Burnt Church Distillery, LLCv.Savannah Bourbon Company, LLC

Trademark Trial and Appeal Board

Jul 20, 2021

92074273 (T.T.A.B. Jul. 20, 2021)

Webster
July 20, 2021

Cancellation No. 92074273

Burnt Church Distillery, LLC

v.
Savannah Bourbon Company, LLC

Before Zervas, Wolfson, and Larkin,
Administrative Trademark Judges.

By the Board:

Burnt Church Distillery, LLC (“Petitioner”) seeks cancellation of the standard
character mark SPIRIT OF THE LOWCOUNTRY for “alcoholic beverages, except
beer” in International Class 33.1 As grounds for cancellation, Petitioner asserts
nonuse of the mark and fraud. Both claims are based on allegations that Savannah
Bourbon Company, LLC (“Respondent”) made only a single, “token” use of the goods
under the subject mark prior to filing its statement of use on March 5, 2020, with no
intention to use the mark in the ordinary course of trade.2 In its answer, Respondent
denies the salient allegations of the petition. 4 TTABVUE.

1 Registration No. 6059120 issued on May 19, 2020 on the Principal Register with a claim of
acquired distinctiveness under Trademark Act Section 2(f), 15 U.S.C. § 1052(f), in part, as to
the term “LOWCOUNTRY.”
2 Petition for Cancellation ¶¶ 5A-5D, 15-18, 1 TTABVUE 5-6.
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. 92074273

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This proceeding comes up on Respondent’s motion, filed March 10, 2021, for
summary judgment on both claims in the petition. The motion is fully briefed.
As a preliminary matter, in its reply brief, Respondent argues that Petitioner’s
brief in response to the motion should be stricken because it includes single-spaced
text and would exceed the 25-page limit if it complied with the Board’s rules
concerning the form of submissions to the Board. 10 TTABVUE 8. Trademark Rule
2.126(b), 37 C.F.R. § 2.126(b), requires all submissions to the Trademark Trial and
Appeal Board to be printed “in at least 11-point type and double-spaced.” Although,
as written, Petitioner’s response brief is within the 25-page limit for a brief in
response to a motion under Trademark Rule 2.127(a), 37 C.F.R. § 2.127(a), without
the improper formatting, the brief would clearly exceed the 25-page limit, as several
pages of the brief are single-spaced in violation of Rule 2.126(b). See 9 TTABVUE 5-
10, 24-25. Because we find the error to be harmless, we exercise our discretion to
consider Petitioner’s brief in response to the motion. Cf. Cornsorzio del Prosciutto di
Parma v. Parma Sausage Prods. Inc., 23 USPQ2d 1894, 1896 (TTAB 1992) (Board
considered brief within page limit despite excessive single-spaced footnotes
containing discussion).
However, because Petitioner failed to plead in the petition for cancellation that
the mark is descriptive, generic, primarily geographically descriptive, and/or a
geographical indication, and Petitioner has not filed a motion for leave to amend the
petition to add such claims, we have not considered Petitioner’s arguments asserting
the claims in Sections II, III, IV, and V of is brief. See Blansett Pharmacal Co. v.
Cancellation No. 92074273

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Carmrick Labs. Inc., 25 USPQ2d 1473, 1477 (TTAB 1992); Perma Ceram Enters. Inc.
v. Preco Indus. Ltd., 23 USPQ2d 1134, 1135 n.2 (TTAB 1992) (no consideration given
to three unpleaded grounds asserted by opposer in response to applicant’s motion for
summary judgment).3
I. The Relevant Arguments and Evidence
A. Respondent’s Arguments and Evidence
Turning to Respondent’s motion, Respondent asserts that it has been using the
subject mark in commerce since at least March 5, 2020, the deadline for filing its
statement of use. 5 TTABVUE 5-6, 14. In support of its motion, Respondent has
submitted the Declaration of Charles Barfield, managing member of Respondent, and
the exhibits attached thereto. Mr. Barfield attests to the following, among other
things:
 Respondent ordered 100 neck hangers from its marketing partner featuring
the mark SPIRIT OF THE LOWCOUNTRY for use on bottles of its vodka
and bourbon while waiting for final printing of labels containing the mark;4
 The neck hangers were shipped to Respondent on February 19, 2020;5

