French Transit, Ltd.v.The Particular Man

Trademark Trial and Appeal Board

Apr 15, 2015

No. 92055254 (T.T.A.B. Apr. 15, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: April 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

French Transit, Ltd.

v.

The Particular Man
_____

Cancellation No. 92055254
_____

Gerald B. Rosenberg of NewTechLaw for French Transit, Ltd.

Jefferson F. Scher of Carr & Ferrell LLP for The Particular Man.
_____

Before Bucher, Cataldo and Bergsman,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

On February 29, 2012 Petitioner, French Transit, Ltd., petitioned to
cancel Registration No. 3417980 for the mark THE ROCK (standard
characters), owned by Respondent, The Particular Man. The registration
issued on the Principal Register on April 29, 2008.1 The goods are identified
therein as “deodorant for personal use,” in International Class 3. In
application Serial No. 77256515 underlying its involved registration,

1 Section 8 affidavit accepted.
Cancellation No. 92055254

2
Respondent asserted August 15, 2007 as a date of first use of the mark
anywhere and in commerce.
In its petition for cancellation, Petitioner alleges that since 1985, it has
made common-law use of various marks, including LE ROCK, in connection
with natural deodorant products, and also owns Registration No. 1726900,
issued on the Principal Register on October 27, 1992 for the mark SPORT
ROCK (ROCK disclaimed) for “body and underarm deodorant made of
mineral salts” in International Class 3. In application Serial No. 74177167
underlying its pleaded registration, Petitioner asserted May 10, 1991 as a
date of first use of the mark anywhere and in commerce.2 Petitioner further
alleges that as a result of the similarity between the parties’ marks as
applied to their respective goods, confusion is likely among consumers as to
the source of those goods. In addition, Petitioner alleges that Respondent, in
prosecuting its underlying application, knowingly made false statements of
material facts, upon which the Trademark Examining Attorney relied,
thereby committing fraud upon the United States Patent and Trademark
Office (USPTO).
In its answer, Respondent denied the salient allegations of the petition to
cancel.3 In addition, Respondent counterclaimed to cancel Petitioner’s

2 Section 8 affidavit accepted; Section 15 affidavit acknowledged. Second Renewal.

3 Respondent asserted certain affirmative defenses but did not pursue them by
motion or at trial. Accordingly, they are deemed waived. Respondent further
asserted as “affirmative defenses” matters that are more in the nature of
amplifications of its denials and have been so construed.
Cancellation No. 92055254

3
pleaded registration on the grounds of abandonment and fraud, the latter
resulting from Petitioner’s improper filing of a Section 8 affidavit in
connection with its pleaded registration after abandoning the mark therein.
In its answer to the counterclaim, Petitioner denied the salient allegations
thereof.
Evidentiary Issues
Petitioner’s request, filed concurrently with its main brief, for judicial
notice of eight exhibits submitted on CD-ROM was denied by interlocutory
order issued on October 8, 2014, because they are submitted in an improper
format. See Trademark Rule 2.126(a) and (b). We note in addition that,
contrary to Petitioner’s arguments, the exhibits submitted therewith are not
facts of which this tribunal takes judicial notice.4 See TBMP §704.12 (2014)
and authorities cited therein.
In addition, as exhibits to its combined reply brief as plaintiff and brief as
counterclaim defendant, Petitioner submitted for the first time photographs
of what appear to be undated displays and advertising materials showing the
mark SPORT ROCK in connection with its goods, and unauthenticated copies
of what appear to be spreadsheets purporting to show sales of goods under

4 Petitioner’s exhibits include official records of the USPTO, Internet materials,
printed materials, and business records. The Federal Circuit, in In re Chippendales
USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681 (Fed. Cir. 2010), exercised its discretion
to take judicial notice of a third party’s registrations. Although the court took
judicial notice of a third-party registration in that case, the Board does not take
judicial notice of either third-party registrations or a party’s own registration[s]
insofar as the Trademark Rules of Practice specify how to make such registrations of
record in an inter partes proceeding. See 37 CFR § 2.122(d) and 37 CFR § 2.122(e).

