Unsworth Transport Int’l., Inc.v.UTI Worldwide, Inc.

Trademark Trial and Appeal Board

Jan 26, 2005

OPP (T.T.A.B. Jan. 26, 2005)

Mailed: June 3, 2005
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Unsworth Transport International, Inc.
v.
UTI Worldwide, Inc.
_____

Opposition No. 91125078
_____

Request for Reconsideration
_____

Ernest D. Buff of Ernest D. Buff & Associates, LLC for
Unsworth Transport International, Inc.

Thomas J. Moore of Bacon & Thomas for UTI Worldwide, Inc.
______

Before Hairston, Chapman and Bucher, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

The Board, in a decision issued January 26, 2005,
sustained the opposition of Unsworth Transport
International, Inc. to UTI Worldwide Inc.’s application to
register the mark “UTi” and design for “freight brokerage;
freight forwarding; freight forwarding by air, sea or land;
shipping of freight; warehouse storage; [and] packaging of
freight for transportation.” Further, we gave no
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91125078
2
consideration to applicant’s arguments, raised for the first
time in applicant’s brief on the case, that opposer had
abandoned its “UTi” mark. In particular, we found that the
issue of abandonment was not tried by opposer’s implied
consent.
In its request for reconsideration, applicant now
argues that because opposer does not own a registration for
its “UTi” mark, opposer had the burden of establishing that
it had not abandoned its “UTi” mark. Also, applicant
continues to argue that opposer has indeed abandoned its
“UTi” mark.
The purpose of reconsideration is to point out legal
and/or factual errors made by the Board in making its
decision, not to reargue the case as applicant has done.
Further, contrary to applicant’s contention, opposer
did not have the burden of establishing that it had not
abandoned its “UTi” mark. Rather, it was opposer’s burden
to establish prior common law use of its “UTi” mark which
opposer did.1 As we noted in footnote 5 of our decision,
the testimony relied on by applicant to establish
abandonment concerned opposer’s decision to stop identifying
itself as “UTi” in its dealings with a single company. The

1 At pages 8-9 in our decision, we discussed in detail the
evidence establishing opposer’s prior common law use of the “UTi”
mark in connection with its services. This is not a case of an
opposer making only sporadic, non-commercial sales of its goods
or services.
Opposition No. 91125078
3
record showed that opposer does business with a number of
companies, and such testimony would not establish, as
applicant argues, that opposer unequivocally abandoned its
“UTi” mark.
In view of the foregoing, applicant’s request for
reconsideration is denied and the decision of January 26,
2005 stands.