Booze Pops, LLCv.Indigo Ice Corporation

Trademark Trial and Appeal Board

Dec 30, 2020

92068413 (T.T.A.B. Dec. 30, 2020)

MZL Mailed: December 30, 2020

Cancellation No. 92068413
Booze Pops, LLC

v.
Indigo Ice Corporation
Before Kuczma, Larkin and Lebow,
Administrative Trademark Judges.

By the Board:

This case now comes up on Petitioner’s (Booze Pop, LLC) motion for
judgment on the pleadings or for summary judgment or, in the alternative, to
strike Respondent’s (Indigo Ice Corporation) response to the Board’s order of
April 29, 2020. The motion is fully briefed.
I. Relevant Background
Respondent owns a registration for the mark shown below for “Alcoholic
cocktails in the form of frozen pops” in International Class 33 (“the
Registration”):1

1 Registration No. 5201202, issued May 9, 2017, based on Respondent’s allegation of
use in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a),
alleging a date of first use and first use in commerce of October 15, 2016.

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

THIS ORDER IS NOT
A PRECEDENT OF
THE TTAB
Cancellation No. 92068413

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Petitioner filed a Petition to Cancel the Registration on grounds of nonuse
of the mark prior to the expiration of time for filing the statement of use in
support of registration under Section 1(a) of the Trademark Act, 15 U.S.C. §
1051(a); unlawful use of the mark based on a per se violation of the Federal
Alcohol Administrative Act (“FAA”) and Alcohol and Tobacco Tax and Trade
Bureau’s (“TTB”) regulations regulating the distribution and sale of
Respondent’s goods; and deceptive misdescriptiveness under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. § 1052(e).2 Respondent denied the salient
allegations in its answer to the petition, and asserted five purported
“affirmative defenses” that we construe to be mere amplifications of
Respondent’s denials of Petitioner’s claims.3
Following discovery, Petitioner moved for leave to add a claim of
abandonment pursuant to Trademark Act Section 45, 15 U.S.C. § 1127, as a
fourth ground for cancellation,4 which the Board granted as conceded.5 The
Board allowed Respondent thirty days to file an answer to the amended

2 1 TTABVUE (Petition for Cancellation).
3 11 TTABVUE (Answer).
4 14 TTABVUE (Motion for Leave to Amend Petition to Cancel).
5 16 TTABVUE (Board order of April 2, 2019). In the same order, the Board also
granted Respondent’s separately filed Motion to Amend to amend its Answer to add
the affirmative defense of “unclean hands.”
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petition.6 However, Respondent did not file an answer to the amended petition
within that time frame and the case inadvertently proceeded to trial without
an answer to the amended petition.
Two weeks after the close of Petitioner’s testimony period and before the
opening of its own testimony period, Respondent filed a motion to amend the
identification of goods in the Registration.7 Specifically, Respondent sought to
amend the identification from “Alcoholic cocktails in the form of frozen pops”
to “Frozen pops with alcohol.”8 Because Petitioner did not consent to the
proposed amendment, and in fact opposed the motion,9 the Board deferred
consideration of the motion until final decision or summary judgment to allow
the parties “to more appropriately develop the record and argue the effect of
the amendment.”10
Respondent filed no testimony and presented no evidence during its
testimony period. Approximately three months after the close of Respondent’s
testimony period and two weeks before Petitioner’s trial brief was due, it came
to the Board’s attention that Respondent had not filed an answer to the

