LeMans Corporationv.LeMar Xavier Lewis

Trademark Trial and Appeal Board

Nov 30, 2016

No. 91214578 (T.T.A.B. Nov. 30, 2016)

GMM Mailed: November 30, 2016 Opposition No. 91214578 (parent) Opposition No. 91226723 Cancellation No. 92063552 LeMans Corporation v. LeMar Xavier Lewis Before Zervas, Cataldo, and Hightower, Administrative Trademark Judges. By the Board: This case comes before the Board for consideration of Opposer/Petitioner LeMans Corporation’s August 31, 2016, motion for partial summary judgment on its claims of nonuse and abandonment. The motion is fully briefed. For purposes of this order we presume the parties’ familiarity with the pleadings, and the arguments and evidence submitted in support of or in opposition to the motion for summary judgment. In reaching our decision, all of the parties’ arguments were carefully considered in light of the evidence of record, although we do not find it necessary to discuss all of them in our opinion. See Guess? IP Holder L.P. v. Knowluxe LLC, 116 USPQ2d 2018, 2018 (TTAB 2015). 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 OPINION IS NOT A PRECEDENT OF THE TTAB Opp. No. 91214578, Opp. No. 91226723, and Canc. No. 92063552 2 1. Background The above-identified opposition and cancellation proceedings were consolidated by order of the Board dated July 25, 2016. See 63 TTABVUE. In all three proceedings LeMans Corporation, as opposer and petitioner, is in the positon of plaintiff, and LeMar Lewis, as applicant and respondent, is in the positon of defendant. For purposes of this order, we refer to LeMans Corporation as “Petitioner” and LeMar Lewis as “Respondent.” Respondent is proceeding pro se in each proceeding. In Opposition No. 91214578, Petitioner has opposed registration of Respondent’s application Serial No. 85956925 for the mark THORO (in standard character form) for “[a]thletic shorts; baseball caps and hats,” in International Class 25.1 As grounds for the opposition, Petitioner alleges claims of nonuse under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), and likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on Petitioner’s claim of prior use and registration of the mark THOR in connection with motorcycle apparel; gear bags, cases, and wallets; athletic equipment and protective clothing for use in motorcross racing; and online catalog services and marketing services featuring motorcross racing and motorcycle riding gear, sportswear, and accessories. Notice of Opposition ¶¶ 13-14 (1 TTABVUE 7-8).2 In support of its Section 2(d) claim, Petitioner pleaded ownership of the following registrations. Registration No. 1755416 for the mark THOR (in typed form) for “motorcycle racing apparel; namely, racing pants, 1 Filed on June 11, 2013, based on Applicant’s claim of use of the mark in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). 2 Unless otherwise indicated, citations to the record are to docket entries for Opposition No. 91214578 (the parent proceeding). Opp. No. 91214578, Opp. No. 91226723, and Canc. No. 92063552 3 jerseys, boots, T-shirts, sweatshirts, caps and jackets,” in International Class 25;3 Registration No. 2842916 for the mark THOR (in typed form) for “[g]ear bags, namely, athletic bags, tool bags sold empty, athletic bags for general use, travel bags, backpacks,” in International Class 18;4 Registration No. 2829892 for the mark THOR (in typed form) for “[a]thletic equipment for use in motocross racing namely, chest guards, back guards, elbow guards, forearm guards, shoulder guards, kidney guards, knee guards, shin guards, motocross gloves,” in International Class 28;5 Registration No. 2829888 for the mark THOR (in typed form) for “[p]rotective clothing for motorcross racing, namely, chest protectors, back protectors, elbow protectors, forearm protectors, shoulder protectors, kidney protectors, knee protectors, shin protectors, protective hand gear, protective helmets, protective boots, safety goggles; helmet bags,” in International Class 9;6 Registration No. 3191730 for the mark THOR (in standard character form) for “[o]n-line catalogue services for dealers and distributors featuring motocross racing and motorcycle riding gear, sportswear, and accessories; on-line marketing services for dealers and distributors featuring motocross racing and motorcycle riding gear, sportswear and accessories,” in International Class 35.7 Id., at ¶ 4 (1 TTABVUE 5-6). In Opposition No. 91226723, Petitioner has opposed registration of Respondent’s application Serial No. 86367828 for the mark THŌRŌ (in standard character form) 3 Issued on March 2, 1993; second renewal. Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings. A typed mark is the legal equivalent of a standard character mark. TMEP § 807.03(i) (October 2016). 4 Issued on March 18, 2004; Section 8 and 15 declaration accepted and acknowledged; renewed. 5 Issued on April 6, 2004; Section 8 and 15 declaration accepted and acknowledged; renewed. 6 Issued on April 6, 2004; Section 8 and 15 declaration accepted and acknowledged; renewed. 