Bonehead Brands, LLCv.Direct Impulse Design, Inc.

Trademark Trial and Appeal Board

Feb 13, 2019

CANC (T.T.A.B. Feb. 13, 2019)

mbm
February 13, 2019

Cancellation No. 92068333

Bonehead Brands, LLC

v.
Direct Impulse Design, Inc.

Before Wellington, Lykos, and Heasley,
Administrative Trademark Judges.

By the Board:

Direct Impulse Design, Inc. (“Respondent”) has moved for summary judgment on
Bonehead Brands, LLC’s (“Petitioner”) pleaded claim of abandonment. 7 TTABVUE.
The motion is fully briefed.
I. Background
Respondent owns Registration No. 3182681 for the mark BONE HEAD
OUTFITTERS and Design, as shown below, for “Men’s, women’s and children’s
clothing and sportswear, namely, sweatshirts, T-shirts, polo shirts, jackets, caps,
sweaters and shorts” in International Class 25:
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 OPINION IS NOT A
PRECEDENT OF THE
TTAB
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Respondent’s involved registration issued on December 12, 2006 on the Principal
Register. On October 17, 2012, Respondent filed a combined declaration under
Sections 8 and 15 of the Trademark Act, 15 U.S.C. §§ 1058, 1065. The USPTO issued
a notice of acceptance and acknowledgement of the combined Section 8 and 15
declaration on November 6, 2012. On May 11, 2016, Respondent filed a combined
declaration under Sections 8 and 9 of the Trademark Act, 15 U.S.C. § 1058, 1059. On
August 2, 2016, Post Registration issued an Office Action accepting the Section 9
portion of the combined filing but rejecting the specimen submitted in support of the
Section 8 declaration on the grounds that it is a printer’s proof and therefore does not
show use of the registered mark in commerce. Respondent had six months to file a
response submitting a substitute specimen and verification, but did not file a
response to the August 2, 2016 Office Action.1
On April 3, 2018, Post Registration issued another Office Action, reiterating its
rejection of the Section 8 declaration on the basis that the specimen constitutes a
printer’s proof and giving Respondent six months to file a response submitting a
substitute specimen and verification, failing which the registration would be
cancelled. On April 11, 2018, eight days after the second Office Action issued,

1 In its motion for summary judgment, Respondent maintains that it has no record of ever
receiving the August 2, 2016 Office Action. 7 TTABVUE 17.
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Petitioner filed a petition to cancel Respondent’s registration on the ground of
abandonment, based on Respondent’s failure to file a timely, acceptable Section 8
declaration. Two days later, on April 13, 2018, Respondent filed a combined Section
8 and 9 declaration with a substitute specimen and verification, which the USPTO
accepted on April 17, 2018, issuing a notice of renewal for the involved registration.
Petitioner’s claim of abandonment in the petition to cancel is predicated on the
above-identified registration history. In its May 22, 2018 answer to the petition to
cancel, Respondent denied the salient allegations therein.
II. Respondent’s Summary Judgment Motion
In support of its motion for summary judgment, Respondent submitted the
affidavit of Vernon P. Squires, counsel for Respondent; a copy of the April 3, 2018
Office Action and Respondent’s response thereto; and a copy of the USPTO’s April 17,
2018 notice of acceptance of Respondent’s combined Section 8 and 9 declaration. 7
TTABVUE 7-29.
In opposition to Respondent’s motion for summary judgment, Petitioner
submitted the following: excerpts from the August 2, 2016 and April 3, 2018 Office
Actions; correspondence sent from Respondent to Petitioner and Respondent’s
response thereto;2 and a copy of the TSDR prosecution timeline for Respondent’s
registration. 8 TTABVUE 9-20.

