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Trademark Trial and Appeal Board, Trademarks, TTAB, TTAB ON APPEAL
May 3, 2018
WHAT OUR CLIENTS HAVE
TO SAY ABOUT
The TTAB sustained Modern House of Wine LLC’s (“Petitioner”) petition to cancel (Cancellation No. 92058885) Hidden Wineries Inc.’s (“Registrant”) registration for the mark THANK YOU for wines in Class 33 on the grounds of void ab initio and abandonment. Registrant has filed an appeal to the U.S. District Court for the Northern District of California (Case No. 3:18-cv-02174), which is pending.
This case had some interesting procedural and evidentiary twists and turns before the TTAB. Both parties had some trouble introducing and relying upon evidence at trial.
During the testimony period, Registrant (acting pro se) attempted to take the deposition of several witnesses, but failed to comply with the rules for noticing and taking depositions. In one notice, for example, Registrant failed to name the intended witnesses to be deposed. In another notice, Registrant named five witnesses, but they were not properly identified in its pretrial disclosures. Thus, the TTAB granted Petitioner’s motion to quash Registrant’s notices of deposition. Registrant did identify three other witnesses for deposition, but it failed to take any depositions during the prescribed time period.
Registrant also attempted to attach an officer’s declaration, three third-party statements, and documents to its trial brief. The TTAB sustained Petitioner’s objection to this untimely and improper evidence under Trademark Rule 2.123(a)(1) (testimony of witnesses must be filed during the proffering party’s testimony period) and Trademark Rule 2.122(g) (notice reliance must be filed during the testimony period).
Petitioner faced its own procedural and evidentiary hurdles during its testimony period. With respect to standing, Petitioner argued that it had proven standing because two of its applications to register the marks MERCI and THANK YOU MODERN HOUSE WINES & Design were refused registration under Section 2(d), based on Registrant’s registration. However, Petitioner failed to properly submit copies of the applications or the pertinent Office Actions under notice of reliance or testimony declaration. As noted by the TTAB, unlike the file history of the registration sought to be cancelled, Petitioner’s pleaded applications and their file histories are not automatically of record. See TBMP § 704.03(b)(2). Nor did the TTAB take judicial notice of such applications and file histories.
Petitioner next argued that Registrant’s admissions in its Answer establish that the applications were refused based on Registrant’s THANK YOU registration. Registrant did admit in its Answer that Petitioner filed the applications, but it denied allegations pertaining to the refusals. Petitioner maintained that Registrant’s responses to interrogatories also proved its standing, but here again Registrant only admitted the applications were filed, and not the refusals of registration. Petitioner also argued that it had standing based on common law use of MERCI for wine, but Petitioner did not submit any testimony evidence to prove such common law rights.
The TTAB eventually found that Petitioner established standing based on Registrant’s interrogatory answers, where the TTAB found in essence that Registrant admitted “the parties are direct competitors, both being in the wine business,” which was sufficient for standing.
With respect to the abandonment and void ab initio claims, the TTAB found that Registrant admitted in response to discovery that it did not sell wine bearing the mark until several years after the registration issued (April 6, 2010). While Registrant’s discovery responses identified wine label approvals dated December 2014, this occurred years after registration issued. According to the TTAB, there were no bills of sales or invoices to show Registrant’s use of the mark. The TTAB noted Registrant’s letters from web designers and retail store representatives attesting to Registrant’s sale of wine in 2009, but the letters were “conspicuously silent” on the actual dates of any sales of THANK YOU brand wines. Moreover, the TTAB found that none of these documents were authenticated, and the statements were nonetheless hearsay.
Petitioner also submitted pages from Registrant’s website hiddenwineries.com and gotcheers.com. While one of the pages invited users to choose a “Thank You” wine gift, the website access date of April 29, 2015 was after the registration date.
Accordingly, the TTAB sustained the cancellation on the ground that Registrant’s registration was void ab initio because it did not use the THANK YOU mark for wine before the filing date under Trademark Act Section 1(a). In addition, the TTAB concluded that Registrant’s subsequent nonuse of the mark for three years, accompanied by the absence of any evidence of an intent to resume or commence use of the mark, constituted abandonment. Registrant’s appeal before the U.S. District Court for the Northern District of California is pending.
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