7 Issued on January 2, 2007; Section 8 and 15 declaration accepted and acknowledged; renewed. Opp. No. 91214578, Opp. No. 91226723, and Canc. No. 92063552 4 for “Hooded sweatshirts,” in International Class 25.8 The grounds for the opposition are identical to the grounds asserted by Petitioner in Opposition No. 91214578, namely, nonuse and a Section 2(d) claim based on the same allegations of prior use and the same pleaded registrations. See 1 TTABVUE in Opp. No. 91214578. In Cancellation No. 92063552, Petitioner has petitioned to cancel Respondent’s Registration No. 3206498 for the mark THŌRŌ and design, in the special form shown below, for “Clothing namely T-shirts; tank tops, polo shirts, hats, undershirts, jerseys,” in International Class 25.9 As grounds for cancellation, Petitioner alleged that Respondent’s THORO and design mark falsely suggests a connection with Petitioner’s previously used and registered THOR marks under Trademark Act Section 2(a), 15 U.S.C. § 1052(a),10 that Respondent has abandoned use of the THORO mark, and that Respondent 8 Filed on August 15, 2014, based on Applicant’s claim of use of the mark in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). 9 Issued on February 6, 2007; Section 8 and 15 accepted and acknowledged. 10 Petitioner’s false suggestion of a connection claim is insufficiently pleaded inasmuch as to state a claim of false suggestion of a connection under Trademark Act Section 2(a), Petitioner must allege facts from which it may be inferred (1) that Respondent’s mark points uniquely to Petitioner as an entity - i.e., that Respondent’s mark is Petitioner’s identity or “persona;” (2) that purchasers would assume that goods sold under Respondent’s mark are connected with Petitioner; and (3) either (a) that Petitioner was the prior user of Respondent’s mark, or the equivalent thereof, as a designation of its identity or “persona,” or (b) that there was an association of the identity or persona with Petitioner prior in time to Respondent’s use. See Miller Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d 1711, 1712-13 (TTAB 1993). Petitioner failed to allege that any one of its THOR marks is the identity or persona of Petitioner. A claim under Section 2(a) claiming false suggestion of a connection is not a surrogate claim to a claim under Section 2(d) for likelihood of confusion. However, in view of our decision herein granting Petitioner’s motion for partial summary, the deficiency in the the Section 2(a) claim is moot. Opp. No. 91214578, Opp. No. 91226723, and Canc. No. 92063552 5 committed fraud in procuring the registration, and in subsequently maintaining it, because the mark was not in use when Respondent filed the application to register the mark and when Respondent subsequently filed the Declaration of Use to maintain the resulting registration. Petition for Cancellation ¶¶ 3-20 (4 TTABVUE 3-7) in Cancellation No. 92063552.11 In each case, Respondent filed an answer in which he denied the salient allegations in the respective notices of opposition and petition for cancellation. Petitioner has moved for summary judgement on its claims that application Serial Nos. 85956925 and 86367828 are void ab initio because the subject marks THORO and THŌRŌ, respectively, were not in use in commerce at the time the applications were filed, and that the THORO and design mark in Registration No. 3206498 has been abandoned. 2. Preliminary Matters As an initial matter, on October 3, 2016, after Petitioner filed its motion for summary judgment, and after the Board suspended proceedings pending disposition of the motion, Respondent filed a motion to reopen his time to respond Petitioner’s interrogatories and document requests.12 See 75 TTABVUE. On September 14, 2016, the Board suspended proceedings pending disposition of Petitioner’s motion for summary judgment and further indicated that “[a]ny paper 11 The operative complaint in proceeding no. 92063552 is Petitioner’s amended petition for cancellation. 12 Although Petitioner did not submit a brief in opposition to Respondent’s motion to reopen his time to serve discovery responses, we decline to exercise our discretion to consider the motion as conceded by Petitioner. See TBMP § 502.04 Opp. No. 91214578, Opp. No. 91226723, and Canc. No. 92063552 6 filed during the pendency of th[e] motion which is not relevant thereto will be given no consideration.” See 74 TTABVUE 1. Respondent’s motion to reopen his time to respond to Petitioner’s interrogatories and document requests is not germane to the motion for summary judgment and therefore is denied. See Trademark Rules 2.127(d) and 2.127(e)(1); see also TBMP § 528.03 (2016). Regardless of when Respondent’s discovery responses initially were due, Respondent has been under an ongoing obligation to supplement his discovery responses in a timely manner. See Fed. R. Civ. P. 26(e); TBMP § 408.03. We also deny Respondent’s motion on its merits. A party seeking to reopen the time for taking an action must show that its failure to act during the time previously allotted therefor was the result of excusable neglect. See Fed. R. Civ. P. 6(b)(1)(B); TBMP § 509.01(b)(1). In