American Polo Association, LLCv.Elizabeth Scripps

Trademark Trial and Appeal Board

Aug 1, 2018

No. 92066032 (T.T.A.B. Aug. 1, 2018)

MW August 1, 2018

Cancellation No. 92066032

American Polo Association, LLC

v.
Elizabeth Scripps

Before Shaw, Hightower, and Heasley,
Administrative Trademark Judges.

By the Board:

On May 1, 2017, American Polo Association, LLC (“Petitioner”) filed a petition for
cancellation of the standard character mark POLO GIRLS for “Entertainment
services, namely, participation in the sport of polo; Organizing and conducting polo
sporting events for the purpose of fundraising; Entertainment services, namely
performing and competing in polo sports events; Entertainment in the nature of on-
going television programs in the field of polo sports events, and polo lifestyle,” in
International Class 41.1 As grounds for cancellation, Petitioner alleges (1) nonuse in

1 Registration No. 4017392 registered on the Supplemental Register on August 23, 2011.
Registrant claims April 1, 2009 as the date of first use anywhere and November 5, 2009 as
the date of first use in commerce.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92066032

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commerce; (2) abandoment; and (3) fraud.2 In her answer to the petition, Elizabeth
Scripps (“Respondent”) denies the salient allegations in the petition and asserts
several affirmative defenses.
This case now comes before the Board for consideration of Petitioner’s motion
(filed February 12, 2018) for summary judgment and Respondent’s cross-motion for
summary judgment. The motions are fully briefed.
The Board presumes the parties’ familiarity with the pleadings, the history of the
proceeding, and the arguments and materials submitted in connection with the
subject motions. The Board has considered the arguments and evidence submitted in
connection with the motions, but does not repeat or discuss all of the arguments and
submissions, and does not address irrelevant arguments. Guess? IP Holder L.P. v.
Knowluxe LLC, 116 USPQ2d 2018, 2019 (TTAB 2015).
In support of its motion for summary judgment, Petitioner argues that the
involved registration is void ab initio because the only three clips of audio visual
content produced in discovery by Respondent are not representative of a bona fide
ongoing television show in view of the length and content of the clips. With respect to
organizing events for the purpose of fundraising, Petitioner argues that Respondent
has not produced any evidence that shows “meaningful commercial-scale use of the
mark,” 6 TTABVUE 11, and that Respondent has declined to produce documentation
referring to any fundraising. Regarding the remaining services, namely,

2 The electronically generated cover sheet for the petition for cancellation also identifies
Trademark Act Section 4, 15 U.S.C. § 1054, as a ground for cancellation. However, Section 4
merely applies the provisions of the Trademark Act to collective marks and certification
marks.
Cancellation No. 92066032

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“participation in the sport of polo” and “performing and competing in polo sports
events,” Petitioner argues that Respondent has not provided any evidence of use of
her mark in connection with the services in response to Petitioner’s discovery
requests.
With respect to the abandonment claim, Petitioner argues that Respondent did
not provide evidence of use of her mark in commerce in connection with the services
for at least three years prior to the commencement of this proceeding and that
Respondent did not produce any documentary evidence suggesting that she was still
shopping her television show during the abandonment period. Petitioner further
argues that there is no evidence of use of the involved mark to identify Respondent
as the source of the fundraising services. Petitioner asserts that, at most, the evidence
of Respondent’s activities supports common law use with respect to blogging and
providing a public awareness campaign about the sport of polo.
In her response to Petitioner’s motion for summary judgment, Respondent argues
that she has produced evidence of use of her mark in connection with each of the
services and that whether the evidence demonstrates use of the mark in commerce
under the Lanham Act is a “factual determination[ ] that must be reserved for
trial….” 8 TTABVUE 11. In support of her cross-motion for summary judgment,
Respondent argues that Petitioner cannot establish its nonuse claim as a matter of
law because Petitioner’s discovery requests only sought documents and information
prior to November 5, 2009, the claimed date of first use, not her application filing date
Cancellation No. 92066032

