CrosSport Mocean, Inc.v.Donn L. Pierson and Kimberley L. Pierson

Trademark Trial and Appeal Board

Feb 11, 2008

No. 92044780 (T.T.A.B. Feb. 11, 2008)

Mailed: February 11, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

CrosSport Mocean, Inc.
v.
Donn L. Pierson and Kimberley L. Pierson
_______

Cancellation No. 92044780
_______

Christa D. Perez of Friedman, Peterson, Stroffe & Gerard for
CrosSport Mocean, Inc.

Donn L. Pierson and Kimberley L. Pierson, pro se.
_______

Before Hairston, Walters and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

CrosSport Mocean, Inc. (“petitioner”) filed a petition
to cancel the registration of Donn L. Pierson and Kimberley
L. Pierson (“respondents”) for the mark MOCEAN [in standard
character format] for “men's, women's clothing, namely,
technically and functionally designed active sportswear
specifically created to facilitate the sports of sailing,
paddling, climbing, mountain biking, snowboarding, alpine
and nordic skiing, camping and hiking, consisting of

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Cancellation No. 92044780
2
jackets, coats, shirts, pants and shorts,” in International
Class 46.1
As grounds for cancellation, petitioner has asserted
that respondents have abandoned their mark and that the
registration was obtained fraudulently.
Respondents, in their answer, denied petitioner’s
allegations.2
The evidence of record includes the pleadings; the file
of the subject registration; the testimony declaration of
petitioner’s president and CEO, Bill Levitt, and exhibits
thereto; the testimony depositions of respondents Donn and
Kimberley Pierson, and exhibits thereto;3 the testimony
declarations of respondents Donn and Kimberley Pierson, and
exhibits thereto; and the rebuttal testimony declaration of
Bill Levitt, and exhibits thereto.4