determining whether or not excusable neglect has been established, the Board takes into account all relevant circumstances surrounding the party’s omission or delay, including (1) the danger of prejudice to the nonmovant, (2) the length of the delay and its potential impact on judicial proceedings, (3) the reason for the delay, including whether it was within the reasonable control of the movant, and (4) whether the movant acted in good faith. See Pioneer Inv. Servs. Co. v. Brunswick Assocs. L.P., 507 U.S. 380 (1993); Pumpkin Ltd. v. Seed Corps, 43 USPQ2d 1582 (TTAB 1997). Here the circumstances do not support a finding of excusable neglect. On January 30 2015, the Board issued an order granting as conceded Petitioner’s December 17, 2014, motion to compel Respondent to respond to Petitioner’s first set Opp. No. 91214578, Opp. No. 91226723, and Canc. No. 92063552 7 of interrogatories and document requests. See 26 TTABVUE. On April 16, 2015, the Board partially modified its prior order and ordered Respondent to serve on Petitioner: written and verified supplemental responses to Petitioner’s first set of interrogatories, without objections on the merits; written supplemental responses to Petitioner’s first set of document requests without objections on the merits; and all responsive documents by copying them at Respondent’s own expense and delivering them to Petitioner. See 31 TTABVUE 2-3. On March 2, 2016, the Board ordered Respondent to re-serve his interrogatory responses of May 5, 2015, May 7, 2015, July 20, 2015 and October 29, 2015 under oath; supplement his interrogatory responses under oath providing the address and place of employment or last known business affiliation for certain individuals identified by Respondent in his prior discovery responses; specify for each document produced the document request to which the document is responsive; and identify the date, place and context for each photograph Respondent previously produced or state that such information is unavailable.13 See 57 TTABVUE 8. The Board further ordered Respondent to serve on Petitioner: verified written responses, without objections on the merits, to Petitioner’s second set of interrogatories; written responses, without objections on the merits, to Petitioner’s second set of document requests; and all responsive documents by copying them at Respondent’s own expense and delivering them to Petitioner. See 57 TTABVUE 9- 10. Finally, the Board indicated that it would “grant no extension of time to 13 The Board further noted in its order that from December 2014 through October 2015 Respondent had served four sets of responses to Petitioner’s first set of interrogatories and document requests. See 57 TTABVUE 6. Opp. No. 91214578, Opp. No. 91226723, and Canc. No. 92063552 8 [Respondent] to comply with this order absent exceptional circumstances.” See 57 TTABVUE 8 (emphasis in original). Respondent’s explanation in his motion that “[he] did not fully understand the nature of the discoveries [sic] or what information [he] was required to provide” fails to set forth circumstances demonstrating excusable neglect warranting a reopening of his time for responding to Petitioner’s interrogatories and document requests. The length of the delay has been significant, the reasons for the delay were within the reasonable control of the Respondent, and reopening Respondent’s response period at this stage in the proceedings would prejudice Petitioner, which filed numerous motions seeking Respondent’s discovery responses before filing the instant motion for summary judgment. Moreover, in view of the Board’s prior orders regarding Applicant’s discovery obligations, Applicant’s explanation that that “[he] did not fully understand the nature of the discoveries [sic] or what information [he] was required to provide” suggests that Respondent has not been diligent in satisfying his discovery obligations or complying with the Board’s prior orders. Accordingly, Respondent has failed to demonstrate excusable neglect. 3. The Parties’ Evidence and Arguments Petitioner’s motion for summary judgement is supported primarily by Respondent’s admissions resulting from Respondent’s failure to respond to Petitioner’s requests for admissions, and also by Petitioner’s contention that during discovery Respondent produced no documents evidencing use of the THORO marks in commerce. Opp. No. 91214578, Opp. No. 91226723, and Canc. No. 92063552 9 Because Respondent did not provide Petitioner with written answers to the requests for admission, the requested admissions are deemed admitted by operation of law.14 Fed. R. Civ. P. 36(a)(3). Respondent does not dispute that he has not responded to Petitioner’s requests for admission, nor has Respondent moved to withdraw and amend the resulting admissions in the manner provided for in Fed. R. Civ. P. 36(b).15 Petitioner has introduced, inter alia, copies of its first set of requests for admissions served on Respondent (as applicant) on June 10, 2015. See 67 TTABVUE 120-127. Although the requests for admission were served in Opposition No. 91214578, prior