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of March 3, 2011.3 In addition, Respondent asserts that she has produced evidence of
her use of the mark in connection with each of the services prior to the filing date of
the application. With respect to Petitioner’s abandonment claim, Respondent argues
that she has produced evidence of use of the mark in connection with each of the
services during Petitioner’s asserted “abandonment period.”4 Finally, Respondent
argues that Petitioner’s motion for summary judgment is moot with respect to the
fraud claim because the claim was not adequately pleaded in the petition for
cancellation.
In its combined reply in support of its motion for summary judgment and response
to Respondent’s cross-motion, Petitioner argues that Respondent’s evidence of use
prior to the filing date of the application “fall[s] short of proving use in commerce.” 11
TTABVUE 5. In addition, Petitioner argues that Respondent’s uncorroborated
assertions in her declaration supporting her motion are insufficient to refute that she
abandoned the mark.
I. The Pleadings
As an initial matter, because a party may not obtain summary judgment under
Fed. R. Civ. P. 56(a) on a claim or issue that has not been properly pleaded, we have
reviewed the pleadings to determine the sufficiency of the claims and defenses. See
Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1291

3 According to the proceeding schedule in the Board’s Notice of Institution, discovery in the
proceeding closed on January 11, 2018. 2 TTABVUE 3.
4 Petitioner identifies the “Abandonment Period” as at least the three years prior to the filing
of the petition for cancellation; specifically, April 30, 2014 to April 30, 2017. Petitioner’s
motion p. 14, 6 TTABVUE 15.
Cancellation No. 92066032

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n.2, 1292 (TTAB 2016) (applicant may not obtain summary judgment on unpleaded
defense); Asian & Western Classics B.V. v. Selkow, 92 USPQ2d 1478, 1480 (TTAB
2009).
Upon review of the petition for cancellation, we find that Petitioner has pleaded
sufficient facts which, if proved, would establish Petitioner’s standing and its claim
of nonuse. In addition, Petitioner has pleaded a legally sufficient claim of
abandonment based on nonuse of the mark for at least three consecutive years. See
Trademark Act Section 45, 15 U.S.C. § 1127. However, we find that Petitioner has
failed to plead a legally sufficient claim of fraud under Fed. R. Civ. P. 9(b) and In re
Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009). A legally sufficient
pleading of fraud requires allegations that Respondent knowingly made specific, false
representations of material fact in connection with its application with the intent of
obtaining (or maintaining) a registration to which it is otherwise not entitled. See In
re Bose Corp., 91 USPQ2d at 1941. Intent to deceive the USPTO is a required element
of a fraud claim which must be pleaded. Id. at 1942. Here, Petitioner bases its fraud
claim on an allegation that Respondent “knew or should have known that it was not
using the mark POLO GIRLS in connection with all the services identified in the
application.”5 Pursuant to the Federal Circuit’s decision in Bose, a fraud claim may
not be based on a “knew or should have known” standard. Id. at 1941. Further,
Petitioner fails to allege Respondent’s intent to deceive the USPTO into issuing the
involved registration. Finally, Petitioner has not alleged particular facts in

5 Notice of Opposition at ¶ 10, 1 TTABVUE 5.
Cancellation No. 92066032

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accordance with Fed. R. Civ. P. 9(b) that would support the allegation that
Respondent committed fraud in the filing of the use-based application.
Because Petitioner has failed to sufficiently plead the fraud claim, Petitioner’s
motion for summary judgment on the claim is moot. See Asian & Western Classics
B.V. v. Selkow, 92 USPQ2d at 1480. Further, in view of foregoing, we sua sponte
dismiss the fraud claim from the petition for cancellation. See NSM Res. Corp. v.
Microsoft Corp., 113 USPQ2d 1029, 1039 n.19 (TTAB 2014) (Board may sua sponte
dismiss any insufficiently pleaded pleading).
Turning to Respondent’s answer, Respondent denies the salient allegations in the
petition for cancellation and asserts three “Affirmative Defenses.” Upon review of the
pleading, we find that Respondent has failed to sufficiently plead any defenses that
would prevent Petitioner from prevailing on its claims. In her First Affirmative
Defense, Respondent alleges that “any period of nonuse since March 3, 2011
constitutes excusable neglect.”6 The defense is insufficiently pleaded because it does
not include any supporting facts that would provide Petitioner with fair notice of the
basis for the defense. See Ohio State Univ. v. Ohio Univ., 51 USPQ2d 1289, 1292
(TTAB 1999); see also TBMP § 311.02(b) (2018) (“the pleading should include enough
detail to give the plaintiff fair notice of the basis for the defense”).
Under the Second Affirmative Defense, Respondent asserts that Petitioner is
barred by the doctrine of unclean hands because, when Petitioner filed its pleaded
application and the amendment to allege use, “Petitioner knew of Registrant’s prior