6 Id.
7 23 TTABVUE (Respondent’s Motion to Amend Registration). On the same date,
Respondent filed a Request to Amend the Registration with the Post-Registration
division of the USPTO. September 27, 2019 Section 7 Request, TSDR 1-7.
8 Id.
9 24 TTABVUE (Petitioner’s Response to Respondent’s Motion to Amend
Registration).
10 25 TTABVUE (Board order of November 27, 2019). See Trademark Rule 2.133(a),
37 C.F.R. § 2.133(a) (registration subject to a cancellation may not be amended except
with the consent of the party or parties and approval of the Board, or upon motion
granted by the Board).
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amended petition within the allotted time. Accordingly, the Board issued an
order requiring Respondent to file an answer to the amended petition within
30 days to avoid an order to show cause as to why default judgment should not
be entered against Respondent.11 In the meantime, the proceeding was
suspended.12
Respondent filed a response to the Board’s order on the same date, asking
the Board to construe the preamble in Respondent’s first amended answer as
a “continued general denial of the salient allegations set forth in all of
Petitioner’s pleadings.”13 The Board construed Respondent’s answer as
requested, albeit not until issuing its order approximately two and a half
months later, wherein it also reset the parties’ final briefing dates.14 The
proceeding remained suspended in the interim.
Plaintiff’s motion for judgment on the pleadings or summary judgment, or
in the alternative to strike Respondent’s response to the Board’s order of April
29, 2020, was filed approximately one week before the deadline to file its trial
brief. Because Petitioner relies on statements made outside of the pleadings to
support its motion, the Board, in its order of August 13, 2020, construed
Petitioner’s motion as one for summary judgment. The motion is fully briefed.15

11 26 TTABVUE (Board order of April 29, 2020).
12 Id.
13 27 TTABVUE (Respondent’s Response to Board order of April 29, 2020).
14 28 TTABVUE (Board order of July 16, 2020).
15 Petitioner asserts in its motion that “[Respondent] pled that it abandoned its Mark,
and has otherwise admitted abandonment.” 29 TTABVUE 5. Elsewhere in the motion,
Petitioner states that “[Respondent] unequivocally admits in its own pleading that it
has abandoned its Mark and Registration because it has discontinued its use in
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II. Preliminary Issue – Respondent’s Motion to Amend
Registration
As noted, Respondent’s motion to amend the identification of goods in the
Registration was deferred until final decision or summary judgment. Because
the proposed amendment bears on our decision on the pending motion, we
resolve the motion to amend now. Section 18 of the Trademark Act provides
the Board with broad authority to limit, or otherwise modify, the goods or
services in a registration or an application. 15 U.S.C. § 1068. However, a
registration that is the subject of a Board inter partes proceeding may not be
amended except with the consent of the other party or parties and the approval
of the Board, or upon motion granted by the Board. Trademark Act Section
7(e), 15 U.S.C. § 1057(e); Trademark Rule 2.133(a), 37 C.F.R. § 2.133(a).
As noted above, Respondent seeks to amend the identification of goods in
the Registration from “Alcoholic cocktails in the form of frozen pops” to “frozen
pops with alcohol.”16 Respondent contends that amendment of the registration
is proper “under TMEP17 [§] 1402.07(c) because it is evolving technology where
the previous description is no longer accurate and because of opinions that
Registrant has received from the TTB regarding the category or lack thereof
that the goods fit into.”18 According to Respondent, it “meets the criteria used
in the [USPTO’s] evolving technology pilot program” because Respondent owns

commerce (and, in fact, never used it in actual commerce).” Id. at 7. However, no such
admissions are found in Respondent’s Amended Answer.
16 23 TTABVUE (Respondent’s Motion to Amend Registration).
17 TRADEMARK MANUAL OF EXAMINING PROCEDURE.
18 Id.
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a registered trademark; provides goods in their evolved form with the same
underlying content or subject matter as the original goods; no longer provides
the original form of goods; and no longer provides any goods identified in the
Registration that contain the same underlying content.19
Opposing the motion, Petitioner asserts that the proposed amendment
“seems to be little more than a rearrangement of words.”20 Petitioner further
notes that “[t]his amendment could have been filed by the Respondent at any
time in the past year or more, but Respondent waited until the day that
Respondent’s Pre-Trial Disclosures were due, and subsequent to Petitioner’s
timely filing of its testimony and evidence.”21
In its request for reconsideration of the decision deferring consideration of
the motion for “judicial efficiency,” Respondent stated that
[Respondent] … cannot sufficiently argue its denials of
Petitioner’s claims at trial without the evolved amended goods
description. …

