Columbia Insurance Companyv.Appalachian Trail Conservancy

Trademark Trial and Appeal Board

May 20, 2013

No. 92053729 (T.T.A.B. May. 20, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed:
May 20, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Columbia Insurance Company

v.

Appalachian Trail Conservancy
_____

Cancellation No. 92053729

_____

David Chen and Peter Bucci of IP Attorneys Group, LLC for Columbia Insurance
Company.

Steven T. Cooper of Ware, Fressola, Maguire & Barber LLP for Appalachian Trail
Conservancy.
______

Before Wolfson, Kuczma and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:

Appalachian Trail Conservancy (“respondent”) owns a registration for the
mark shown below

Cancellation No. 92053729

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for, inter alia, “Clothing, namely, shirts, t-shirts, bandanas” in International Class
25 (the “Registration”).1 Columbia Insurance Company (“petitioner”) seeks to cancel
the Registration for these goods, alleging that it “is in the business of
manufacturing and selling footwear” and that its application to register
APPALACHIAN TRAIL for footwear2 was refused under Section 2(d) of the Act
based on respondent’s involved Registration. Amended Petition ¶¶ 1, 3.
Grounds for Cancellation
The amended petition for cancellation identifies, under separate headings,
the following grounds for cancellation: (1) that respondent procured the Registration
“fraudulently;” (2) that respondent abandoned the involved mark; (3) “likelihood of
confusion;”3 and (4) that APPALACHIAN TRAIL “is descriptive or generic for trail
maps of the Appalachian Trail.”4 Id. ¶¶ 14-44. In its answer, respondent denies the
salient allegations in the amended petition for cancellation.
While the amended petition specifically asserts these four grounds for
cancellation, petitioner has pursued none of them. Rather, petitioner’s trial brief

1 Registration No. 3334698, issued November 13, 2007 from an application filed
March 10, 2006. In addition to the Class 25 goods, the Registration is for “printed matter,
namely, books and magazines in the fields of trails, conservation, and trail conservation” in
International Class 16. At the time the Registration issued, its identification of goods was
significantly longer, but respondent amended the Registration to delete many of the goods
in both Classes.
2 Application Serial No. 77955360, filed March 10, 2010, based on an alleged intent to
use the mark in commerce.
3 Petitioner does not allege that it has prior use.
4 Because the amended petition for cancellation only requests cancellation of the
Registration for the Class 25 goods, this claim, which is directed to only the Class 16 goods,
is untenable. Indeed, petitioner expressly states that “Class 16 is not at issue in this
proceeding.” Petitioner’s Trial Brief at 2.
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includes a “Statement of the Issue,” which, in its entirety, is: “Whether Registrant’s
Registration No. 3,334,698, with respect to Class 25, is void ab initio, because
Registrant failed to comply with the requirement of Section 1(a)(1) of the Lanham
Act, 15 U.S.C. § 1051(a)(1), for a specimen of the mark as used.” Petitioner’s Trial
Brief at 4.5 We construe this “Statement of the Issue” as effectively withdrawing
petitioner’s four pleaded claims and articulating a claim of nonuse. Marshall Field
& Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355, 1358-59 (TTAB 1989) (“The law is
settled that the insufficiency of the specimens, per se, does not constitute grounds
for cancelling a registration … the proper ground for cancellation of an existing
registration is that the term for which registrant obtained registration has not been
used as a trademark or service mark.”); Century 21 Real Estate Corp. v. Century
Life of America, 10 USPQ2d 2034 (TTAB 1989). Indeed, petitioner’s Trial Brief
addresses only the nonuse claim, and does not address any of petitioner’s other
claims, which have therefore been waived and will be given no further
consideration. Viacom International Inc. v. Komm, 46 USPQ2d 1233, 1235 n. 3
(TTAB 1998); Krause v. Krause Publications, Inc., 76 USPQ2d 1904, 1906 n. 2
(TTAB 2005).
Respondent argues that the sole remaining (putative) claim of nonuse was
neither pleaded, nor tried by implied consent. We disagree to the extent that we

5 Petitioner specifically states in its brief that “[i]t is not necessary to descend deeper
and work the Bose calculus of fraud.” Petitioner’s Trial Brief at 1. See, In re Bose Corp.,
580 F.3d 1240, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009).
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find that the amended petition for cancellation clearly sets forth a claim of nonuse.
In fact, petitioner specifically alleges as follows:
34. Upon information and belief, Registrant never used
the mark on all of the goods cited in the original
Registration or the Amended Registration.