6 Answer, p. 3, 5 TTABVUE 4.
Cancellation No. 92066032

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use of the POLO GIRLS mark in association with [the services in the registration].”7
Respondent alleges that Petitioner’s sworn declaration attesting that no other person
has the right to use the mark in commerce “constitutes a material misrepresentation
and a fraud on the Office.”8
A defense of unclean hands must be supported by specific allegations of
misconduct by plaintiff that, if proved, would prevent the plaintiff from prevailing on
its claim. See Midwest Plastic Fabricators, Inc. v. Underwriters Labs. Inc., 5 USPQ2d
1067, 1069 (TTAB 1987). In addition, the misconduct must be related to the plaintiff’s
claim. See Tony Lama Co. v. Di Stefano, 206 USPQ 176, 179 (TTAB 1980); 6 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 31:48 (5th ed.
2018).
Respondent’s unclean hands defense is predicated on its assertion that Petitioner
committed fraud on the USPTO by signing the application declaration with the
knowledge of use by others. Such an allegation must be accompanied by particular
facts which, if proven, would establish that: (1) there was in fact another use of the
same or a confusingly similar mark at the time the oath was signed; (2) the other user
had legal rights superior to the applicant’s; (3) applicant knew that the other user
had rights in the mark superior to applicant's, and either believed that a likelihood of
confusion would result from applicant's use of its mark or had no reasonable basis for
believing otherwise; and that (4) applicant, in failing to disclose these facts to the
Patent and Trademark Office, intended to procure a registration to which it was not

7 Id.
8 Answer, pp. 4-5, 5 TTABVUE 5-6.
Cancellation No. 92066032

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entitled. Qualcomm Inc. v. FLO Corp., 93 USPQ2d 1768, 1770 (TTAB 2010);
Intellimedia Sports v. Intellimedia Corp., 43 USPQ2d 1203, 1205-06 (TTAB 1997).
In this case, Respondent has not pleaded with particularity any of the elements of
fraud based on signing the application declaration with knowledge of another use.
See Fed. R. Civ. P. 9(b). In particular, Respondent has failed to allege any facts
supporting her claim of use of a confusingly similar mark prior to Petitioner’s filing
date or her superior legal rights in the subject mark.9 Further, Respondent has failed
to plead the third element of fraud based on the application declaration. A sufficient
pleading of the third element must include particular facts which, if proven, would
establish that, as of the filing date of its pleaded application, Petitioner believed that
Respondent had superior or clearly established rights and that a likelihood of
confusion would result from Petitioner’s use of its mark. Intellimedia Sports, 43
USPQ2d at 1207.10 In view of the foregoing, we find Respondent’s unclean hands
defense insufficiently pleaded.11

9 Respondent’s ownership of a registration on the Supplemental Register does not establish
proprietary rights in the mark. See Otter Prods. LLC v. BaseOneLabs LLC, 105 USPQ2d
1252, 1255-56 (TTAB 2012); see also In re Bush Bros. & Co., 884 F.2d 569, 12 USPQ2d 1058,
1059 n.2 (Fed. Cir. 1989) (“Registration on the Supplemental Register is not evidence of
ownership, validity, or the exclusive right to use”).
10 The application verification is phrased in terms of a subjective belief; thus, fraud based on
the declaration is difficult to prove. See 6 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition § 31.75-76 (5th ed. 2018); see also, e.g., Daniel J. Quirk, Inc. v. Village
Car Co., 120 USPQ2d 1146, 1149 (TTAB 2016) (“Fraud will not lie against an applicant who
holds an honest, good faith belief in its right to register a mark and signs an application with
the statutorily prescribed ownership statement, which is phrased in terms of subjective
belief.”). We also note that the petition for cancellation is based on Petitioner’s claim that
Respondent did not use the mark and abandoned any rights in the mark, which is contrary
to the third element of the fraud defense.
11 In her brief, Respondent also asserts that Petitioner is barred by the doctrine of unclean
hands “because Petitioner was not using its mark in connection with each of its recited
Cancellation No. 92066032