Cancellation No. 92055254

4
Petitioner’s SPORT ROCK mark by third parties from January 2003 to June
2014. Petitioner argues that it did not previously make these materials of
record because
Respondent did not conduct any discovery from Petitioner
relative to any facts related to the ongoing sales of SPORT
ROCK branded products. In fact, Respondent chose to take no
testimony and to not request any documents from Petitioner.
If Respondent had simply asked, Petitioner would have
produced full-color, heavy stock “Cadillac” pages used by
Petitioner in soliciting resale orders at trade shows and
distributed in person and by mail to various retail and other
establishments to solicit and retain resale customers. The
Cadillac pages not only advertise Petitioner’s SPORT ROCK
branded products, but they also show the retail/public-facing
displays provided by Petitioner for use by the resale customers.
See, Exhibit 1, Petitioner’s documents #000734 – #000737.
Upon request, Petitioner was also prepared to produce
reports of the continuous monthly sales of SPORT ROCK
branded products. See, Exhibit 2, Petitioner’s documents
#000730 – #000734.5

Respondent objected to these attachments in its reply brief on the ground,
inter alia, that they are untimely, and only discussed them in the alternative.
Petitioner did not introduce the exhibits attached to its brief, or any other
testimony or evidence, during its assigned testimony period. Petitioner
attempts to justify its untimely submission of evidentiary materials with its
reply brief on the ground that Respondent never requested them during
discovery. However, Petitioner cites to no authority for its apparent position
that its adversary’s decision not to pursue discovery on the issue of

5 22 TTABVUE 9. Citations to the briefs and record refer to TTABVUE, the Board’s
publicly-accessible online proceeding file, by prosecution history entry and page
numbers.

Cancellation No. 92055254

5
abandonment entitles it to forego introducing testimony or evidence during
its testimony period and submit evidence at the briefing stage of this
proceeding. To the contrary, it is settled that evidence not filed in compliance
with the rules of practice governing opposition or cancellation proceedings
before the Board will not be considered. See Swiss Watch International Inc. v.
Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1734-35 (TTAB
2012) (declaration and exhibits submitted with brief not an acceptable way to
make evidence of record and materials are not treated as stipulated in view of
objection); Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844,
1846 n.8 (TTAB 2004) (materials submitted outside of applicant’s assigned
testimony period and which failed to comply with the Board’s evidentiary
rules given no consideration); The Maytag Co. v. Luskin's, Inc., 228 USPQ
747, 748 (TTAB 1986) (collection of twenty-nine registrations listed in
appendix to brief not considered because not in compliance with rules of
practice). Because the evidence attached to Petitioner’s reply brief was not
timely filed, we have not given it any consideration.
The Record
In consequence of the foregoing, the record in this case includes the
pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. §2.122(b),
the files of Respondent’s involved Registration No. 3417980 and Petitioner’s
Registration No. 1726900, subject of Respondent’s counterclaim.
Cancellation No. 92055254

6
As noted above, Petitioner did not submit any testimony or evidence
during its assigned testimony period.6 Respondent, during its testimony
period as defendant in the cancellation and counterclaim plaintiff, submitted
the following by notice of reliance:
archived copies of pages from Petitioner’s Internet website from 1996 –
2013;
copies of pages from the Internet websites of Petitioner, the fda.gov and
comseticsinfo.org;
copies of still images from Petitioner’s YouTube video uploads under the
username “Crystal Deo;”
copies of pages from the commercial Internet website Amazon.com
displaying Respondent’s products available for sale;
the file wrappers from both parties’ involved registrations; and
a copy of Petitioner’s Patent No. 5,902,062.
During its rebuttal testimony period as plaintiff in the cancellation and
counterclaim defendant, Petitioner submitted by notice of reliance copies of

6 In its brief, Respondent notes that while it did not file a motion to dismiss under
Trademark Rule 2.132(a), “based on the guidance in the TBMP, Hester Industries,
[v. Tyson Foods Inc., 2 USPQ2d 1645 (TTAB 1987)] and the prejudice to Respondent
of allowing Petitioner to proceed on its Petition for Cancellation of Respondent’s
registration, the Board should dismiss the Petition.” 21 TTABVUE 7-8. However,
inasmuch as Petitioner’s pleaded registration is part of the record by operation of
Trademark Rule 2.122(b), a motion under Rule 2.132(a) is inapplicable.
Cancellation No. 92055254