35. Upon information and belief, Registrant never
intended to use the mark on all of the goods cited in the
original Registration or the Amended Registration.

36. Upon information and belief, Registrant has only
made ornamental use of the mark on t-shirts and
bandanas and has never made a legitimate trademark use
on any products in class 25.

37. Upon information and belief, Registrant has
abandoned said Registered mark by failure to use said
mark as a trademark for a period of at least 3 years.

Amended Petition ¶¶ 34-37. The allegation that respondent “has never made a
legitimate trademark use on any products in class 25” is sufficient to state, and put
respondent on notice of, a claim of nonuse, notwithstanding that the relevant
allegations appear under the heading that “Registrant has abandoned use of the
mark under Section 45 of the Trademark Act, 15 U.S.C. Sec. 1127.” In fact, as we
stated in ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 (TTAB 2012):
we acknowledge that the petition for cancellation did not
include a separate claim alleging that respondent’s
nonuse of the mark at the time of filing rendered the
application void ab initio. Nonetheless, paragraphs 11
and 13 of the petition for cancellation clearly put
respondent on notice that petitioner had alleged nonuse
by respondent, in particular, “on all recited goods at the
time of the application” (¶13). Such separate pleading of
a nonuse claim, while preferable, is not, however, critical,
and the Board has found applications to be void ab initio
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even when nonuse was not pleaded as a separate claim or
issue.

Id., at 1045.6 We must therefore determine whether petitioner has met its burden
of proving its sole remaining claim of nonuse.
The Record
The record consists of the pleadings, the file of the involved registration and
petitioner’s four notices of reliance each filed on August 6, 2012. Petitioner’s First
Notice of Reliance (“NOR I,” TTABVue Docket #18) consists of a printout from the
Office’s TARR database summarizing petitioner’s pleaded application, and copies of
the December 1, 2010 Office Action and May 19, 2011 suspension order issued in
connection with petitioner’s pleaded application. The asserted relevance of the
submitted materials is “to establish Petitioner’s standing.” NOR I at 1. Petitioner’s
Second, Third and Fourth Notices of Reliance (“NOR II,” “NOR III” and “NOR IV,”
TTABVue Docket #’s 19-21, respectively) each consist of printouts from the
“archive.org” website, specifically printouts from the Internet Archive’s “Wayback
Machine.” The asserted relevance of these materials is “to establish Petitioner’s
claim that Registrant was not using the [involved] mark … in commerce at the time
Registrant filed its application for such mark under Section 1(a) of the Lanham Act,
15 U.S.C. § 1051(a).”7 Petitioner took no testimony and did not submit any evidence

6 Petitioner also alleges, in connection with its fraud claim, that respondent “was not
using the [involved] mark in connection with all the goods identified in the application as
the Registrant does not brand footwear ….” Amended Petition ¶¶ 17, 19.
7 Petitioner’s NORs II-IV each also indicate that the submitted printouts are “relevant
to Petitioner’s claim that [the involved Registration] was obtained fraudulently,” but, as
indicated, petitioner effectively withdrew this and the other pleaded claims in its Trial
Brief.
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other than its four notices of reliance. Respondent took no testimony and submitted
no evidence whatsoever.
On August 29, 2012, respondent filed a motion for involuntary dismissal
under Trademark Rule 2.132(b), in which, inter alia, respondent objected to
petitioner’s NORs II-IV as inadmissible. In its August 31, 2012 order,
supplemented on September 6, 2012, the Board declined to consider respondent’s
motion for involuntary dismissal, and in doing so pointed out that “[d]ocuments
obtained from the Internet that include dates of publication or dates on which those
documents were accessed and printed, and the source of such documents are
admissible under notice of reliance” under Safer Inc. v. OMS Investments, Inc., 94
USPQ2d 1031 (TTAB 2010). August 31, 2012 Order at 2. Accordingly, respondent’s
objections to the admissibility of petitioner’s notices of reliance were overruled, but,
as pointed out in the August 31, 2012 order, “[t]he probative weight to be given
those documents” is a separate issue, which is addressed below.
Standing
The Office refused registration of petitioner’s mark APPALACHIAN TRAIL
based on a finding that use of petitioner’s mark would be likely to cause confusion
with the mark in respondent’s involved Registration. NOR I Ex. 1B. This
establishes petitioner’s standing to petition for cancellation of respondent’s involved
Registration. Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982) (“Thus, to have standing in this case, it would be
sufficient that [plaintiff] prove that it filed an application and that a rejection was
Cancellation No. 92053729