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Finally, Respondent’s “Third Affirmative Defense” is not an actual defense but
merely an attempt to reserve the right to plead additional defenses. The assertion of
the right to put forward additional defenses or counterclaims is an improper
reservation under the Federal Rules of Civil Procedure. See FDIC v. Mahajan, 923
F. Supp. 2d 1133, 1141 (N.D. Ill. 2013) (reservation of right to add affirmative
defenses at a later date is improper under the Federal Rules). The proper way to plead
additional affirmative defenses or counterclaims is to file a motion under Fed. R. Civ.
P. 15. Id.
Because Respondent has failed to plead any legally sufficient affirmative defenses,
we sua sponte strike the defenses from the answer. See NSM Res. Corp. v. Microsoft
Corp., 113 USPQ2d 1029, 1039 n.19 (TTAB 2014) (Board may sua sponte dismiss any
insufficiently pleaded pleading).
II. Standing
Standing is a threshold issue that must be pleaded and proven by the plaintiff in
every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d
1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 171 F.3d. 1092,
50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999); see also Sinclair Oil Corp. v. Kendrick, 85
USPQ2d 1032, 1037 (TTAB 2007). In order to demonstrate standing, a plaintiff must
show that it has a “real interest” in the proceeding and “a reasonable basis for his

services when it submitted its Amendment to Allege Use on June 6, 2017.” 8 TTABVUE 25.
However, in addition to not submitting any evidence to support this defense, Respondent did
not plead this defense it its answer. Moreover, even if Respondent can prove these assertions,
the defense would not defeat Petitioner’s standing. See Trademark Rule 2.76(f), 37 C.F.R. §
2.76(f) (amendment to allege use may be withdrawn prior to approval for publication).
Cancellation No. 92066032

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belief of damage.” Empresa Cubana Del Tabaco, 111 USPQ2d at 1062 (citing Ritchie
v. Simpson, 50 USPQ2d at 1025-26. In this case, Petitioner has submitted with its
motion a copy of its pleaded application and the Office Action refusing registration to
Petitioner based on a likelihood of confusion with Respondent’s registration.12 In view
thereof, Petitioner has established its standing to bring this proceeding. See, e.g.,
Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd., 126 USPQ2d 1526, 1532
(TTAB 2018); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1041 (TTAB
2012) (evidence of record showing petitioner’s pending application refused
registration based on respondent’s registration).
III. Summary Judgment
Turning to the parties’ motions, summary judgment is an appropriate method of
disposing of cases in which there are no genuine disputes as to any material facts and
the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). In
reviewing a motion for summary judgment, the evidentiary record and all justifiable
inferences to be drawn from the undisputed facts must be viewed in the light most
favorable to the non-moving party. See Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d
766, 25 USPQ2d 2027, 2029-30 (Fed. Cir. 1993); Olde Tyme Foods Inc. v. Roundy’s
Inc., 961 F.2d 200, 22 USPQ2d 1542, 1546 (Fed. Cir. 1992). We may not resolve
disputes of material fact; we may only ascertain whether a genuine dispute regarding
a material fact exists. See Lloyd’s Food Prods., 25 USPQ2d at 2029; Olde Tyme Foods,
22 USPQ2d at 1544.

12 See Exhibits S and Y, 6 TTABVUE 112-18 and 6 TTABVUE 151-57.
Cancellation No. 92066032

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A party moving for summary judgment has the burden of demonstrating a
particular fact is not disputed by citing to the record, including affidavits or
declarations, admissions or interrogatory answers; or showing that the cited
materials do not establish the absence or presence of a genuine dispute, or that the
adverse party cannot produce admissible evidence to support the fact. Fed. R. Civ. P.
56(c)(1). See generally Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). When the
moving party has supported its motion with sufficient evidence that, if unopposed,
indicates there is no genuine dispute of material fact, the burden of production shifts
to the non-moving party to demonstrate the existence of a genuine dispute of material
fact to be resolved at trial. Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537,
1540 (TTAB 2009).
A. Petitioner’s Motion for Summary Judgment
In support of its motion for summary judgment, Petitioner relies primarily on
Respondent’s discovery responses and document production. Petitioner submitted
copies of the discovery requests and responses, including documents produced by
Respondent, with its brief. However, as noted by Respondent, many of Petitioner’s
discovery requests are flawed in that they request information regarding
Respondent’s use the subject mark prior to the alleged date of first use in commerce,
not the application filing date.13 Further, in addition to producing some documents,
Respondent responded to each of Petitioner’s discovery requests with numerous

