Anosh Toufighv.Persona Parfum, Inc.

Trademark Trial and Appeal Board

Jun 30, 2010

No. 92048305 (T.T.A.B. Jun. 30, 2010)

Mailed: June 30, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Anosh Toufigh

v.

Persona Parfum, Inc.
_____

Cancellation No. 92048305
_____

Jay H. Geller of Jay H. Geller, P.C., for Anosh Toufigh.

Persona Parfum, Inc., pro se.
_____

Before Seeherman, Cataldo and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

This is a cancellation proceeding in which Anosh
Toufigh (petitioner) seeks to cancel Registration No.
2944750, owned by Persona Parfum, Inc. (respondent), for
ECSTASY, for “parfum, eau de toilette, and cologne.”1
The grounds for cancellation asserted in the petition
are abandonment and fraud. Petitioner has alleged that his

1 Registered on the Principal Register on April 26, 2005, with a
Statement of Use filed June 3, 2004, alleging first use on
November 15, 2002, and first use in commerce on March 3, 2004.
THIS OPINION IS A
PRECEDENT OF THE TTAB
Cancellation No. 92048305
2
application, Serial No. 77220963, has been refused
registration on the ground of likelihood of confusion in
view of respondent’s registration. (Pet. Para. 6).
Petitioner asserts, upon information and belief, that
respondent’s mark has been abandoned. (Pet. Para. 4).
Petitioner further avers: “Upon information and belief,
Petitioner alleges that the registration was fraudulently
obtained in that the Allegation of Use that was filed for
the subject mark Registrant claimed that Registrant was
making a bona fide use of the mark in commerce which, upon
information and belief, Petitioner alleges was untrue and
known to be untrue at the time the statement was filed.
Upon information and belief, Petitioner alleges that
Registrant has never made a bona fide use of the subject
mark in commerce.” (Para. 5).
Respondent filed an answer denying the salient
allegations of the petition. Both parties filed briefs, and
petitioner filed a reply brief.
The record in this case includes the pleadings and the
file of the involved registration as well as the testimonial
deposition of petitioner, Anosh Toufigh, dated March 25,
2009, together with exhibits thereto, and petitioner’s
notice of reliance, consisting of TESS printouts of third-
party registrations. Respondent did not submit any evidence
or testimony.
Cancellation No. 92048305
3
Standing

Petitioner testified that he applied to register the
mark ECSTASY for “bath crystals, bath foams, bath powder,
bath salts, bubble bath, and foam bath,” as identified in
Application Serial No. 77220963. (Toufigh depo. at 7). We
note that petitioner alleged in the petition to cancel that
his application was “refused registration based upon
Registration No. 2944750.” (Petition Para. 6). However,
allegations alone do not establish standing. See Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 188 (CCPA 1982) (facts alleged at the pleading
stage must be proven at trial to establish standing). Here,
petitioner did not submit a copy of the office action, nor
did he testify about such refusal in his testimony. If he
had, this would have been sufficient to establish his
standing. As the Board stated in a recent precedential
decision: “The filing of opposer’s application and the
Office’s action taken in regard to that application provides
opposer with a basis for pleading its standing.” Fiat Group
Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111 (TTAB 2010),
citing Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d
1953, 1959 (TTAB 2008).
We must therefore determine whether petitioner can
establish his standing based solely on his testimony that he
Cancellation No. 92048305
4
filed an application for an identical mark for goods that
are similar to those in the respondent’s registration.
In Lipton, supra, 213 USPQ at 189, the Court discussed
at some length what was necessary to establish standing:
The starting point is the statute.
Congress has defined the class in
section 14 as “any person who believes
he is or will be damaged by the
registration.” (Emphasis added.) In
construing comparable language of
section 13, this court stated in
Federated Foods, Inc. v. Ft. Howard
Paper Co., 544 F.2d 1098, 1101, 192 USPQ
24, 27 (CCPA 1976):

A party has standing to oppose within
the meaning of § 13 if that party can
demonstrate a real interest in the
proceeding. Universal Oil Products Co.
v. Rexall Drug and Chemical Co., 59 CCPA
1120, 463 F.2d 1122, 174 USPQ 458
(1972).

The same general statement is applicable
to cancellation proceedings. The
purpose in requiring standing is to
prevent litigation where there is no
real controversy between the parties,
where a plaintiff, petitioner or
opposer, is no more than an
intermeddler.

