A & M Wings, Inc.v.Glenn Thompson

Trademark Trial and Appeal Board

Feb 14, 2019

CANC (T.T.A.B. Feb. 14, 2019)

Mailed: February 14, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

A & M Wings, Inc.
v.
Glenn Thompson
_____

Cancellation No. 92064044
_____

Derek R. Fahey of The Plus IP Firm, PLLC,
for A & M Wings, Inc.

Glenn Thompson, pro se.
_____

Before Adlin, Hightower, and Lynch,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
A & M Wings, Inc. (“Petitioner”) petitions to cancel Glenn Thompson’s
(“Respondent”) Principal Register registration for the mark TREE’S, WINGS AND
RIBS, in standard characters and with “wings and ribs” disclaimed, for “restaurant
services” in International Class 43.1 The asserted grounds for cancellation are fraud
and abandonment by naked licensing.
We deny the petition.

1 Registration No. 3025777, issued December 13, 2005; renewed.
This Opinion Is Not a
Precedent of the TTAB
Cancellation No. 92064044
- 2 -
I. Record
The record consists of the pleadings and, without any action by the parties, the
files of the involved registration. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1).2
Petitioner’s Evidence
Petitioner submitted the following evidence by Notice of Reliance:
• The affidavits of Andrew Maynard, its owner (“Maynard Aff.”) (Exhibit 1,
25 TTABVUE 5-35), and Erin Townsend, general manager of its restaurant
(Exhibit 2, 25 TTABVUE 36-41), both with exhibits;
• Certain of Petitioner’s interrogatories, requests for production, and
requests for admission, and Respondent’s responses (Exhibits 3-8, 25
TTABVUE 42-120);3
• Dictionary definitions of the terms “unbridled,” “absolute,” and
“unconditional” (Exhibits 10-16, 25 TTABVUE 179-232); and
• Articles of incorporation and other corporate documents pertaining to
Petitioner and its predecessor-in-interest, Southern Wings of Royal Palm
Beach, Inc. (Exhibits 17-20, 25 TTABVUE 233-54).
Respondent’s Evidence
In its Order dated July 3, 2018, the Board granted Petitioner’s motion to strike
Respondent’s Notice of Reliance as untimely. 29 TTABVUE. Respondent therefore
made no evidence of record.

2 Petitioner therefore should not have resubmitted the prosecution history of the subject
registration. Exhibit 9, 25 TTABVUE 121-78.
3 Only responses to requests for production indicating that no responsive documents exist are
properly of record. See Trademark Rule 2.120(k)(3), 37 C.F.R. § 2.120(k)(3); United Glob.
Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1044 (TTAB 2014). Therefore, we have
considered only responses to document requests 8-12, 25 TTABVUE 86-87, as well as
Respondent’s interrogatory responses and admissions.
Cancellation No. 92064044
- 3 -
II. Petitioner’s Standing
Standing is a threshold issue that must be proven by the plaintiff in every
inter partes case. Petitioner bears the burden of proving standing as an essential
element of its case in chief. Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024,
213 USPQ 185, 189 (CCPA 1982) (“The facts regarding standing, we hold, are part of
a petitioner’s case and must be affirmatively proved.”); Nobelle.com LLC v. Qwest
Commc’ns Int’l Inc., 66 USPQ2d 1300, 1303 (TTAB 2003) (“[S]tanding is an essential
element of petitioner’s case which, if it is not proved at trial, defeats petitioner’s
claim.”). To establish its standing, Petitioner must prove that it has a “real interest,”
i.e., a “reasonable” basis for its belief of damage. See Empresa Cubana Del Tabaco v.
Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).
Petitioner did not address its standing to bring this proceeding in its petition or
its trial briefs. Petitioner did, however, submit evidence that it operates a restaurant
known as “Tree’s Wings and Ribs,” which is identical to the mark in the subject
registration except for a comma.4 See, e.g., Maynard Aff. at ¶ 4, 25 TTABVUE 7. This
demonstrates that Petitioner has a relevant commercial interest in the term TREE’S,
WINGS AND RIBS for restaurant services and an interest in the outcome of this
proceeding beyond that of a mere intermeddler. Thus, it has standing to petition for
cancellation. See, e.g., Exec. Coach Builders, 123 USPQ2d at 1179-80; Brooks v.
Creative Arts By Calloway LLC, 93 USPQ2d 1823, 1827 (TTAB 2009).

