Trademarks Can Be Cancelled For Nonuse

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 See  American Polo Association, LLC v. Elizabeth Scripps, Cancellation No. 92066032 (December 19, 2019) [not precedential].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.

Regarding the other services, organizing and conducting polo events for fund raising, Petitioner argued that mark was not used prior to the filing date for these services, and alternatively if used was abandoned. There was evidence to show that the Respondent did use the mark for these services prior to the filing date of the trademark application. A service mark is used in commerce under the Lanham Act if it is “used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.” The evidence showed use of the mark POLO GIRLS with three charitable events prior to the application filing date.

There was also evidence of use of the mark in connection with polo activities with at least five charitable events after the registration date. The Petition to cancel was filed on May 1, 2017. There was evidence of use through September 2014. Thus, the evidence did not show a three-year period of non-use. Therefore, the Petitioner was unable to rely on the statutory presumption of non-use for three years.

Petitioner’s evidence only showed a two-year period of non-use. However, this two-year period of nonuse did satisfy the first element of proving “abandonment”. The Trademark Act defines abandonment under 15 U.S.C. §1127. It states in part that a mark is abandoned, “[w]hen its use has been discontinued with intent not to resume such use.” Intent not to resume use can be inferred from circumstances. For more on this subject matter, see our blog post, How Do You Prove Abandonment Of A Trademark? Essentially, a mark is abandoned when its use has been discontinued and the owner of the mark has no intent to resume use.

The Petitioner proved that there was a period of non-use, but failed to show that the Respondent intended not to resume use. Had the Petitioner shown a period of non-use for three years, there would have been a prima facie showing of abandonment. With a prima facie showing, the burden shifts to the Respondent to show either that the mark was used in the three-year period or that there was intent to resume use within the foreseeable future. See also, our blog post entitled, TTAB Determines That Allegations of Abandonment Are Legally Sufficient, to review what is necessary for pleading abandonment in TTAB proceedings. If you have questions, concerning abandonment or trademark use, please contact the firm for a courtesy consultation.