As stated in the motion to amend, ‘[Respondent] no longer
provide[s] the original form of [the] goods/services.’ On its face,
Respondent has already admitted to recent abandonment. …
Respondent further stated in the motion to amend, ‘[Respondent]
feels they [sic] must abandon the registration since with the
current description of goods the goods description no longer
accurately describes the goods without this amendment.’ …

For judicial efficiency, the subject registration should be evolved
before trial briefs and before the Board has to wade through
documents that have become irrelevant. Registrant cannot get
TTB approval of what they used to make nor does registrant’s

19 Id.
20 24 TTABVUE 3 (Petitioner’s Response to Respondent’s Motion to Amend
Registration).
21 Id.
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former goods fit any per se categories. Registrant has already
admitted to abandonment without the evolved goods
description.22

There are various reasons why Respondent’s motion to amend must be
denied, not the least of which is Respondent’s failure to file its motion early
enough to provide Petitioner with sufficient notice of its proposed change
before trial. See, e.g., Personnel Data Sys., Inc. v. Parameter Driven Software,
Inc., 20 USPQ2d 1863, 1865 (TTAB 1991) (respondent’s Section 18 motion to
restrict identification of goods in its registration denied because petitioner had
not been put on notice before it presented its case that respondent intended to
amend its identification of goods). Petitioner, therefore, did not have an
opportunity to take discovery related to the purportedly “evolved” goods and
could not prepare its case in view thereof.
Moreover, Respondent provides no factual details or explanation regarding
how the USPTO’s technology evolution pilot program, memorialized in TMEP
§ 1402.07(c), is applicable to its situation. As the USPTO explains, the
technology evolution pilot program allows trademark owners the opportunity,
under limited circumstances, to amend their registrations if they “provide the
same fundamental goods/services through an updated means, method, or
format.”23 Examples of amendments permitted under this provision include
situations such as amending “printed children’s books” to downloadable

22 27 TTABVUE 2-3 (Respondent’s Response to Board order of April 29, 2020).
23 See “Amending your registration’s goods/services when technology evolves”:
https://www.uspto.gov/trademarks-maintaining-trademark-registration/amending-
your-registration-s-goodsservices-when (accessed December 29, 2020).
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electronic children’s books”; “phonograph records featuring music” to “musical
sound recordings”; “floppy discs for computers for word processing” to
“providing on-line downloadable software for word process”; and “telephone
banking services” to “on-line banking services.”24
However, Respondent provides no details regarding the purported change,
and its arguments are in conflict with one another. On the one hand,
Respondent asserts that the current identification of goods no longer
accurately describes the goods.25 On the other hand, Respondent asserts that
the purported change does not result in different goods: “[T]hey are products
that are evolving to meet TTB regulations.”26 How the goods’ technology
purportedly evolved—to change the manner or medium by which the goods are
offered for sale or provided to customers—we are not told. Respondent’s
assertions are meaningless without explanation.
Dancing around the issue, Respondent asserts that the present description
is no longer accurate “because of opinions [it] has received from the TTB”;27 yet
Respondent does not provide us with copies of those opinions or even
descriptions of their substance or the particular TTB regulations to which they
purportedly pertain. We therefore have no basis upon which to find that
Respondent’s goods involve any evolving technology, or that the goods have
actually evolved in any manner, such that an amendment to the description of