3 In addition, because Petitioner has not provided any reason for its delay in asserting the
additional claims, we decline to treat the response as a motion to amend the pleading under
Fed. R. Civ. P. 15(a). See, e.g., Embarcadero Tech., Inc. v. Delphix Corp., 117 USPQ2d 1518,
1523 (TTAB 2016) (In deciding whether to grant leave to amend, the Board may consider,
among other things, whether the party unduly delayed).
4 Barfield Decl. at ¶¶ 11, 12, 5 TTABVUE 20.
5 Id. at ¶ 13, 5 TTABVUE 20.
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 Respondent placed the neck hangers on bottles of its alcoholic beverages
that were available for purchase at retail liquor stores in Savannah,
Georgia at least as early as March 5, 2020;6
 A customer purchased a bottle of vodka bearing the SPIRIT OF THE
LOWCOUNTRY neck hanger on March 5, 2020;7 and
 Later in March 2020, Respondent began shipping bottles of vodka with
labels bearing the mark to liquor stores throughout Georgia and, in June
2020, Respondent began using new neck hangers displaying the mark on
its bottles of vodka.8
Mr. Barfield also identifies the exhibits submitted with the declaration supporting
the foregoing statements, including a copy of an invoice for the purchase of original
neck hangers;9 a copy of a photograph showing the neck hangers bearing the mark
on bottles of alchoholic beverages on display at a retail liquor store;10 Respondent’s
email communications with the printing company regarding its order for labels and
the printer’s proof for the labels;11 and copies of photographs of bottles of
Respondent’s goods displaying the mark on a label and neck hanger.12 In addition,

6 Id. at ¶ 14, 5 TTABVUE 20.
7 Id. at ¶ 17, 5 TTABVUE 21
8 Id. at ¶¶ 20, 21, 5 TTABVUE 21.
9 Id. at ¶ 13, 5 TTABVUE 32-33 (Exhibit D).
10 Id. at ¶ 14, 5 TTABVUE 34-35 (Exhibit E). A truncated version of this photograph was
submitted as the specimen of use with Respondent’s Statement of Use filed March 5, 2020.
11 Id. at ¶¶ 8-10, 5 TTABVUE 23-31 (Exhibits A-C).
12 Id. at ¶¶ 20, 21, 5 TTABVUE 40-43 (Exhibits H, I).
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Mr. Barfield testifies that Exhibit F is a photograph of a bottle displaying the mark
being held by a purchaser on March 5, 2020 and Exhibit G is a copy of a photograph
displaying a receipt for the sale of “a bottle of SBC’s vodka sold on March 5, 2020,”
along with the driver’s license of the purchaser of the goods.13
Respondent argues that because the foregoing use of the mark constitutes bona
fide use of the mark in commerce in the ordinary course of trade, Respondent is
entitled to judgment as a matter of law on the nonuse in commerce claim. Id. at 10.
With respect to Petitioner’s fraud claim, Respondent argues that not only did it not
make a false statement regarding use of the mark in commerce, there is no evidence
that Respondent intended to deceive the U.S. Patent and Trademark Office (USPTO).
Id. at 11-14.
B. Petitioner’s Arguments and Evidence
In response, Petitioner argues that “Respondent made only de minimis token use
of the Registered Mark prior to filing its Statement of Use on March 5, 2020 –
presumably to improperly create a specimen of use to submit in connection
therewith.” 9 TTABVUE 11. Petitioner alleges that Respondent’s evidence includes a
“staged purchase of a product with a neck hanger,” id. at 9, and that “[n]othing in the
record of the instant matter refutes this allegation of token use.” Id. at 11. Thus,
Petitioner argues that “Respondent has been unable to substantiate bona fide use of
the Registered Mark in commerce prior to the filing of its Statement of Use.” Id. at
11.