13 See Interrogatory Nos. 1, 8, 10, 11, 17, 18, 19, 20, 22 and 23, 6 TTABVUE 34-47.
Cancellation No. 92066032

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objections.14 While we find Respondent’s objections improper under Fed. R. Civ. P.
33(b)(4) and 34(b)(4),15 the responses do not indicate that Respondent has provided
all information or documents in response to the requests or that Respondent cannot
produce additional evidence in defense of the claims at trial.16 See, e.g., Linville v.
Rivard, 41 USPQ2d 1731, 1733 (TTAB 1996) (objections that discovery requests are,
for example, ambiguous or burdensome, are not of a nature which would lead
propounding party to believe that the requested information does not exist and party
should have filed motion to compel), aff’d, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir.
1998).
In view of the foregoing, we find that Petitioner, as the party moving for summary
judgment, has failed to carry its burden of demonstrating that Respondent cannot
produce admissible evidence of use of her mark prior to the filing date of the
application or during the alleged abandonment period.
B. Respondent’s Cross-Motion for Summary Judgment
In support of her cross-motion for summary judgment, Respondent submitted the
declaration of Respondent, Elizabeth Kofmehl (formerly Scripps) attesting to her use

14 See 6 TTABVUE 61-79.
15 A party responding to interrogatories should either answer the interrogatory or state
specifically the grounds for the objection. In addition, it is incumbent on a party objecting to
a document request to state whether it is withholding documents based on a specified
objection. Fed. R. Civ. P. 34 Committee Notes on Rules – 2015 Amendment (“an objection to
a Rule 34 request must state whether anything is being withheld on the basis of the
objection”); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000).
16 To the extent that Petitioner found Respondent’s responses or objections inadequate or
improper, the burden was on Petitioner to file a motion challenging the sufficiency of the
responses. See H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1719 (TTAB 2008) (party
that receives response it believes inadequate but fails to file a motion to test sufficiency of
response, may not thereafter complain about its insufficiency).
Cancellation No. 92066032

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of the mark in connection with the services in the registration. In addition,
Respondent has submitted Exhibits consisting of, inter alia, web page snapshots from
her social media pages and other web pages, articles from third-party publications,
press releases and advertising flyers. Initially, we note that most of the Respondent’s
supporting evidence has not been properly authenticated.17 See Trademark Rule
2.122(e), 37 C.F.R. § 2.122(e); TBMP § 528.05(e) (2018). However, Petitioner has not
objected to the evidence on the basis that it cannot be admissible at trial. Instead, in
its reply brief, Petitioner states that it “accepts as true the evidence consisting of …
documents produced by the parties … and the declaration of Elizabeth Kofmehl
(formerly Scripps), and all of the exhibits thereto, which were filed concurrently with
Petitioner’s motion and Respondent’s opposition and cross motion.” 11 TTABVUE 4.
Thus, we have considered the evidence. See also Fed. R. Civ. P. 56(c)(2) (Advisory
Committee notes) (2010 amendment) (allowing a court to consider unauthenticated
documents on summary judgment).
We turn first to Respondent’s claims of use of her mark in connection with
“entertainment services in the nature of on-going television programs in the field of
polo sports events, and polo lifestyle.” In her declaration, Respondent states the
following:
I created and produced an ongoing television program titled POLO GIRLS. The
first program was produced in Miami Florida around April of 2009 .…
I sent the POLO GIRLS program to several production companies and
networks and ultimately entered into a “created by/executive producers”
agreement with High Noon Entertainment ….