The Court thus indicated that a party meets the
statutory requirement of establishing “a reasonable belief
of damage” (and thus establishing standing) by showing that
it possesses a real interest in the proceeding. Id. In the
present case, petitioner has shown that he has a real
interest in the proceeding, i.e., is not an intermeddler, by
the fact that he has filed an application to register the
Cancellation No. 92048305
5
trademark ECSTASY. “We regard the desire for a registration
with its attendant statutory advantages as a legitimate
commercial interest.” Id. Further, we consider that
petitioner has shown a reasonable basis for a belief that he
is damaged by the registration sought to be cancelled by
virtue of the fact that both parties’ marks are identical,
and their goods are at least arguably related.
As discussed above, prior cases have found standing to
be established by the fact that the petitioner’s application
has been refused registration on the basis of the
respondent’s registration. See cases discussed supra.
Nevertheless, evidence of such a refusal is not a
requirement to establish standing. Rather, it is sufficient
if the circumstances are such that it would be reasonable
for a petitioner to believe that the existence of the
respondent’s registration would damage him, e.g., a
reasonable belief that there is a likelihood of confusion
between the marks, or that the presence on the register of
the respondent’s mark may hinder the petitioner in using or
registering his mark.
Accordingly, we find that petitioner here has shown
that he has a reasonable belief of damage and a real
interest in this proceeding. Therefore he is not a mere
intermeddler, and he has established his standing.
15 U.S.C. §1064.
Cancellation No. 92048305
6
Abandonment
Section 14(3) of the Trademark Act, (15 U.S.C.
§1064(3), lists, as one of the grounds for cancellation,
abandonment, and Section 45 of the Act, 15 U.S.C. §1127, in
pertinent part, defines “abandonment” of a mark as follows:
When its use has been discontinued with
intent not to resume such use. Intent
not to resume may be inferred from
circumstances. Nonuse for 3 consecutive
years shall be prima facie evidence of
abandonment. “Use” of a mark means the
bona fide use of such mark made in the
ordinary course of trade, and not made
merely to reserve a right in a mark.