13 Id. at ¶ 19, 5 TTABVUE 38-39 (Exhibit G).
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Petitioner ’s evidence consists of side-by-side photos of Respondent’s Exhibit F
(purchaser holding bottle of Respondent’s vodka displaying the mark on a hangtag)
and the specimen of use in the application file, 9 TTABVUE 27 (Exhibit A), and
photographs comparing unopened bottles of alcohol with a photo of Respondent’s
Exhibit H (a bottle of Respondent’s vodka displaying the mark from “later in March
2020”). Id. at 28.
In reply, Respondent argues that its sworn declaration testimony and supporting
documentary evidence are sufficient to demonstrate that it made bona fide use of the
mark in commerce and that Petitioner has not offered any evidence that raises a
genuine dispute of material fact regarding Respondent’s use. 10 TTABVUE 3-6.
II. Summary Judgment Standard
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 must be viewed in the light most favorable to the
non-moving party and all justifiable inferences to be drawn from the undisputed facts
must be drawn in favor of 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.
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The party moving for summary judgment has the burden of demonstrating that a
particular fact cannot be disputed by citing to particular parts of materials in 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). This burden may be met by showing “that there is an absence of evidence to
support the nonmoving party’s case.” Id. at 323-24. If the moving party carries its
burden, the nonmoving party may not rest on mere allegations, but must designate
specific portions of the record or produce additional evidence showing the existence
of a genuine dispute of material fact for trial. See Venture Out Props. LLC v. Wynn
Resort Holdings LLC, 81 USPQ2d 1887, 1890 (TTAB 2007); see also Fed. R. Civ. P.
56(c)(1).
III. Discussion
Initially, we note that Petitioner, in the Petition for Cancellation, admits that
Respondent made a single use of the subject mark prior to filing the statement of
use.14 Kellogg Co. v. Pack’Em Enters. Inc., 14 USPQ2d 1545, 1548 n.6 (TTAB 1990)
(pleadings have evidentiary value only to the extent they contain opponent’s
admissions against interest), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).
Petitioner alleges, however, that because “Respondent made no other use of the

14 Petition for Cancellation ¶ 5A, 1 TTABVUE 5.
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Registered Mark … prior or subsequent to filing its Statement of Use,”15 Respondent
only made “de minimis token use” of the mark.16
A. “Use in Commerce” – Relevant Law
Under Trademark Act Section 45, 15 U.S.C. 1127, “use in commerce” is defined as
“the bona fide use of a mark in the ordinary course of trade, and not made merely to
reserve a right in a mark.” The foregoing language was added in 1988 as a result of
the Trademark Law Revision Act (“TRLA”), Public Law 100-667, 102 Stat. 3935, to
eliminate “token use,” which occurs “when an applicant uses a mark in conjunction
with selling goods or offering services for the sole purpose of obtaining a registration
and with no intention of legitimately using the mark in commerce until a later date.”
Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1306 (Fed. Cir.
2009). The “bona fide use” language requires “commercial use of the type common to
the particular industry in question.” Paramount Pictures Corp. v. White, 31 USPQ2d
1768, 1774 (TTAB 1994).
Use of a mark in commerce may be established by the testimony of a witness with
knowledge of the facts, where the testimony is clear and convincing, and has not been
contradicted. Nat’l Blank Book Co. v. Leather Crafted Prods., Inc., 218 USPQ 827,
828 (TTAB 1983); see also Liqwacon Corp. v. Browning-Ferris Indus., Inc., 203 USPQ
305, 316 (TTAB 1979) (testimony may establish prior and continuous use if it is clear,
convincing, consistent, and sufficiently circumstantial). Such oral testimony may be