17 For example, many of Respondent’s web page “snapshots” and Internet publications do not
include the date they were accessed and their source (URL). See Safer, Inc. v. OMS Invs.,
Inc., 94 USPQ2d 1031, 1039 (TTAB 2010).
Cancellation No. 92066032

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In an effort to further promote the POLO GIRLS brand, and to publish
video content I have produced, I created a branded YouTube page as
“PoloGirlsSociety”.… I published the first video to my branded YouTube page
on March 2, 2011 …. An additional video was published on October 24, 2012
.… Both of these videos have remained publicly accessible since their date of
publication.
An additional television program was produced under the POLO GIRLS
mark in 2012 with a new producer.…
In January of 2014, I tried an unconventional approach in an attempt to get
television networks[’] attention for the POLO GIRLS television program by
tagging them in a Facebook post regarding my POLO GIRLS television
program, and I included a screenshot of the POLO GIRLS logo included in the
program in the posting.
…
I also produced and distributed an additional television program under the
POLO GIRLS mark to production companies during early 2015.18

Respondent has submitted screenshots of the videos she produced and screenshots of
webpage where the videos were uploaded.19 In addition, Respondent has submitted
multimedia copies of the first video produced in 2009 and the “program” produced in
2012.20
Initially, we note that Respondent attests to producing only one video and
uploading it to www.youtube.com prior to the filing date of the involved application.
The second video was “published” on the website over one and one-half years later.
In addition, Respondent does not state that any of the videos were ever broadcast by
the networks or distributed by the production companies. Upon review of the
foregoing evidence, including the copies of the videos, we find that Respondent has

18 Kofmehl Declaration, ¶¶ 5-9 and 11, 8 TTABVUE 30-31.
19 Exhibits 5, 8, 9, 10 and 12, 8 TTABVUE 56-63, 172-79 and 182-86.
20 Exhibits 4 and 11, submitted on DVD. Submissions to the Board by external storage media
or devices are not permitted, but exhibits to declarations consisting of video recordings may
be transferred to DVD for submission. See Trademark Rule 2.126(a), 37 C.F.R. § 2.126(a);
TBMP §§ 106.03, 528.05(b) (2018).
Cancellation No. 92066032

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failed to demonstrate that no genuine dispute of material fact remains regarding her
use of the mark in commerce in connection with an “ongoing television program” prior
to the application filing date or during the alleged period of abandonment.21 See, e.g.,
S. Cent. Cmty. Servs., Inc. v. Wood, Cancellation No. 92048239, 2011 WL 3871950, at
*3 (TTAB 2011) (not precedential) (postings of short video clips on the Internet did
not demonstrate use of mark in connection with an “ongoing television program”).22
With respect to services consisting of “organizing and conducting polo sporting
events for the purpose of fundraising,” Respondent attests that she “held several
events” for fundraising purposes from June, 2010 through February, 2015, including
two events prior to the application filing date.23 In addition, Respondent submitted
documents in connection with each of the events.24 We find Respondent’s statement
that she “held” fundraising events vague and unclear as to Respondent’s role in the
events. In addition, Respondent’s supporting evidence identifies POLO GIRLS as
merely participating in many of the events identified and not as the organizer of the
polo events. Upon review of Respondent’s statements and the evidence submitted in
connection therewith, we find that Respondent has failed to demonstrate that no

21 For example, the multimedia copy of the video Respondent refers to as a “television
program” (submitted as Exhibit 11) is merely 30 seconds long and appears to be a promotional
video.
22 Decisions of the board not designated as precedent are not binding on the Board, but may
be cited for whatever persuasive weight to which they may be entitled. TBMP § 101.03 (2018).
23 Kofmehl Declaration, ¶ 12, 8 TTABVUE 31-32.
24 See 8 TTABVUE 89, 90, 100-01, 104, 125-27, 134-35 (Exhibit 6), 200-02 (Exhibit 17), 205
(Exhibit 18), 211 (Exhibit 19), and 213 (Exhibit 20).
Cancellation No. 92066032