7
invoices for products (Crystal Deod Wide Blue 3.5 oz) it sold to Respondent
from July 2007 to June 2010.7
The parties’ claims and counterclaims are fully briefed.
Respondent’s Counterclaims
We first address Respondent’s counterclaims to cancel Petitioner’s pleaded
registration.
Respondent’s Standing
Respondent’s standing arises from Petitioner’s assertion of its pleaded
registration against Respondent in its petition to cancel. See Ohio State
University v. Ohio University, 51 USPQ2d 1289, 1293 (TTAB 1999)
(“[A]pplicant’s standing to assert the counterclaim arises from applicant’s
position as a defendant in the opposition and cancellation initiated by
opposer”). See also Finanz St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d
1478, 1479 (TTAB 2007).
Abandonment
A claim for cancellation of a registration may be filed at any time if the
registered mark has been abandoned. Trademark Act § 14(3); 15 U.S.C.
§ 1064(3). A mark is deemed to be “abandoned,” if the following occurs:
When its use has been discontinued with intent not to resume
such use. Intent not to resume use may be inferred from
circumstances. Nonuse for 3 consecutive years shall be prima

7 Invoices generally are not admissible through notice of reliance. See, e.g., Wet Seal,
Inc. v. FD Management, Inc., 82 USPQ2d 1629, 1632 (TTAB 2007). See also TMBP
§704.07 and authorities cited therein. In this case, Respondent did not object to
Petitioner’s submission of these records and discussed them in its brief. Accordingly,
we will exercise our discretion to consider them in our determination herein.
Cancellation No. 92055254

8
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.

Trademark Act § 45; 15 U.S.C. § 1127. There are two elements to an
abandonment claim that a plaintiff must prove: nonuse of the mark and
intent not to resume use. Because registrations are presumed valid under
Trademark Act § 7; 15 U.S.C. § 1057, the party seeking cancellation based on
abandonment bears the burden of proving a prima facie case. Quality Candy
Shoppes/Buddy Squirrel of Wisconsin Inc. v. Grande Foods, 90 USPQ2d
1389, 1393 (TTAB 2007), citing On-Line Careline Inc. v. America Online Inc.,
229 F.3d 1080, 56 USPQ2d 1471, 1476 (Fed. Cir. 2000). If plaintiff can show
three consecutive years of nonuse, it has established a prima facie showing of
abandonment.
In its recent decision in Crash Dummy Movie LLC v. Mattel Inc., 601 F.3d
1387, 94 USPQ2d 1315 (Fed. Cir. 2010), our primary reviewing court
summarized the abandonment standard as follows:
A showing of a prima facie case creates a rebuttable
presumption that the trademark owner has abandoned the mark
without intent to resume use. The burden then shifts to the
trademark owner to produce evidence that he either used the
mark during the statutory period or intended to resume use. The
burden of persuasion, however, always remains with the
[challenger] to prove abandonment by a preponderance of the
evidence.

Id. at 1316 (citations and internal quotation marks omitted). See also On-line
Careline, 56 USPQ2d at 1476; and Cerveceria Centroamericana S.A. v.
Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1310 (Fed. Cir. 1989).
Cancellation No. 92055254

9
In this case, Respondent has introduced into evidence copies of pages from
Petitioner’s Internet website from December 19, 1996 to August 5, 2013
captured by The Internet Archive (aka “The Wayback Machine”).8 The
website pages retrieved from January 16, 1998 to September 13, 2006 display
the term SPORT ROCK in connection with Petitioner’s deodorant products,
along with LE CRYSTAL NATUREL in connection with deodorant and
RECAPTURE in connection with shampoo and scalp treatment. However,
none of the webpages retrieved after September 13, 2006 display SPORT
ROCK as a mark or otherwise utilize the term in association with any of
Petitioner’s products. That is to say, the website pages made of record by
Respondent from October 30, 2006 to August 5, 2013 display various
permutations of CRYSTAL in connection with deodorant and RECAPTURE
in connection with scalp treatment. The webpages from May 20, 2013 and
August 5, 2013 displays the term “ROCK” used in connection with deodorant,
indicating that it is a new product that will soon be available. However, none
of the pages from Petitioner’s website made of record by Respondent, dated
later than September 13, 2006, display the term SPORT ROCK in connection
with the goods recited in Petitioner’s pleaded registration.
The foregoing establishes Respondent’s prima facie case of abandonment
based on nonuse of the mark for the identified goods for the more than three
year period between October 2006 and August 2013. Accordingly, the burden
of going forward and rebutting Respondent’s prima facie showing shifts to