15 Id. at ¶ 5D, 1 TTABVUE 6.
16 Id. at ¶ 5E, 1 TTABVUE 6.
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strengthened by corroborative documentary evidence. Automedx, Inc. v. Artivent
Corp., 95 USPQ2d 1976, 1983 (TTAB 2010) (citing R.R. Baker Co. v. Lebow Bros., 150
F.2d 580, 66 USPQ 232, 236 (CCPA 1945)); see, e.g., Kohler Co. v. Baldwin Hardware
Corp., 82 USPQ2d 1100, 1108 (TTAB 2007) (Oral testimony found sufficient because
it was not characterized “by contradictions, inconsistencies and indefiniteness” and
was “buttressed by the documentary evidence”).
B. Whether Respondent’s Use Was in the Ordinary Course of Trade
In this case, we find that Respondent has carried its burden of demonstrating that
there is no genuine dispute that its use of the mark in commerce on or before the
deadline for filing the statement of use, as extended, was bona fide use in the ordinary
course of trade. Mr. Barfield’s testimony regarding Respondent’s initial display and
sale of Respondent’s goods bearing the mark at a retail liquor store is clear,
convincing and buttressed by the dated sales receipt and photographic evidence that
is explained in the declaration. See Kohler Co., 82 USPQ2d at 1100. Respondent does
not contend that such use of the mark on bottle neck hangers at retail liquor stores
is uncommon to the alcoholic beverage industry. See Paramount Pictures, 31 USPQ2d
at 1774. Mr. Barfield’s statements and the supporting evidence showing that
Respondent ordered neck hangers bearing the mark and that Respondent sold at
least one properly labeled bottle by March 5, 2020, and thereafter ordered labels and
shipped bottles bearing the mark to “over 125 retail liquor stores,”17 at a minimum,
establishes Respondent’s first use of the mark and its intent to continue to

17 Barfield Decl. at ¶¶ 20-22, 5 TTABVUE 21-22.
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legitimately use the mark in commerce. Thus, Respondent’s initial use was not solely
for the purpose of obtaining a registration.
Petitioner has failed to submit any evidence that rebuts Respondent’s declaration
and evidence supporting its initial and continued use of the mark or that would raise
a genuine dispute regarding Respondent’s intent to legitimately continue to use the
mark after the first use. Because, as shown in the specimen of use in the application
file, 9 TTABVUE 27 (Exhibit A), Respondent’s neck hangers may be used on different
products, the fact that Respondent’s specimen is different than the evidence
submitted with its motion does not permit, much less require, us to draw a negative
inference that either the specimen or the transaction reflected in the evidence
submitted with the motion was “staged.”18 In addition, the photograph of the bottle
bearing a label with the mark in Respondent’s Exhibit H has probative value to the
extent it supports Respondent’s statements that Respondent ordered and received
labels bearing the mark for use on bottles of vodka to be sold or transported in
commerce. Petitioner has not provided any reason why the label must be shown on
an unopened bottle to have probative value as an example of how the label was used
on the goods after the first sale.