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genuine disputes of material fact remain regarding Respondent’s use of the mark in
connection with “organizing and conducting” polo sporting events for the purpose of
fundraising prior to the filing date of the application and during the alleged period of
abandonment.
With regard to the remaining services in the registration, in paragraph 13 of her
declaration, Respondent attests that the POLO GIRLS polo team competed or
participated in polo sporting events under the mark on April 30, 2009, April 22, 2010
and August 6, 2010, prior to the application filing date.25 Respondent further states
that she competed in polo matches under the POLO GIRLS mark on May 30, 2014
and on July 19, 2014.26 We find Respondent’s testimony and the supporting evidence
sufficient to establish use of the mark in connection with “participation in the sport
of polo” and “performing and competing in polo sporting events” prior to the
application filing date and during the alleged abandonment period. See, e.g.,
Liqwacon Corp. v. Browning-Ferris Indus., Inc., 203 USPQ 305, 316 (TTAB 1979)
(oral testimony may be sufficient to establish both prior use and continuous use when
the testimony is proffered by a witness with knowledge of the facts and the testimony
is clear, convincing, consistent, and sufficiently circumstantial to convince the Board
of its probative value). Thus, the burden of production shifts to Petitioner to
demonstrate that a genuine dispute exists for trial regarding Respondent’s use of the

25 Kofmehl Dec., ¶ 13, 8 TTABVUE 32-33, 83-84, 86-89.
26 Kofmehl Dec., ¶ 13, 8 TTABVUE 34, 140-41.
Cancellation No. 92066032

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mark in connection with the services. See Enbridge, Inc. v. Excelerate Energy LP, 92
USPQ2d at 1540.
In its reply brief, Petitioner does not question the veracity of statements made in
Respondent’s declaration.27 Instead, Petitioner attacks Respondent’s documentary
evidence as insufficient on its face to prove use in commerce. 11 TTABVUE 5. In
short, Petitioner argues that the supporting documents do not go beyond advertising
and promotion and do not show that the events ever occurred or that the services
were rendered. We find Petitioner’s arguments insufficient to demonstrate that a
genuine dispute of material fact exists for trial with respect to Respondent’s use of
the mark in connection with “entertainment services, namely, participation in the
sport of polo” and “entertainment, namely, performing and competing in polo sports
events” prior to the application filing date and during the alleged abandonment
period.
II. Decision
Based on the record herein and the applicable law, we find that, at a minimum,
genuine disputes of material fact remain with respect to Respondent’s use of the mark
prior to the application filing date and during the alleged abandonment period in
connection with “Organizing and conducting polo sporting events for the purpose of
fundraising” and “Entertainment in the nature of on-going television programs in the
field of polo sports events, and polo lifestyle.” Accordingly, Petitioner’s motion for
summary judgment and Respondent’s cross-motion for summary judgment on the

27 On the contrary, as noted above, Petitioner has accepted as true the declaration of
Respondent.
Cancellation No. 92066032

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asserted nonuse and abandonment claims are DENIED, in part, with respect to the
foregoing services.28
In addition, we find that no genuine disputes of material fact remain for trial
regarding Respondent’s use in commerce in connection with “entertainment services,
namely, participation in the sport of polo” and “entertainment, namely, performing
and competing in polo sports events” prior to the application filing date and during
the three years prior to the petition for cancellation. Accordingly, Respondent’s cross-
motion for summary judgment on the asserted claims of nonuse and abandonment is
GRANTED, in part, with respect to the services.
Proceedings are resumed. Discovery is closed. Disclosure, trial and briefing dates
are reset as follows:
Plaintiff's Pretrial Disclosures Due 8/30/2018
Plaintiff's 30-day Trial Period Ends 10/14/2018
Defendant's Pretrial Disclosures Due 10/29/2018
Defendant's 30-day Trial Period Ends 12/13/2018
Plaintiff's Rebuttal Disclosures Due 12/28/2018
Plaintiff's 15-day Rebuttal Period Ends 1/27/2019
Plaintiff's Opening Brief Due 3/28/2019
Defendant's Brief Due 4/27/2019
Plaintiff's Reply Brief Due 5/12/2019
Request for Oral Hearing (optional) Due 5/22/2019

28 The fact that we have identified only certain genuine disputes as to material facts should
not be construed as a finding that these are necessarily the only disputes which remain for
trial. In addition, the evidence submitted in connection with a motion for summary judgment
or opposition thereto is of record only for consideration of that motion. Any such evidence to
be considered at final hearing must be properly introduced in evidence during the appropriate
trial period. See Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB
1993).

Cancellation No. 92066032

19
In each instance, a copy of the transcript of testimony, together with copies of
documentary exhibits, must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule 2.125.
Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An oral
hearing will be set only upon request filed as provided by Trademark Rule 2.129.