8 16 TTABVUE 13-56, 126-167.
Cancellation No. 92055254

10
Petitioner. Based on the record before us, Petitioner did not meet its burden.
As discussed above, Petitioner introduced no testimony or evidence during its
testimony period. The evidence submitted by Petitioner during its rebuttal
testimony period consists only of invoices for a product identified as “Crystal
Deod Wide Blue 3.5 oz” sold to Respondent from July 2007 to June 2010.
However, none of the invoices show sales of products by Petitioner under the
SPORT ROCK mark. Because the materials submitted by Petitioner with its
reply brief were not offered into evidence in compliance with the Trademark
Rules of Practice, they cannot be considered as evidence supporting
Petitioner’s case. See Trademark Rule 2.123(1), 37 CFR § 2.123(1) (evidence
not obtained and filed in compliance with these sections will not be
considered).9
Petitioner argues in its brief that Respondent’s evidence is insufficient to
establish abandonment:
Since the Internet Archive typically does not capture all pages of
a Web site that is archived, absence of product pages for any
particular product is not evidence that the product did not
continue to be available via the Web site or through other
channels. See, http://en.wikipedia.org/wiki/Wayback_Machine#
Limitations_of_utility.10

Petitioner further argues in its reply brief:

9 Even if these materials had been properly introduced by either party, they would
have limited probative value. We note, for instance, that the putative “reports” of
sales of Petitioner’s goods under the SPORT ROCK mark improperly submitted with
Petitioner’s reply brief indicate sales by third parties, in some cases to Petitioner,
rather than continuing sales by Petitioner.

10 18 TTABVUE 13. We observe that Petitioner did not introduce into the record a
copy of this article.
Cancellation No. 92055254

11
As established in Petitioner’s MAIN BRIEF FOR PETITIONER
FRENCH TRANSIT LTD, the Internet Archive is an
established, independent organization that operates a Web site
archive. The archive is constructed by contemporaneous site
capture and archiving operations on dates and sites that it
selects. Typically, a subset of the Web pages of a selected site
are [sic] captured on a given date. The Web pages that are
captured are copies of the Web pages then publically accessible.
These captured Web pages are then available through the
Internet Archive Web site.
The well-known evidentiary problem with the Internet Archive
is that it typically does not capture all pages of a Web site on
any given date. What is captured and archived is broadly
accepted as reliable. What is not captured by the ordinary
operation of the Internet Archive is, however, unknown. Thus,
the absence of a Web page in the Internet Archive is
fundamentally not reliable evidence such a page did not exist.
See, http://en.wikipedia.org/wiki/Wayback_Machine#
Limitations_of_utility.
Another inherent evidentiary problem with the Internet Archive
is that it is limited by definition to the collection of Web pages.
Product Web sites are but one channel of distribution. As is
typical of personal care products, other reasonable channels of
distribution, to name just an obvious few, include conventional
retail stores, beauty salons, health and other specialty stores,
and trade shows. None of these channels of distribution would
necessarily be obliged to advertise Petitioner’s products in a
manner capturable by the Internet Archive. Even if such Web-
based advertisements were made and captured, the Internet
Archive is not readily searchable by product names.
Consequently, Respondent’s alleged failure to find product pages
for goods bearing the mark SPORT ROCK within the limited
confines of the Internet Archive is simply not reliable evidence
that the mark was abandoned for any period of time.11

Essentially Petitioner argues, without evidentiary support, that
Respondent relied upon an unreliable means of gathering evidence of
Petitioner’s abandonment of its SPORT ROCK mark. However, Petitioner’s
mere arguments fail to establish the insufficiency of Respondent’s evidence.

