Articles Tagged with What Is A Prima Facie Showing For Abandonment Of A Trademark?

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In a recent Trademark Trial and Appeal Board (the “Board”) decision the Board granted the petition in part for partial cancellation for the mark POLO GIRL for the following services, “[e]ntertainment in the nature of ongoing television programs in the field of polo sports events, and polo lifestyle in International Class 41”. See  American Polo Association, LLC v. Elizabeth Scripps, Cancellation No. 92066032 (December 19, 2019) [not precedential]. However, the Board held the Respondent did not abandon the mark for organizing and conducting polo events for fund raising, even though there was two years on nonuse. The Board held that the Petitioner did not prove that the Respondent had intent not to resume use for the organizing and conducting of polo events.

The Petitioner alleged that the Respondent did not use the mark for the subject services prior to filing the use application or in the alternative abandoned its rights after the filing of the trademark application. It was proven that the Respondent had not used the mark prior to the filing date (March 3, 2011) for an ongoing television program for polo sports events. Prior to the filing date, the Respondent had produced three videos on the subject matter in hopes of it leading to a television series. Two of the three videos were posted on Facebook® and YouTube®.

The three videos did not constitute ongoing television programing. It was not broadcast over the air or via cable, only the Internet. The three videos were not part of an ongoing program aired on television. Plus, there was no dialogue on the first two videos and none of the three videos were connected to each other. Thus, the petition to cancel as to “entertainment in the nature of ongoing television programs in the field of polo sports events, and polo lifestyle” was granted.

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