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made because of [defendant’s] registration); Tri-Star Marketing, LLC v. Nino
Franco Spumanti S.R.L., 84 USPQ2d 1912, 1914 (TTAB 2007) (“petitioner has
standing to bring the petition for cancellation based on the fact that its application
to register [its mark] was refused registration by the office under Section 2(d) based
on a likelihood of confusion with respondent’s previously registered mark”).
Nonuse
By way of background, in an August 28, 2006 Office Action, the examining
attorney refused registration of respondent’s involved mark because, inter alia, the
mark was found to be a “decorative or ornamental feature of the goods” in Class 25.
In order to overcome the refusal, respondent submitted a substitute specimen,
which it represented was “an internet advertisement for items such as hats, with
the mark prominently displayed,” which was found acceptable, and the Registration
issued. Office Action response of March 5, 2007.
On March 3, 2011, respondent filed a request to correct the Registration, to
delete most of the goods in both Class 16 and Class 25, including hats. The request
states that respondent “discovered that the existing identification of goods is
inaccurate. The mistake was recognized as a result of a recent review of the
registration. The requested correction is necessary because of registrant’s mistake
in listing goods in the application on or in connection with which the registrant had
not used the mark in commerce regulated by Congress as of the filing date of the
application.” Request for Correction of Registration at 3. Respondent specifically
claimed in the Request that the “mistake occurred in good faith through the fault of
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the registrant as registrant had a misunderstanding about the requirements
concerning use of the goods in commerce regulated by Congress ….” Id. at 3-4.
On April 20, 2011, after petitioner initiated this proceeding, respondent
supplemented its Request for Correction and “clarified for the record” that its
review of the Registration was in fact undertaken only after it received a December
22, 2010 letter from petitioner indicating that respondent’s Registration was
vulnerable to cancellation for nonuse. Petitioner’s letter requested that respondent:
(1) amend the Registration to delete footwear; and (2) execute a consent agreement
which would allow for registration of petitioner’s mark. Respondent’s
“Supplemental Communication” regarding its Request for Correction, April 20,
2011, Ex. A. The corrected Registration certificate issued on May 24, 2011.
Under Section 1(a) of the Act, a mark may not be registered unless it is “used
in commerce.” 15 U.S.C. § 1051(a)(1). “The term ‘use in commerce’ means the bona
fide use of a mark in the ordinary course of trade ….” 15 U.S.C. § 1127. The “use in
commerce” requirement is met “when a mark is (1) placed on the good or container,
or on documents associated with the goods if the nature of the goods makes
placement on the good or container impracticable, and (2) that good is then ‘sold or
transported in commerce.’” Aycock Engineering, Inc. v. Airflite, Inc., 560 F.3d 1350,
90 USPQ2d 1301, 1305 (Fed. Cir. 2009); Paramount Pictures Corp. v. White, 31
USPQ2d 1768, 1772 (TTAB 1994), aff’d, 108 F.3d 1392 (Fed. Cir. 1997).
Petitioner argues, based solely on printouts from the Wayback Machine, that
respondent was not using the involved mark in commerce in connection with any
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goods in Class 25 on the involved application’s filing date. Specifically, petitioner
relies on printouts from the Wayback Machine which purport to show how pages
from respondent’s “atctrailstore.org” website appeared on particular dates,
including, in NOR II Ex. 2A, respondent’s application filing date of March 10, 2006.
This printout purports to show that respondent’s website offered, under the heading
“The Ultimate Trail Store,” a variety of goods including books, t-shirts, posters and
trail maps. There is no indication, however, that the offered t-shirts bore any
trademarks, let alone respondent’s involved mark. Similarly, the remaining
Wayback Machine printouts purport to show the “atctrailstore.org” website as it
appeared on a variety of dates, both before and after March 10, 2006,8 and while
some printouts appear to show that respondent offered t-shirts and bandannas,
none of them show that respondent was offering any Class 25 goods under the
involved mark.
Petitioner’s evidence is insufficient, standing alone, to establish petitioner’s
nonuse claim. Without foreclosing the possibility that evidence from the Wayback
Machine could be relevant, or competent to prove certain facts, in another case with
a fuller record, petitioner’s evidence in this case does not credibly establish nonuse,
and it raises more questions than it answers.
Petitioner itself recognizes that under Safer, the Wayback Machine printouts
establish nothing more than what they show on their face. Petitioner’s Trial Brief
at 8; TBMP § 704.08(b) (3d ed. rev. 2012) (“The probative value of Internet