22 TTABVUE 8-9.
Cancellation No. 92055254

12
More importantly, Petitioner failed to submit any evidence of its continuing
use of the SPORT ROCK mark after September 13, 2006 that would rebut
Respondent’s prima facie showing of abandonment. Petitioner simply argued
that technical limitations of The Internet Archive resulted in Respondent
obtaining incomplete evidence of its use of the SPORT ROCK mark; however,
Petitioner failed to submit any pages from its Internet website that were
absent from Respondent’s evidence. Petitioner suggests that such evidence
exists but did not make any of record, relying instead upon unsupported
arguments as well as untimely and otherwise improper submissions of
putative evidence. Petitioner further argues that it would have provided
documents showing its continuous use of the SPORT ROCK mark to
Respondent had the latter requested it during discovery. However,
Respondent was under no obligation to seek such documents during discovery
and we draw no negative inferences from Respondent’s decision not to do so.
In short, Petitioner has not provided any evidence to corroborate its
asserted use of the SPORT ROCK mark in commerce after September 13,
2006. Its uncorroborated arguments that it continues to use the mark are
insufficient to rebut the presumption of abandonment resulting from the lack
of any evidence thereof. While it is Respondent’s burden to prove nonuse of
the mark as counterclaim plaintiff, Petitioner’s failure to produce any
evidence corroborating its arguments to attempting to rebut Respondent’s
prima facie showing leads us to conclude that Petitioner has not used its
Cancellation No. 92055254

13
mark in commerce on the goods identified in its pleaded registration for the
more than three-year period from October 2006 through August 2013 and
had no intention to do so. Therefore, we find that Petitioner has abandoned
its rights to the SPORT ROCK mark with respect to the goods recited
therein.
Fraud
Because of our finding that Petitioner has abandoned the SPORT ROCK
mark in its pleaded registration, we need not consider Respondent’s
counterclaim based on fraud. We observe in addition that Respondent did not
present any arguments in its briefs regarding its fraud counterclaim.
We turn now to Petitioner’s claims to cancel Respondent’s involved
registration.
Petitioner’s Standing
A plaintiff must have a ‘real interest’ in the outcome of a proceeding in
order to have standing. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023, 1025 (Fed. Cir. 1999). “To establish a reasonable basis for a belief that
one is damaged by the registration sought to be cancelled, a petition may
assert a likelihood of confusion which is not wholly without merit.” Lipton
Industries v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982).
Petitioner has alleged prior use of the terms SPORT ROCK and ROCK in
connection with deodorant, which are arguably similar to Respondent’s
Cancellation No. 92055254

14
registered mark THE ROCK and used in connection with goods that are
substantially identical to the registered goods. Petitioner also alleges that
Respondent’s mark is likely to cause confusion, mistake, or deception within
the meaning of 2(d) of the Trademark Act such that Petitioner will be
harmed. Given Petitioner’s allegations that the marks are highly similar and
the goods are substantially identical, this is sufficient to show that Petitioner
has a real interest in this proceeding and, therefore, has standing. See
Toufigh v. Persona Parfum Inc., 95 USPQ2d 1872, 1874 (TTAB 2010)
(standing found where petitioner holds a reasonable belief that “there is a
likelihood of confusion there between the marks, or that the presence on the
register of the respondent's mark may hinder the petitioner in using or
registering [its] mark”).
Likelihood of Confusion
We have found above that Petitioner abandoned the mark SPORT ROCK
in its pleaded Registration No. 1726900, and that such registration will be
cancelled in due course. A cancelled registration may not, inter alia, form the
basis for an allegation of priority in connection with a Section 2(d) claim of
likelihood of confusion. See. e.g., Action Temporary Services Inc. v. Labor
Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989). See also
TBMP § 704.03(b)(1)(A) and authorities cited therein. In addition, while
Petitioner argues that it has made common-law use of the term “ROCK” in
Cancellation No. 92055254

15
connection with various products, it has not introduced evidence of prior use
thereof or whether such use is trademark use.
Inasmuch as Petitioner has not introduced any evidence that it has made
prior use of its pleaded SPORT ROCK mark or prior use of the term “ROCK”
as a mark, it cannot establish priority for purposes of its claim of likelihood of
confusion under Section 2(d). As a result, Petitioner’s likelihood of confusion
claim must fail.
Fraud
Fraud in procuring a trademark registration or renewal occurs only when
an applicant or registrant knowingly makes a false, material representation
with the intent to deceive the USPTO. In re Bose Corp., 580 F.3d 1240, 91
USPQ2d 1938, 1941 (Fed. Cir. 2009). “Subjective intent to deceive, however
difficult it may be to prove, is an indispensable element in the analysis.” Id. A
party seeking cancellation of a trademark registration for fraudulent
procurement bears a heavy burden of proof. Id., citing W.D. Byron & Sons,
Inc. v. Stein Bros. Mfg. Co., 377 F.2d 1001, 153 USPQ 749, 750 (CCPA 1967).
Petitioner alleges that Respondent committed fraud by knowingly and
willfully making false and/or fraudulent declarations or representations to
the USPTO, including, inter alia, falsely alleging in the declaration
accompanying its underlying application that Respondent had no knowledge
of Petitioner’s use of the term “ROCK” on and in connection with Petitioner’s
deodorant products; that these false statements were made with the intent to
Cancellation No. 92055254