1 Registration No. 2009440, issued October 22, 1996, and renewed
in 2007 for a period of ten years. The registration states a
date of first use anywhere and in commerce of February 23, 1990.
2 Respondents also asserted nineteen affirmative defenses in
their answer. However, respondents did not pursue these defenses
at trial and, because respondents did not file a trial brief,
they were not argued. Accordingly, we consider them to have been
waived and they are not given consideration in our decision.
3 The deposition transcript copies filed with the Board were not
certified by the court reporter nor do they have the deponents’
(respondents’) signatures. However, respondents were served with
copies of the deposition transcripts and allowed time to make
corrections or changes to their responses. In the absence of any
such corrections/ changes, or any objections by respondents to
the copies of the deposition transcripts filed by petitioner, we
accept the copies as filed on March 23, 2007.
4 The parties’ stipulation (filed on March 7, 2007) to allow
testimony in the form of sworn declaration is noted and approved.
TBMP § 705 (2d ed. rev. 2004).
Cancellation No. 92044780
3
Only petitioner filed a trial brief in this case.
By way of background, we note the following facts which
are not in dispute. Beginning around 1990, respondents
started designing and selling clothing under the mark MOCEAN
and formed a California general partnership named CrosSport
Mocean. Effective January 1, 1994, the partnership
CrosSport Mocean sold all assets and liabilities to
petitioner (a newly incorporated California Corporation).
Thus respondents essentially changed their business entity
type status from a general partnership to a corporation and,
as sole shareholders, respondents initially served as
President (Donn Pierson) and Treasurer (Kimberley Pierson)
of petitioner corporation.
On March 1, 1998, petitioner entered into a “Management
Services Agreement,” with W. James Hindman & Management,
Inc. (WJHM). Pursuant to the agreement, WJHM was to provide
management services for petitioner, but it also acquired a
controlling interest (by way of common stock and a voting
trust agreement) in petitioner.
Approximately one month after WJHM assumed operations
control of petitioner, respondent Donn Pierson was replaced
as President (and Chief Executive Officer) and ceased being
employed by petitioner. In November 1998, Bill Levitt
became petitioner’s President and CEO, and currently serves
in these capacities.
Cancellation No. 92044780
4
Kimberley Pierson remained an employee of petitioner
until 2001.
Initially, insofar as standing is concerned, the record
clearly establishes that petitioner is not an intermeddler
and has standing to bring this cancellation proceeding.
Petitioner alleges in the complaint that it has
“continuously used the mark with the full knowledge of
[respondents].” Petitioner’s president Bill Levitt
clarifies in his testimony declaration by averring that
petitioner’s purchase of “all assets and liabilities” of the
respondents’ partnership “included the MOCEAN trademark at
issue in this case, which [petitioner] considered and still
considers to be an important asset to the operation and
success of [petitioner].” B. Levitt declaration, p. 2.
Accordingly, petitioner has a legitimate personal interest
in the cancellation, and a reasonable basis for its belief
of damage. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023 (Fed. Cir. 1999).
We turn first to petitioner’s abandonment ground for
cancellation.
The Trademark Act provides for the cancellation of a
registration if the registered mark has been abandoned. See
Section 14 of the Trademark Act, 15 U.S.C. §1064. Under
Section 45 of the Trademark Act, 15 U.S.C. §1127, a mark is
considered abandoned when “its use has been discontinued
Cancellation No. 92044780
5
with intent not to resume such use.” The definition of
abandonment is found in this provision, as follows:
A mark shall be deemed to be "abandoned" if either of
the following occurs:
(1) 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.
…
See 15 U.S.C. §1127.
Because registrations are presumed valid under the law,
the party seeking to cancel a registration on the ground of
abandonment bears the burden of proof to establish the case
by a preponderance of the evidence. See On-Line Careline
Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471
(Fed. Cir. 2000); and Cerveceria Centroamericana S.A. v.
Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed.
Cir. 1989). If petitioner makes a prima facie case of
abandonment, the burden of production, i.e., going forward,
then shifts to the registration holder to rebut the prima
facie showing with evidence. Cerveceria v. Cerveceria,
supra.
Abandonment is a question of fact. See Stock Pot
Restaurant, Inc. v. Stockpot, Inc., 737 F.2d 1576, 1579, 222
USPQ 665, 667 (Fed.Cir.1984). Thus, any inference of
abandonment must be based in proven fact. A party claiming
Cancellation No. 92044780
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that a mark has been abandoned must show “non-use of the
mark by the legal owner and no intent by that person or
entity to resume use in the reasonably foreseeable future.”
See Stetson v. Howard D. Wolf & Associates, 955 F.2d 847,
850 (2d Cir 1992). Non-use for three consecutive years
alone, however, constitutes prima facie evidence of
abandonment. See supra, 15 U.S.C. §1127. See also Emergency
One, Inc. v. American FireEagle, Ltd., 228 F.3d 531, 56
USPQ2d 1343 (4th Cir. 2000).
Based on the record before us, we find that respondents
have not used their registered mark MOCEAN since 1994 and,
accordingly, a prima facie case of abandonment of the
trademark has been established. More specifically, after
the 1994 sale of the business from respondents’ partnership
to petitioner, respondents ceased using the MOCEAN mark in
commerce. Instead, from that date forward petitioner
carried on the business of selling apparel under the mark
MOCEAN.
Respondents have not rebutted the prima facie showing
of abandonment with credible and persuasive evidence. While
we do not have a trial brief from respondents, we are able
to discern from their testimony that their main contention
is that they have always owned the MOCEAN trademark and that
said mark was actually being licensed to petitioner since
Cancellation No. 92044780
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1994.5 As discussed further below, we do not find that a
licensing agreement existed between respondents and
petitioner.
Again, respondents contend that a licensing arrangement
between themselves and petitioner has been in place since
1994. At trial, respondents produced a letter that
purportedly was executed in February 1994 and sets forth an
agreement whereby respondents, as individuals, agree to
license the MOCEAN trademark to petitioner. Exhibit 7 of D.
Pierson deposition. The signatures on the document are
those of respondents, once in their capacity as individuals
and again in their capacity as officers of petitioner
corporation. By the terms of the document, respondents
agree to grant petitioner “an exclusive and non-transferable
world-wide license” to use the MOCEAN trademark on apparel
without any “fee, royalty or other monetary charge of
whatsoever kind.”
For several reasons, the aforementioned licensing
document lacks credibility. First, petitioner’s president,
Bill Levitt, who has been managing petitioner since 1998 has
stated unequivocally that he has “never heard of or seen