24 Id.
25 23 TTABVUE 2-3 (Respondent’s Motion to Amend Registration).
26 31 TTABVUE 3-5 (Respondent’s Opposition to Motion for Summary Judgment).
27 23 TTABVUE 2 (Respondent’s Motion to Amend Registration).
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goods would be warranted. While Respondent, for obvious reasons, may wish
to reclassify its goods as a food (that happens to contain alcohol) rather than
as an alcohol beverage (that happens to be provided in food form), that has no
bearing on the actual nature of the goods, or Respondent’s eligibility to secure
the requested amendment.
Respondent’s motion to amend the identification of goods in the
Registration is denied.
III. Timeliness of Petitioner’s Motion for Summary Judgment
Respondent challenges the timeliness of Petitioner’s motion for summary
judgment. Specifically, Respondent asserts that “[t]he Board’s order on
7/16/2020 clearly identifies that we are already in the briefing stage of the
proceeding and the deadline for pretrial disclosures is long past. The motion
must be denied.”28
Petitioner replies that “[it] could not have filed the instant Motion before
pretrial disclosures, because [Respondent] had not yet pleaded in response to
the Amended Complaint for Cancellation and had not yet denied
abandonment. Prior to July 16, 2020, the question of abandonment was not
properly pleaded to permit a summary judgment motion. Petitioner acted with
proper diligence in the filing of the instant Motion as soon as the issue became
ripe for adjudication.”29 Petitioner also notes that the Board, in its order of

28 31 TTABVUE 2 (Respondent’s Objections to Motion for Summary Judgment,
hereafter “Respondent’s Objections to Motion”).
29 32 TTABVUE 4-5 (Petitioner’s Reply in support of Motion for Judgment).
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August 13, 2020, stated that it would exercise its discretion to consider the
motion.30
Respondent correctly observes that the motion is untimely. Trademark
Rule 2.127(e)(1) provides that “[a] motion for summary judgment, if filed,
should be filed prior to the commencement of the first testimony period, as
originally set or as reset, and the Board, in its discretion, may deny as
untimely any motion for summary judgment filed thereafter.” 37 C.F.R. §
2.127(e)(1) (emphasis added). However, Petitioner is equally correct in noting
that the Board stated in its August 13, 2020 order that it would exercise its
discretion to consider the motion.31
Due to the unusual procedural circumstances of this case, where
Respondent’s failure to file an answer to the amended petition was not noted
by the Board until after Petitioner had presented its case-in-chief, Petitioner
correctly argues that it could not have filed a motion for judgment at any time
prior to trial. While the better practice would have been for Petitioner to have
filed a timely motion for an order to show cause as to why judgment should not
have been entered against Respondent for failure to file its amended answer,
the fact remains that Respondent’s answer was delinquent and in violation of
the Board’s order, which was issued more than a year prior to Respondent’s
motion to amend.
Based on the foregoing, and the fact that Respondent presented no

30 Id.
31 30 TTABVUE.
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testimony or evidence during its testimony period, we find it to be in the
interest of judicial economy to exercise our discretion not to deny the subject
motion for summary judgment as untimely and to consider it on its merits.
IV. Motion for Summary Judgment
Although Petitioner briefly discusses its claims of nonuse and unlawful use
in its motion, we find Petitioner’s evidence insufficient to establish that there
is no genuine dispute of material fact related to those claims.32 The claim of
deceptive descriptiveness is not addressed at all. Therefore, we focus only on
the ground of abandonment.
A. Entitlement to a Statutory Cause of Action

We first consider Petitioner’s entitlement to bring a statutory cause of
action. A plaintiff’s entitlement to a statutory cause of action, formerly referred
to as “standing,” is a threshold issue in every inter partes case before the
Board. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277
(Fed. Cir. Oct. 27, 2020). See also Australian Therapeutic Supplies Pty. Ltd. v.
Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 (Fed. Cir. 2020);
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d
1058, 1062 (Fed. Cir. 2014); Spanishtown Enters., Inc. v. Transcend Resources,