4 The marks are not distinguished by this minor variation in punctuation. See, e.g., Exec.
Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d 1175, 1179 (TTAB 2017).
Cancellation No. 92064044
- 4 -
III. Abandonment
We first consider Petitioner’s claim that Respondent has abandoned his mark by
uncontrolled or “naked” licensing to Petitioner itself and third parties. A trademark
registration may be cancelled if the mark has become abandoned. Trademark Act
§ 45, 15 U.S.C. § 1127, provides that a mark shall be deemed abandoned when “any
course of conduct of the owner, including acts of omission as well as commission,
causes the mark to become the generic name for the goods or services on or in
connection with which it is used or otherwise to lose its significance as a mark.”
Uncontrolled or “naked” licensing can result in a loss of significance of a trademark
such that a registration should be cancelled. Paris Glove of Canada Ltd. v.
SBC/Sporto Corp., 84 USPQ2d 1856, 1864 (TTAB 2007). Because registrations are
presumed valid under Trademark Act Section 7, 15 U.S.C. § 1057, however, the party
seeking cancellation based on abandonment bears the burden of proving
abandonment by a preponderance of the evidence. Rivard v. Linville, 133 F.3d 1446,
45 USPQ2d 1374, 1376 (Fed. Cir. 1998); Cerveceria Centroamericana S.A. v.
Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309-12 (Fed. Cir. 1989).
Petitioner submitted evidence that Respondent licensed it to use the name “Tree’s
Wings and Ribs” in 1995, and that in 2004 the parties extended the license agreement
for 99 years, until 2103. See Maynard Aff. at ¶ 41, 25 TTABVUE 17; Extention [sic]
Agreement, 25 TTABVUE 116-17. Because Petitioner is licensed to use the subject
mark, the doctrine of licensee estoppel bars Petitioner from bringing a claim that
Respondent abandoned the mark through uncontrolled licensing. See, e.g., Freeman
v. Nat’l Ass’n of Realtors, 64 USPQ2d 1700, 1703 (TTAB 2002) (attacking validity of
Cancellation No. 92064044
- 5 -
marks petitioner was licensed to use “is the type of conduct which the doctrine of
licensee estoppel is intended to prevent”); Leatherwood Scopes Int’l Inc. v.
Leatherwood, 63 USPQ2d 1699, 1703 (TTAB 2002); Estate of Biro v. Bic Corp., 18
USPQ2d 1382, 1386 (TTAB 1991); Garri Publ’n Assocs. Inc. v. Dabora Inc., 10
USPQ2d 1694, 1697 (TTAB 1988); see also 3 J. THOMAS MCCARTHY, MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 18:63 (5th ed. 2018) (“The licensee estoppel
rule is founded on the view that a licensee should not be permitted to enjoy the use
of the licensed mark while at the same time challenging the mark as being invalid.”).
The abandonment claim therefore is dismissed.
IV. Fraud
Fraud in procuring or maintaining a trademark registration occurs when an
applicant or registrant knowingly makes a false, material representation of fact with
the intent to deceive the U.S. Patent and Trademark Office (USPTO), thereby
obtaining or maintaining a registration to which it is otherwise not entitled. See In re
Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009); ShutEmDown
Sports Inc. v. Lacy, 102 USPQ2d 1036, 1044 (TTAB 2012). A party seeking
cancellation of a trademark registration for fraudulent procurement or renewal bears
a heavy burden of proof. See id. at 1939. Indeed, “the very nature of the charge of
fraud requires that it be proven ‘to the hilt’ with clear and convincing evidence. There
is no room for speculation, inference or surmise and, obviously, any doubt must be
resolved against the charging party.” Smith Int’l, Inc. v. Olin Corp., 209 USPQ 1033,
1044 (TTAB 1981); see also Swiss Watch Int’l Inc. v. Fed. of Swiss Watch Indus., 101
USPQ2d 1731, 1745 (TTAB 2012).
Cancellation No. 92064044
- 6 -
Petitioner alleges that Respondent committed fraud in renewing his registration
by submitting a picture of Petitioner’s restaurant and website as specimens. While
the USPTO recognizes ownership and use claims based on “use by controlled
licensees, pursuant to a contract or agreement,” if Petitioner’s use of the mark is not
“controlled” by Respondent, Petitioner’s use in the renewal specimens does not inure
to Respondent’s benefit. Trademark Manual of Examining Procedure (TMEP)
§ 1201.03(e) (Oct. 2018) (citing Pneutek, Inc. v. Scherr, 211 USPQ 824, 833 (TTAB
1981)); see also, e.g., Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1035-36
(TTAB 2017).
Here, there is no showing that Respondent knowingly made a false representation
with the intent to deceive the USPTO.5 See Loren Cook Co. v. Acme Eng’g & Mfg.
Corp., 216 USPQ 517, 520 (TTAB 1982). The Section 8 specimens showing
Petitioner’s use were submitted March 22, 2016. The accompanying declaration
included the statements that “the mark is in use in commerce” and that the specimens
show “the mark as used in commerce.” There is no dispute that these statements were
true. The problem with Petitioner’s fraud claim is that “[t]he USPTO does not require
an application to specify if the applied-for mark is not being used by the applicant but
is being used by one or more related companies whose use inures to the benefit of the
applicant.” TMEP § 1201.03(a). Applying this policy to Respondent’s allegation of use

5 We therefore need not address the effect, if any, of Respondent’s July 18, 2016 submission
of an additional, untimely specimen apparently intended to support the Section 8 affidavit,
according to the July 18, 2016 Note to the File. Respondent submitted the additional
specimen after the relevant deadline and failed to include the required Section 8 affidavit or
declaration that the additional specimen was in use during the relevant period.
Cancellation No. 92064044
- 7 -
in the registration maintenance filing, because Respondent was not required to
disclose that the claimed use of the mark was by Petitioner, this omission was
immaterial and cannot serve as the basis for a fraud claim.
In any event, Petitioner has not shown that Respondent intended to deceive the
Office. There was no false allegation that Respondent had the requisite control over
Petitioner’s use, because there was no such allegation in Respondent’s submission to
the Office. And Petitioner has not proven that Petitioner knew the use claimed in the
Section 8 affidavit did not inure to his benefit, but falsely represented to the Office
that it did. Rather, Petitioner argues that Respondent submitted the specimen
“knowing that Petitioner did not consider such use to inure to Respondent.”
Petitioner’s Brief at 32, 30 TTABVUE 33. Petitioner’s own belief does not establish
Respondent’s intent to deceive the Office. Petitioner’s fraud claim is dismissed.
Decision: The petition to cancel is denied.