5 Respondents also rely on the sale of a small number of sports
shorts that were given to respondent K. Pierson by petitioner’s
president in 2004. Even if we were to find that said sale
constituted bona fide use of the mark in trade, it occurred long
after the three consecutive-year period (beginning in 1998)
resulting in a prima facie case of abandonment. In other words,
any use of the MOCEAN mark by respondents in 2004 does not negate
or somehow overcome their prior abandonment of the mark.
Cancellation No. 92044780
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this letter...before [respondents] submitted this document
in this proceeding.” He goes on to state that “[d]uring all
my years of actively participating in the management of the
company, and using and referencing our corporate files, I
never once saw this ‘Grant of License’ letter.” B. Levitt
rebuttal declaration, p. 2. Mr. Levitt also states that
respondents never mentioned or presented a copy of the
purported licensing agreement document during their
discussions regarding ownership of the trademark preceding
this action. B. Levitt rebuttal declaration, p. 2.
The existence of any licensing agreement is also
inconsistent with the substance of respondents’ November
2004 email letter to Bill Levitt. A copy of the email is
attached as Exhibit 8 to the deposition of D. Pierson. In
the email letter, respondents actually propose a licensing
agreement to Mr. Levitt, but do not mention an existing
agreement. Specifically, respondents suggest:
What we are proposing is that the company [petitioner]
pay Kimberley and I interest on the loan of our asset,
or pay a royalty based on a licensing agreement for the
use of our trademark ‘MOCEAN’. Pretty simple isn’t it?
A licensing agreement would be satisfactory to
Kimberley and I if; sales targets and product quality
standards were set, the specific market is included and
the royalty is paid monthly. We have reached a dollar/
royalty value of 3% of gross monthly sales and
agreement renewal increments would need to be agreed
upon.

Certainly, if a licensing agreement between respondents
and petitioner was already in existence since 1994, it would
Cancellation No. 92044780
9
have behooved respondents to reference the agreement in the
above-referenced email communication. Moreover, Mr. Levitt
has stated that “at no time during my discussions with the
Piersons regarding ownership of the trademark did either of
them ever mention or show me a copy of this letter addressed
to themselves, purportedly dated February 10, 1994.” Levitt
rebuttal declaration, p. 3. Finally, respondents have not
produced any documentary evidence or testimony from third
parties that corroborates the existence of the licensing
agreement.
Even if we were to find the licensing agreement to be
credible and that it was actually executed between
respondents and petitioner in 1994, there is insufficient
evidence for us to conclude that a licensing arrangement was
actually enforced or that respondents exercised sufficient
control over the use of the MOCEAN mark since that date.
The Board has long held that a certain amount of quality
control is necessary to preclude a holding of abandonment by
a licensor. See Woodstock's Enterprises Inc. (California)
v. Woodstock's Enterprises Inc.(Oregon), 43 USPQ2d 1440
(TTAB 1997), aff'd, No. 97-1580 (Fed. Cir. Mar. 5, 1998).
Respondents stated in their declarations that they have
been monitoring petitioner’s use of the MOCEAN mark pursuant
to the license agreement. These statements, however, are
not supported by any documentary evidence and are directly
Cancellation No. 92044780
10
contradicted by petitioner’s president. Specifically,
respondent D. Pierson has stated that “since 1998 and with
keys given to me by [petitioner], I have on an almost bi-
monthly basis” visited petitioner’s offices and inspected
the quality of the goods and have otherwise “maintained the
tradeamark MOCEAN by keeping my eye on how the [mark] is
being utilized.” Respondent D. Pierson declaration, pp. 15-
16. Petitioner’s president Bill Levitt has stated that he
spends “on average 6 days a week, all month long” at
petitioner’s offices and has seen respondent D. Pierson
“maybe 5 or 6 times in the last 5 years, and during none of
these visits did I ever see Mr. Pierson inspecting the
Mocean products.” B. Levitt rebuttal declaration, pp. 3-4.
Mr. Levitt further states that respondent D. Pierson has
“asked me more than once for a key to [petitioner’s offices]
and each time I declined to give him one. To my knowledge,
no one else at [petitioner] has given Mr. Pierson a key to
the front door, back door or any other entrance to the
building.”
In summary, we find that a prima facie case of
abandonment has been established inasmuch as respondents did
not use the trademark for three consecutive years following
1994. Thus, the burden of going forward and rebutting the
prima facie showing, with evidence, shifted to respondents.
Respondent has not met its burden. As explained, we have
Cancellation No. 92044780
11
found the purported license agreement lacking in
credibility. Moreover, even if were to lend credence to the
document, there is simply insufficient evidence to establish
that the licensing agreement was actually enforced.
Therefore, we conclude that respondent has abandoned the
mark in the subject registration.6
Decision: The petition to cancel on the ground of
abandonment is granted.

6 Because we find that respondents have abandoned their mark and
are granting the petition to cancel on this ground, we need not
reach a decision on the ground of fraud.