There are two elements to an abandonment claim: non-
use and an intent not to resume use. A plaintiff must show
both of these elements unless it can show three years of
nonuse, which prima facie establishes abandonment, in which
case the burden shifts to the defendant to show either that
it has used the mark, or that it has an intent to resume
use. See Cerveceria Centroamericana S.A. v. Cerveceria
India Inc., 892 USPQ2d 1307, 1309 (Fed. Cir. 1989).
To show nonuse of the mark, petitioner submitted his
own deposition testimony. Petitioner explained that he
investigated to see whether respondent “markets a fragrance
under the name ‘ECSTASY.’” (Toufigh depo at 7-8). This
effort basically involved three steps. First, petitioner
went to respondent’s website, www.personaparfum.com, where
he found no evidence of a fragrance marketed under the name
Cancellation No. 92048305
7
Ecstasy. Id. at 8 (and Exs. 3, 4). Next, he called the
corporate number listed on the website, but received no
answer. Id. Finally, he did Google searches for “Ecstasy
parfum” and “Ecstasy parfum persona parfum.” Id. (and Exs.
5, 6, 11). This led to information about several fragrance
names containing the word “Ecstasy.” Id. Petitioner
deduced that these are marketed by third parties. Id., and
Exs. 8, 9. 10; see also Petitioner’s Notice of Reliance.
Accordingly, petitioner concluded that there is nothing
available on the Internet about any fragrance marketed or
otherwise promoted or sold by respondent under the name or
mark Ecstasy, and that therefore respondent has abandoned
this mark with no intent to resume use.
Petitioner’s brief further alleges respondent did not
respond to petitioner’s discovery requests, which included
requests for production of documents and interrogatories, as
set forth in petitioner’s February 20, 2008 motion to
compel. However, petitioner’s motion to compel was denied
as premature, and petitioner never renewed the motion.
Neither has petitioner been able to point to any admissions
by respondent, whether through discovery or otherwise, that
would assist in making petitioner’s prima facie case of
nonuse for at least three consecutive years. Therefore, we
can draw no conclusions from respondent’s failure to respond
to petitioner’s discovery requests.
Cancellation No. 92048305
8
Petitioner points out that respondent has not submitted
any evidence into the record. However, the burden does not
shift to respondent unless petitioner has made a prima facie
case of abandonment. In short, petitioner must first make
his case by showing that petitioner has not used the ECSTASY
mark on the identified goods for at least three consecutive
years, as set forth in the statute, or by showing non-use
with no intent to resume use. This, petitioner has not
done.
In particular, petitioner has failed to show that
respondent has not used the mark ECSTASY for its identified
products for a period of at least three consecutive years.
Petitioner did testify to having checked respondent’s
website “on more than one occasion.” Id. at 8. However,
there is no evidence that he checked over a period of at
least three years. To the contrary, the exhibits he
submitted show printouts spanning merely a few weeks. Id.
Exs. 2 (dated March 23, 2009) and 3 (dated March 25, 2009).
Furthermore, as petitioner notes, the copyright date on
respondent’s website as of the date of the printouts reads
2002, leaving open the possibility that respondent has
simply not updated its website since 2002, which would
explain why its ECSTASY fragrance (with the registration
claiming a first use in commerce in 2004) is not listed
thereon. Respondent’s identification is not limited in its
Cancellation No. 92048305
9
channels of trade, and respondent need not market via the
Internet if it chooses not to do so. Petitioner noted no
other type of investigation into other possible sales
channels beyond calling the listed number for respondent’s
corporate office, the relevance of which is questionable
since clearly respondent must exist in some form, as is
evident from respondent’s appearance in this proceeding. As
for petitioner’s notice of reliance, the third-party
registrations he submitted do not contain the term ECSTASY,
and thus are not probative of the issue under consideration
in this proceeding.
Finally, petitioner was asked by his counsel, “Have you
ever been aware of a product in the marketplace, a fragrance
product called – sold under the brand name ‘Ecstasy’ from
Persona Parfum?” He responded, “No.” Id. at 15. This
testimony might have been telling, had petitioner been
established as an expert in fragrances with vast knowledge
of the fragrance marketplace. However, petitioner had
earlier testified that his business is “cosmetics,” and more
specifically “hair-removing products and also the
biocosmetic skin care products.” Id. at 7.
In sum, we find that petitioner has not established a
prima facie case that respondent has not used its mark for
at least three consecutive years. Accordingly, it was not
necessary for respondent to submit rebuttal testimony or
Cancellation No. 92048305
10
other evidence. Petitioner has failed to establish his
claim of abandonment, and the petition to cancel on this
basis is dismissed.
Fraud
The second ground for cancellation is fraud.
Specifically, petitioner avers that respondent made an
intentionally false statement during the prosecution of its
application by stating, in its Statement of Use, that the
mark was in use on the goods identified in the application.
The Court in In re Bose Corp., 476 F.3d 1331, 91 USPQ2d
1938, 1939 (Fed. Cir. 2009), set out the relevant standard
for proving fraud:
Fraud in procuring a trademark
registration or renewal occurs when an
applicant knowingly makes false,
material representations of fact in
connection with his application.”
Torres v. Cantine Torresella S.r.l., 808
F.2d 46, 48 [1 USPQ2d 1483] (Fed. Cir.
1986). A party seeking cancellation of
a trademark registration for fraudulent
procurement bears a heavy burden of
proof. W.D. Byron & Sons, Inc. v. Stein
Bros. Mfg. Co., 377 F.2d 1001, 1004 [153
USPQ 749] (CCPA 1967). 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).

Respondent executed and filed its Statement of Use on
June 3, 2004, stating that the mark was in use in commerce
Cancellation No. 92048305
11
on the goods identified therein. Petitioner has not
submitted any evidence that shows respondent’s mark was not
in use on its goods on that date. Since petitioner has
failed to show that any statements made in respondent’s
Statement of Use declaration were false, let alone proving
this to the hilt, petitioner’s claim of fraud fails.2
Decision: The petition to cancel is dismissed with
respect to both the ground of abandonment and the ground of
fraud.

2 In addition, although the question of the sufficiency of
petitioner’s pleading of fraud was not raised, we note that it is
not, under the Bose decision, a sufficient pleading. See Asian
and Western Classics B.V. v. Selkow, 92 USPQ2 1478 1479 (TTAB
2009).