8 Much of petitioner’s Wayback Machine evidence predates respondent’s filing date by
several years, and is therefore of no apparent relevance.
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documents is limited. They can be used to demonstrate what the documents show
on their face; however, documents obtained through the Internet may not be used to
demonstrate the truth of what has been printed.”). But petitioner appears to
misunderstand what these documents show on their face. They do not, as petitioner
argues, “show the images and text that appear on www.atctrailstore.org on various
dates on and after the filing date of Registrant’s Application,” or at least they do not
show all such images and text. Rather, the documents at best show the results of a
Wayback Machine search, apparently conducted at petitioner’s direction, which may
show how the searched portion of respondent’s website appeared on respondent’s
filing date.9 Key questions remain, however. For example, were clothing products
bearing the involved mark available elsewhere on respondent’s website on
respondent’s filing date, on webpages not searched by petitioner or not revealed by
the Wayback Machine? Was respondent offering clothing products bearing the
involved mark on March 10, 2006 in another manner, such as in a traditional retail
store or through a traditional paper catalog? Did respondent license the involved
mark to any third parties which, on March 10, 2006, offered clothing products
thereunder pursuant to an agreement with respondent, on a website or retail outlet
other than “atctrailstore.org”? In sum, the list of open questions is long, and
arguably no shorter than it was prior to petitioner’s introduction of the Wayback
Machine evidence. Perhaps petitioner could have answered some of these questions

9 Petitioner asserts that “the content of these [Wayback Machine] Exhibits are
statements of a party-opponent,” and therefore not hearsay. Petitioner’s Trial Brief at 8.
Petitioner is incorrect, because if the printouts are “statements” at all, they are
“statements” made by the Wayback Machine, a nonparty.
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during discovery, or by submitting additional evidence, but its failure to do so has
left it unable to establish nonuse based on Wayback Machine evidence alone.10
Conclusion
Petitioner’s Wayback Machine evidence, standing alone, is insufficient to
establish that respondent’s involved mark was not in use as of the filing date of the
involved application. Accordingly, petitioner has not proven its sole remaining
claim of nonuse.
Decision: The petition for cancellation is dismissed.

10 Petitioner’s reliance on CPC International Inc. v. Skippy Inc., 3 USPQ2d 1456
(TTAB 1987) is misplaced, because in that case the Board relied on, and found credible,
discovery deposition testimony from a federal court proceeding between the parties, which
left “no doubt whatsoever that the marks were not in use on the indicated services as of the
filing dates of the applications.” Here, petitioner’s evidence leaves substantial doubt and
fails to establish nonuse. Similarly, in ShutEmDown Sports, the Board found that “[n]o one
has purchased goods from respondent in the last five years,” and that “respondent’s
allegation of use of his mark in commerce for the identified goods, at the time of filing of his
application was false.” 102 USPQ2d at 1041, 1045.