2 Any materials that are not considered self-authenticating under Trademark Rule 2.122(e),
37 C.F.R. § 2.122(e), must be properly authenticated by an affidavit or declaration. Inasmuch
as Petitioner did not submit an accompanying affidavit or declaration, the Board gives the
correspondence no consideration.
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For purposes of this order, we presume the parties’ familiarity with the pleadings,
the history of the proceeding and the arguments and evidence submitted with respect
to Respondent’s motion for summary judgment.
A. Summary Judgment Standard
Summary judgment is appropriate where the movant shows that there is no
genuine dispute as to any material fact and that it is entitled to judgment as a matter
of law. Fed. R. Civ. P. 56(a). A party asserting that a fact cannot be or is genuinely
disputed must support its assertion by either (1) citing to particular parts of materials
in the record, or (2) showing that the materials cited do not establish the absence or
presence of a genuine dispute, or that an adverse party cannot produce admissible
evidence to support the fact. Fed. R. Civ. P. 56(c).
A movant for summary judgment must bear the burden of proof in regard to its
motion. See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986). In deciding the
motion, the function of the Board is not to try issues of fact, but to determine if there
are any genuine disputes of material fact to be tried. See TRADEMARK TRIAL AND
APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 528.01 (2018) and cases cited
therein. When the moving party has supported its motion with a sufficient showing
that, if unopposed, indicates there is no genuine dispute of material fact and that the
moving party is entitled to judgment as a matter of law, the burden then 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).
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The nonmoving party must be given the benefit of all reasonable doubt as to
whether genuine issues of material fact exist, and the evidentiary record on summary
judgment, and all inferences to be drawn from the undisputed facts, must be viewed
in the light most favorable to the nonmoving party. See Opryland USA, Inc. v. Great
Am. Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992).
B. Decision
The petition for cancellation is predicated on the allegation that the registration
has been technically cancelled due to Respondent’s failure to file a timely response to
the August 2, 2016 Office Action or otherwise file an acceptable Section 8 declaration
before the expiration of the grace period. 1 TTABVUE, 8 TTABVUE 2. It is
Respondent’s contention that Petitioner’s abandonment claim is now moot, as the
USPTO accepted Respondent’s April 13, 2018 Section 8 and 9 declaration. 7
TTABVUE 2. It is Petitioner’s contention that the second Office Action never should
have been issued and should be “nullified.”3 8 TTABVUE 4.
Respondent’s registration was renewed on April 17, 2018. Contrary to Petitioner’s
assertion, a registration is not considered “technically” or automatically cancelled or
“abandoned” by virtue of a registrant’s purported failure to file a timely or acceptable
Section 8 declaration. Section 8 of the Trademark Act, 15 U.S.C. § 1058, provides that
“[e]ach registration shall remain in force for 10 years, except that the registration of

3 Petitioner further argues that the USPTO should not have accepted a renewal declaration
during the pendency of this cancellation proceeding. On the contrary, a respondent is
required to maintain its registration throughout the pendency of a cancellation proceeding
and failure to do so could result in judgment being entered against the respondent.
Trademark Rule 2.134(b), 37 C.F.R. § 2.134(b).
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any mark shall be canceled by the Director unless the owner of the registration files
in the United States Patent and Trademark Office affidavits that meet the
requirements of subsection (b)….” Failure to file a timely Section 8 declaration does
not result in an automatic cancellation of the registration; rather, an action must be
taken by the Director of the USPTO for the registration to be cancelled. In this case,
the Director did not cancel the involved registration, but rather accepted the April
13, 2018 filing and renewed the registration.
There is no mechanism under Section 8 by which a third party can seek the
cancellation of a registration in an inter partes proceeding based on an allegedly
deficient or untimely filing. Nor does the Board have jurisdiction to review the
acceptance of the April 13, 2018 filing or the purported failure of the Director of the
USPTO to cancel the registration pursuant to Section 8. Cf. Century 21 Real Estate
Corp. v. Century Life of America, 10 USPQ2d 2034, 2035 (TTAB 1989) (a plaintiff may
not base a claim on purported error by the examining attorney reviewing an
application). Rather, any petition to cancel a registration more than five years old
must be based on one of the specifically enumerated grounds of Section 14(3) of the
Trademark Act, 15 U.S.C. § 1064(3). Section 14(3) provides, in pertinent part, that a
petition to cancel may be filed:
At any time if the registered mark becomes the generic name for the goods or
services, or a portion thereof, for which it is registered, or is functional, or has
been abandoned, or its registration was obtained fraudulently or contrary to
the provisions of section 1054 of this title or of subsection (a), (b), or (c) of
section 1052 of this title for a registration under this chapter, or contrary to
similar prohibitory provisions of such said prior Acts for a registration under
such Acts, or if the registered mark is being used by, or with the permission of,
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the registrant so as to misrepresent the source of the goods or services on or in
connection with which the mark is used.
15 U.S.C. § 1064(3).
An allegation that a registrant made an untimely or deficient declaration under
Section 8, or that the USPTO should not have renewed a registration, is not an
available ground for cancellation under Section 14(3).
Petitioner couches its claim as one of abandonment, which is an available claim
against a registration more than five years old under Section 14(3) of the Trademark
Act; however, Petitioner’s allegations do not constitute abandonment as defined by
Section 45 of the Trademark Act, 15 U.S.C. § 1127. Section 45 provides, in pertinent
part, that a mark is deemed to be abandoned when one of the following occurs: “(1)
When its use has been discontinued with intent not to resume such use…; (2) 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.” 15
U.S.C. § 1127.
Here, Petitioner has made no allegations that Respondent abandoned its mark
due to nonuse or loss of significance as a trademark. Petitioner has therefore not
pleaded or presented a proper claim of abandonment.
In view of the foregoing, the Board finds that there is no genuine dispute of
material fact remaining for trial; Petitioner’s allegations do not constitute a viable
claim for abandonment or state any other ground for cancellation under the
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Trademark Act. Accordingly, Respondent’s motion for summary judgment is granted
and the petition to cancel is denied with prejudice.