32 For example, Petitioner’s argument and evidence related to nonuse are based on
Respondent’s admissions during discovery that Respondent had not “sold” its goods in
commerce or “transported” them for sale. However, a for-profit sale is not required
under the Trademark Act. See, e.g., Capital Speakers Inc. v. Capital Speakers Club of
Washington D.C. Inc., 41 USPQ2d 1030, 1034 n.3 (TTAB 1996); McDonald’s Corp. v.
McKinley, 13 USPQ2d 1895, 1898 n.6 (TTAB 1989) (finding that goods need not be
sold “in order to come within the ambit of the statute”).
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Inc., 2020 USPQ2d 11388 (TTAB 2020). To establish entitlement to a statutory
cause of action, Petitioner must demonstrate (i) an interest falling within the
zone of interests protected by the statute (here, 15 U.S.C. § 1127), and (ii) a
reasonable belief in damage proximately caused by continued registration of
the mark. See Spanishtown, 2020 USPQ2d 11388 at *1 (citing Corcamore, 2020
USPQ2d 11277, at *4). See also 15 U.S.C. § 1063.
Respondent challenges Petitioner’s standing, asserting that “Petitioner did
not plead standing in its motion for summary judgment brief. Petitioner did
not prove standing in its motion for summary judgment. Petitioner submitted
no status copies of registrations with its motion, no refusal, no testimony.
Registrant did not admit to Petitioner’s standing in its answer.”33
In reply, Petitioner argues that “the undisputed evidence shows that
standing very clearly exists in this case.”34 In particular, Petitioner points to
the testimony declaration of Woodrow Norris,35 the “controlling member” of
Petitioner, which states inter alia that:36
4. [Respondent] applied for registration of the mark BOOZE
POPS with the [USPTO] for services identified and [sic] mobile
street vendor services featuring food and drink, as more fully
shown in … Application Serial No. 87/681813 and Exhibit B.

5. The mark which is the subject of … Application Serial No.

33 31 TTABVUE 2 (Respondent’s Opposition to Motion for Summary Judgment).
34 32 TTABVUE 5 (Petitioner’s Reply Brief in support of Motion for Summary
Judgment).
35 Id. Due to the unusual procedural posture of this proceeding, Petitioner has already
presented testimony and other evidence during its testimony period, which is of record
in this proceeding. As noted previously, Respondent did not present any testimony or
evidence during its testimony period.
36 31 TTABVUE 2-3.
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87/681813 was refused registration due to the existence of …
Registration No. 5,201,202 for the mark BOOZY POPS (plus
design) as allegedly used to identify alcoholic cocktails in the form
of frozen pops.

6. Prosecution of … Serial No. 87/681813 is suspended pending
the disposition of this Cancellation. Exhibit C.

Exhibit B of the declaration provides a copy of Petitioner’s application, and
Exhibit C provides a copy of the Trademark Examining Attorney’s office action
suspending action in Petitioner’s application pending disposition of this
proceeding.
Mr. Norris’ testimony that Petitioner owns a pending application that was
refused based on Petitioner’s Registration, along with USPTO records in
support, establishes that Petitioner has an interest falling within the zone of
interests protected by the Lanham Act, and a reasonable basis for its belief of
damage proximately caused by the continued registration of Respondent’s
mark. Spanishtown, 2020 USPQ2d 11388 at *1 (citing Corcamore, 2020
USPQ2d 11277, at *4). This is sufficient to demonstrate that Petitioner is
entitled to pursue its abandonment cause of action.
B. Standard for Summary Judgment

Summary judgment is appropriate only where there are no genuine
disputes as to any material facts, thus allowing the case to be resolved as a
matter of law. Fed. R. Civ. P. 56(a). The party seeking summary judgment
bears the initial burden of demonstrating the absence of any genuine dispute
of material fact, and the party is entitled to a judgment under applicable law.
Cancellation No. 92068413

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See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Sweats Fashions, Inc. v.
Pannill Knitting, 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987). A
factual dispute is genuine if, on the evidence of record, a reasonable fact finder
could resolve the matter in favor of the non-moving party. See Opryland USA
Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed.
Cir. 1992); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d
1542, 1544 (Fed. Cir. 1992).
Evidence on summary judgment must be viewed in a light most favorable
to the non-movant, and all justifiable inferences are to be drawn in the non-
movant’s favor. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d
2027, 2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472. The Board
may not resolve genuine disputes as to material facts; it may only ascertain
whether genuine disputes as to material facts exist. See Lloyd’s Food Prods.,
25 USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1544.
C. The Law of Abandonment and the Parties’ Arguments