18 The specimen of use in the application file shows the mark as used on or in connection with
the goods in commerce such as on a label or tag. Trademark Rule 2.56(b), 37 C.F.R. § 2.56(b).
There is no requirement that the specimen show use on all of the goods in the identification.
See TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) §§ 904.01(a) and 904.03 (Oct.
2018). We note further that the alleged insufficiency of the specimen may not be used as a
basis for cancellation. See Century 21 Real Estate Corp. v. Century Life of Am., 10 USPQ2d
2034, 2035 (TTAB 1989); Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355, 1358
(TTAB 1989).
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Petitioner’s response attacking Respondent’s evidence is comprised primarily of
attorney argument, which is “‘no substitute for evidence,’” Cai v. Diamond Hong, Inc.,
901 F.3d 1367, 127 USPQ2d 1797, 1371 (Fed. Cir. 2018) (quoting Enzo Biochem, Inc.
v. Gen-Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)), asking us
to infer Respondent’s spoliation of evidence. Performance Open Wheel Racing, Inc. v.
U. S. Auto Club Inc., 2019 USPQ2d 208901, at *8 n.62 (TTAB 2019) (attorney
argument unsupported by any testimony or evidence does not have any probative
value). In addition, Petitioner erroneously relies on its allegations as “fully set forth
in the BCD petition.” 9 TTABVUE 7, 8, 9, 10. As the non-moving party, Petitioner
“may not rest on the mere allegations of its pleadings and assertions of counsel, but
must designate specific portions of the record or produce additional evidence showing
the existence of a genuine issue of material fact for trial.” Venture Out Props., 81
USPQ2d at 1890; see also Fed. R. Civ. P. 56(e).19
Despite the completion of discovery in this proceeding, Petitioner has failed to
come forth with evidence contradicting Respondent’s declaration and documentary
evidence, such as discovery depositions or responses to discovery requests seeking
specific information regarding Respondent’s use of the mark in commerce.20 See Fed.
R. Civ. P. 56(c)(1); see also See Celotex Corp., 477 U.S. at 322-23 (summary judgment
should be entered against a party who fails to make a showing after adequate time
for discovery). In view of the foregoing we find that there is no genuine dispute of

19 We note that under Trademark Rule 2.122(c), 37 C.F.R. § 2.122(c), the exhibits attached to
the Petition for Cancellation are not evidence on behalf of Petitioner.
20 Discovery closed on January 25, 2021. 2 TTABVUE 3.
Cancellation No. 92074273

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material fact that Respondent’s use of its mark prior to the deadline for filing the
statement of use was use in the ordinary course of trade and not made merely to
reserve a right in the mark. See Christian Faith Fellowship Church v. Adidas AG,
541 F.3d 986, 120 USPQ2d 1640, 1646 (Fed. Cir. 2016) (finding the sale of two hats
not de minimis and sufficient to prove use in commerce); cf. Larry Harmon Pictures
Corp. v. Williams Rest. Corp., 929 F.2d 662, 18 USPQ2d 1292, 12965 (Fed. Cir. 1991)
(rejecting a minimum threshold level of activity for use in commerce for single
location restaurant).
C. Whether Respondent Committed Fraud in the Statement of Use
With respect to Petitioner’s fraud claim, because the claim is also based on
allegations that Respondent’s initial use of the mark was not bona fide use in the
ordinary course of trade, and we have found that there is no genuine dispute of
material fact regarding the issue of Respondent’s use of the mark in commerce, no
genuine dispute of material fact remains for trial regarding an essential element of
the fraud claim and Petitioner cannot prevail on the claim as a matter of law.
Specifically, there is no genuine dispute that Respondent did not make a false
statement in the statement of use regarding its use of the mark in commerce. See In
re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009).
Further, even if we found that Respondent’s initial use of the mark does not meet
the standard of use in the ordinary course of trade, Respondent’s declaration and
supporting evidence establishes that Respondent honestly believed that its use of the
mark prior to the deadline for filing the statement of use was bona fide use in
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commerce. Petitioner has failed to introduce any evidence that would raise a genuine
dispute of material fact regarding Respondent’s deceptive intent to deceive the
USPTO. Bose, 91 USPQ2d at 1942 (“There is no fraud if a false misrepresentation is
occasioned by an honest misunderstanding or inadvertence without a willful intent
to deceive.”).
IV. Decision
In view of the foregoing, and viewing all of the evidence in the light most favorable
to Petitioner as the non-moving party, we find that no genuine disputes of material
fact remain for trial with respect to Petitioner’s nonuse and fraud claims, which are
the only pleaded grounds for cancellation. Accordingly, Respondent’s motion for
summary judgement is granted and the Petition for Cancellation is denied.