
8
consecutive years based on respondent’s deposition.
Indeed, it would be just as reasonable to draw an
inference that the mark TASHA was in use, albeit at a
reduced level of activity, during the period petitioner
claims there was nonuse of the mark.
Although sales by Christman and his corporation Team
Concepts, Ltd. were often intermittent and the
inventory of the corporation remained small, such
circumstances do not necessarily imply abandonment.
There is also no rule of law that the owner of a
trademark must reach a particular level of success,
measured either by the size of the market or by its
own level of sales, to avoid abandoning a mark.

Person’s Co. Ltd. v. Christman, 900 F.2d 1565, 14 USPQ2d
1477, 1481 (Fed. Cir. 1990). See also Bishop v. Equinox
International Corp., 154 F.3d 1220, 47 USPQ2d 1949, 1950
(10th Cir. 1998) (District court did not clearly err when
it held that the sale of 98 bottles on average per year
of electrolyte solution did not result in abandonment).
Respondent does not have the positive burden to
prove use of the mark; it is petitioner’s burden to prove
nonuse. P.A.B. Produits et Appareils de Beaute v.
Santinine Societa In Nome Collecttivo di S.A. e.M.
Usellini, 570 F.2d 328, 196 USPQ 801, 805 (CCPA 1978).
Petitioner cannot meet this burden by relying solely on
the deposition of a witness that petitioner itself
describes as inconsistent, uncertain, ambiguous, and
sometimes incomprehensible.
Cancellation No. 25,246
9
Moreover, respondent apparently experienced a series
of health problems that became more intense in 1996.
McCarter dep., pp. 100-08. She reports that her illness
adversely affected her business. McCarter dep., p. 108
(Q. Do you still have a showroom at California Mart. A.
I closed that when I became very ill, because I could not
attend to it.”); p. 98 (“I closed my factory when I got
very ill”). Previously, we have held that a respondent
rebutted allegations of actual nonuse by demonstrating
that he had no intent to abandon a mark when he
established that he had undergone surgery and was
subsequently tried and imprisoned for a crime. Clubman’s
Club Corp. v. Martin, 188 USPQ 455, 458 (TTAB 1975).
Likewise, respondent’s health problems here are
consistent with her statements that she reduced her
business activity to an unspecified level, but that she
continued to use the mark on the goods.
Finally, petitioner apparently believes that it has
created an inference that respondent’s registration
should be cancelled because respondent has produced “no
documentary evidence of any use of TASHA by her that has
a date later than 1990.” Petitioner’s Br., p. 7.
However, the burden was not on respondent to prove that
it was using the mark during the period that petitioner
Cancellation No. 25,246
10
has alleged it was abandoned. Nonetheless, petitioner
has introduced no other evidence that supports its
allegation that respondent has discontinued use of the
registered mark with an intent not to resume such use.
While the lack of documentary evidence from respondent is
unusual, it does not, based on the limited evidence in
this record, provide a basis for us to infer that
respondent is not using her mark on the identified goods.4
Because petitioner has not established a prima facie case
that respondent has abandoned her mark, petitioner’s
claim of abandonment must fail.
Decision: The petition to cancel is dismissed.

4 Furthermore, respondent’s deposition contains numerous
references to entities apparently located in the United States,
Europe, and Asia, who may in some way be involved in producing
or marketing goods sold under the registered mark. The names of
some of these entities include: Heritage Corporation, Hapsburg
Industrial Estate Property, Tess Elliott Incorporated, Tasha von
Hauteinberg Company, Tasha Company, Tasha Fashions Company,
Antrans, Taiwell, Marcus MacNamara, Pat MacDonald Corporation,
Inter-Paul, Guisikiu, and Abdunami. To say that the
relationships of many of these entities to the respondent are
unclear would be an understatement. This factor, and the fact
that the deposition took place at the end of the extended period
for discovery, may have resulted in this issue not being
developed more fully.