Trademark Act § 45, 15 U.S.C. § 1127 defines “abandonment” of a mark as
follows: “When its use has been discontinued with intent not to resume such
use.” To prevail on its claim of abandonment, Petitioner must demonstrate by
a preponderance of the evidence that there is no genuine dispute that
Respondent has ceased use of the mark without intent to resume use. See
Crash Dummy Movie LLC v. Mattel, Inc., 601 F.3d 1387, 94 USPQ2d 1315,
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1316 (Fed. Cir. 2010); Lewis Silkin LLP v. Firebrand LLC, 129 USPQ2d 1015,
1020 (TTAB 2018).
Petitioner points to Respondent’s statements and admissions made in the
motion to amend the Registration to support its argument that there is no
genuine dispute of material fact that Respondent has abandoned the mark in
the Registration with respect to the goods identified therein. Petitioner
highlights the following statements by Respondent, discussed earlier, but
which bear repeating here:
[Respondent] no longer provides the original form of
goods/services.37

[Respondent] no longer provides any goods/services identified in
[the] registration that contain the same underlying content.38

If the amendment is improper procedurally or otherwise cannot
be made and cannot be amended to meet requirements,
[Respondent] feels they [sic] must abandon the registration since
with the current description (sic) the goods description no longer
accurately describes the goods without this amendment.39

On its face, Respondent has already admitted to recent
abandonment.40

Respondent has already admitted to abandonment without the
evolved goods description.41

Respondent does not dispute any of aforementioned statements. Indeed,
Respondent’s sole argument in defense of the charge of abandonment is that

37 23 TTABVUE 2 (Respondent’s Motion to Amend Registration) (Respondent’s
brackets omitted).
38 Id.
39 Id. at 2-3.
40 27 TTABVUE 3 (Respondent’s Response to Board order of April 29, 2020).
41 Id.
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Petitioner has not made a claim that the changes that Respondent
is requesting in its amendment have changed the product into a
distinctly different product intended for a different ultimate
purchaser. This is not a case of the chicken or the egg.42 It is
Respondent’s position that changes from “Alcoholic cocktails in
the form of frozen pops” to “frozen pop with alcohol” are not
different products, they are products that are evolving to meet
TTB regulations. A genuine dispute of material fact regarding the
metes and bounds of frozen alcohol product evolution precludes
summary judgment.43

As discussed in our consideration of Respondent’s motion to amend the
Registration, Respondent has provided no evidence or explanation regarding
its purportedly “evolved” goods. As such, we have no basis to find that the goods
have evolved. Instead, we accept at face value Respondent’s statement that
“Respondent has already admitted to the recent abandonment without the
evolved goods description” and its other several admissions of abandonment,
including its statement that it must surrender its registration if the motion to
amend is not granted. Respondent has done nothing to rebut the prima facie
case of abandonment arising from its own admissions. Accordingly, we find no
genuine dispute of material fact regarding Respondent’s abandonment of the
mark in the Registration.
V. Decision
In view of the foregoing, Petitioner’s motion for summary judgment on the
ground of abandonment is granted, and the petition for cancellation is

42 Respondent’s “chicken or the egg” reference refers to Food Producers, Inc. V. Swift
& Co., 194 USPQ 299 (TTAB 1977), which held that an egg was a distinctly different
product than a chicken, an argument that is irrelevant in this case.
43 31 TTABVUE 3-4 (Respondent’s Response to Motion for Summary Judgment).
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granted. Registration No. 5201202 for the mark BOOZYPOP and design will
be cancelled in due course.44

44 Inasmuch as Petitioner’s motion for summary judgment is granted, the Board will
not address Petitioner’s alternative motion to strike Respondent’s response to the
Board’s order of April 29, 2020.