16
induce the USPTO to grant the involved registration; and that in reliance on
the truth of said false statements, the USPTO did, in fact, grant registration
to Respondent.
Specifically, Petitioner argues:
Respondent, specifically in the person of Mr. Gilbert Bernal,

1) intentionally considered and selected two of Petitioner’s
products explicitly for the purpose of relabeling and resale under
the name of his own company;

2) knew or must have known, as a necessary aspect of selecting
among Petitioner’s products, of Petitioner’s prior use of the term
“ROCK” in connection with Petitioner’s SPORT ROCK-branded
product and other products utilizing Petitioner’s common-law
Rock-Product marks;

3) knew specifically of Petitioner’s prior use of the term “ROCK”
in connection with Petitioner’s TRAVEL ROCK DEODORANT,
which was explicitly invoiced to Mr. Bernal as “1 OZ. TRAVEL
SIZE DEO ROCK”

4) knew and intended to obscure the true source of the products
purchased from Petitioner for resale and, inter alia, intended to
hide any relationship with Petitioner not the least of which was
Petitioner’s prior use of the term “ROCK” on or in connection
with the products purchased by Mr. Bernal directly from
Petitioner;

5) knew that revealing the many prior public uses of the term
“ROCK” by Petitioner in relation to deodorants of exactly the
nature sold by Respondent would directly compromise
Respondent’s ability to obtain registration of its THE ROCK
mark; and

6) explicitly choose not to reveal to the USPTO any aspect of
Petitioner’s prior uses of the term “ROCK”, either as used as
part of the mark SPORT ROCK or in relation to Petitioner’s
other products bearing common-law Rock-Product marks.12

12 18 TTABVUE 24-25.
Cancellation No. 92055254

17
However, Petitioner failed to introduce any evidence or testimony into the
record during its testimony period to support its fraud claim. Instead,
Petitioner relies upon the averments in the application underlying
Respondent’s involved registration; Respondent’s admission in its answer to
the petition for cancellation that it purchased and relabeled Petitioner’s
products; and copies of invoices for Petitioner’s CRYSTAL deodorant sold and
shipped to Respondent, submitted during Petitioner’s rebuttal testimony
period. Petitioner argues that this evidence establishes the necessary
elements of its fraud claim. We find, however, that Petitioner’s scant evidence
falls far short of establishing that Respondent committed fraud in procuring
its involved registration. We have no information regarding, e.g., whatever
business relationship may have existed between Petitioner and Respondent
resulting in Respondent’s purchase and subsequent relabeling of Petitioner’s
CRYSTAL deodorant product; whether Respondent’s relabeling of Petitioner’s
product was intended to obscure any relationship between them; or the
extent, if any, to which Respondent was aware of Petitioner’s SPORT ROCK
products or use of the term “ROCK” in connection with its products.
As a result, the record in this case falls far short of establishing, in
particular, Respondent’s requisite intent to deceive the USPTO. Cf. In re Bose
Corp., 91 USPQ2d at 1941. “[S]uch evidence must still be clear and
convincing, and inferences drawn from lesser evidence cannot satisfy the
deceptive intent requirement.” Id., quoting Star Scientific, Inc. v. R.J.
Cancellation No. 92055254

18
Reynolds Tobacco Co., 537 F.3d 1357, 1366, 88 USPQ2d 1001 (Fed. Cir.
2008). “Indeed, ‘the very nature of the charge of fraud requires that it be
proven ‘to the hilt’ with clear and convincing evidence. There is no room for
speculation, inference or surmise and, obviously, any doubt must be resolved
against the charging party.’” Id. at 1939, quoting Smith Int’l, Inc. v. Olin
Corp., 209 USPQ 1033, 1044 (TTAB 1981).
DECISION: Based upon our findings above, the petition to cancel
Respondent’s involved registration on the grounds of likelihood of confusion
and fraud is dismissed.
Respondent’s counterclaim to cancel Petitioner’s pleaded registration is
granted on the ground of abandonment. Registration No. 1726900 will be
cancelled in due course.