to consolidation of these proceedings, the requests for admission incorporate by reference the definitions and instructions set forth in Petitioner’s (as opposer, at the time) first set of interrogatories to Respondent (as applicant, at the time) (see 67 TTABVUE 120) and define the THORO mark as “the stand-alone, block letter term THORO as well as any variations thereof used by Applicant, such as plural forms, abbreviations or design presentations, or composites including THORO, or which Applicant intends to use, or on which Applicant may rely upon in any way 14 Petitioner served its first set of requests for admission to Respondent on June 10, 2015. See 67 TTABVUE 127. Thus, pursuant to Fed. R. Civ. P. 36(a)(3), Respondent’s answers were due by July 10, 2015. 15 In order to avoid admissions by operation of law resulting from a failure to timely respond to a propounding party’s requests for admissions, a responding party must either (1) move to reopen its time to respond to the requests for admission because its failure to timely respond was the result of excusable neglect under Fed. R. Civ. P. 6(b)(2), or (2) move to withdraw and amend its admissions pursuant to Fed. R. Civ. P. 36(b). Respondent, in his motion to reopen his time to respond to Petitioner’s interrogatories and document requests, did not request a reopening of his time to respond to Petitioner’s requests for admission. Even if we were to construe Respondent’s motion as a motion to reopen his time to respond to the requests for admission under Fed. R. Civ. P. 6(b)(1)(B), such a motion would be denied for failure to demonstrate excusable neglect. See pp. 6-8, supra. Opp. No. 91214578, Opp. No. 91226723, and Canc. No. 92063552 10 in this proceeding, including, but not limited to Applicant’s mark which is the subject of Application Serial No. 85/956,925.” See 67 TTABVUE 32. Accordingly, the definition of the THORO mark in Petitioner’s discovery requests is sufficiently broad to encompass all variations of the mark relevant to these consolidated proceedings. However, where a specific interrogatory, document request, or request for admission expressly refers to only one of the subject applications or registration, we have taken into account any such limitation in considering its relevance. Petitioner also contends, and Respondent does not dispute, that Respondent produced only seventeen pages of documents in response to Petitioner’s document requests. Petitioner’s Br., p. 19 and Ex. 5 (67 TTABVUE 20-21, 75-92). Among the requests for admission (“RFA”) that Respondent is deemed to have admitted by operation of law are the following: Respondent had not sold in commerce athletic shorts, baseball caps and hats, or T-shirts as of June 11, 2013 (the date on which application Serial No. 85956925 was filed), and that he has no receipts or invoices for sales in commerce of such goods as of that date (RFA Nos. 51-58; 67 TTABVUE 125-126); Respondent had not sold in commerce any hooded sweatshirt with the THORO mark as of August 15, 2014 (the date on which Application Serial No. 86367828 was filed), and he has no receipts or invoices for sales in commerce of such products as of that date (RFA No. 59 - 60; 67 TTABVUE 126); Respondent has no sales records, invoices, or receipts for products sold under the THORO mark (RFA Nos. 16-18; 67 TTABVUE 122); Respondent has no documents reflecting any advertising expenditures relating to products sold under the THORO mark (RFA No. 19-20; 67 TTABVUE 122); Opp. No. 91214578, Opp. No. 91226723, and Canc. No. 92063552 11 Respondent has never reported any sales income or revenue or collected or paid any sales tax in connection with any product actually sold under the THORO mark (RFA Nos. 33-38; 67 TTABVUE 123-124); The specimen filed by Respondent in connection with his Section 8 declaration of use for Registration No. 3206492 consisted of a picture of a standalone label not attached to a product actually sold by Respondent under the THORO mark (RFA No. 30; 67 TTABVUE); None of the photographs produced by Respondent during discovery were taken after August 2010 (RFA 5; 67 TTABVUE 121); The website materials produced by Respondent were not accessible through the url after September 2011 (RFA No. 6; 67 TTABVUE 121); The website has not been active since September 2011 (RFA No. 10; 67 TTABVUE 121) The websites and have never displayed information relating to any product sold by Respondent under the mark THORO (RFA Nos. 12-15; 67 TTABVUE 121); Other than the documents produced by Respondent during discovery, no other documents exist that are responsive to Petitioner’s document requests seeking documents relating to: continued use of the THORO mark set forth in Registration No. 3206498 as of October 21, 2012 (RFA No. 24); use of the THORO mark for any products occurring on or before June 11, 2013 (RFA No. 25); and use of the THORO mark for any products occurring after June 11, 2013 (RFA Nos 24-26; 67 TTABVUE 122-23).16 Petitioner also has submitted copies of its first and second sets of requests for production of documents and things to Respondent (“RFP”), as evidence that certain types of documents were sought by Petitioner but not produced. Among Petitioner’s document requests, Petitioner sought sales records for each of the years from 2001- 2015 for any product alleged to have been sold under the mark THORO (RFP No. 17, 16 The relevant requests for admission refer to Petitioner’s document request nos. 3, 5, and 6, located in the record at 6 TTABVUE 41-42. Opp. No. 91214578, Opp. No. 91226723, and Canc. No. 92063552 12 67 TTABVUE 115); records of advertising and marketing expenditures for each of the years 2001-2015 for any product offered under the mark THORO (RFP Nos. 18-19, 67 TTABVUE 115); and tax records for the years 2001-2015 reflecting any expenses incurred or income received for any product sold under the mark THORO (RFP Nos. 25-27 and 30; 67 TTABVUE 116). The seventeen pages of documents produced by Respondent do not include any sales or advertising figures or any tax records. See 67 TTABVUE 79-82). The documents produced by Respondent consist of two “witness statements” averring that Respondent “was actively marketing, selling, and producing his Thoro mark on clothing, apparel and marketing materials in Fall 2001” (67 TTABVUE 76-77); a computer printout of a South Carolina state trademark registration for the mark THORO for unidentified goods in Class 25, which indicates it issued on December 31, 2002 and expired on December 31, 2007 (67 TTABVUE 78); an unauthenticated photograph of a t-shirt bearing the THORO mark that bears a date-stamp of August 3, 2010 (67 TTABVUE 79); undated and unauthenticated photographs of t-shirts bearing the THORO mark (67 TTABVUE 80-82, 90-92); undated advertising materials (67 TTABVUE 83-85, 87, and 89); an undated business card (67 TTABVUE 88); an undated and unauthenticated photograph of what appears to be a store front (67 TTABVUE 92); and photographs of a boat bearing the designation THORO (67 TTABVUE 86). With his response to Petitioner’s motion for summary judgment, Respondent submitted nineteen pages of documents consisting of four invoices from various Opp. No. 91214578, Opp. No. 91226723, and Canc. No. 92063552 13 suppliers to Respondent (72 TTABVUE 3-7); documents and photographs on which the date and other identifying information has been hand-written (72 TTABVUE 8- 15); an email showing a person wearing a shirt bearing the mark THORO17 (72 TTABVUE 16); and email correspondence that does not show the mark on the goods (72 TTABVUE 17-20). None of the documents submitted by Respondent are properly of record as evidence in support of Respondent’s brief in opposition to the motion for summary judgment. The documents, many of which contain hand-written dates, have not been identified and authenticated by a declaration or affidavit pursuant to Fed. R. Civ. P. 56(c). See also TBMP § 528.05. Moreover, none of the documents constitute publications in general circulation available to the general public, and therefore they are not self-authenticating and admissible under Trademark Rule 2.122(e).18 Materials that do not fall within Trademark Rule 2.122(e), that is, materials that are not self-authenticating in nature, must be properly authenticated by an affidavit or declaration pursuant to Fed. R. Civ. P. 56(c)(4). See TBMP § 528.05(e). Accordingly, 17 Although the email is dated, there is no indication when the photograph was taken. 18 Printed publications are self-authenticating and, therefore, may be relied on for purposes of summary judgment without further evidence of authenticity. See Trademark Rule 2.122(e), TBMP § 528.05(e). Such “printed materials” need not be submitted under a formal notice of reliance pursuant to Trademark Rule 2.122(e) or in connection with the affidavit or declaration of a witness, but may simply be submitted as an attachment or exhibit to a party’s supporting brief, provided the materials otherwise constitute “printed publications” within the meaning of Trademark Rule 2.122(e) and are supported by information identifying the source and date of the publication. See TBMP § 528.05. However, catalogs and other printed advertising materials are not printed publications available to the general public in libraries or in general circulation among the general public or that segment of the public which is relevant, and therefore are not admissible as self-authenticating materials. Opp. No. 91214578, Opp. No. 91226723, and Canc. No. 92063552 14 we cannot consider any of the documents submitted by Respondent in connection with his brief. 4. Summary Judgement Summary judgment is an appropriate method of disposing of cases in which there are no genuine disputes as to material facts, thus leaving such cases to be resolved as a matter of law. See Fed. R. Civ. P. 56(c). In deciding motions for summary judgment, the Board must follow the well-established principles that, in considering the propriety of summary judgment, all evidence must be viewed in a light favorable to the non-movant, and all justifiable inferences are to be drawn in the non-movant’s favor. The Board may not resolve disputes of material fact; it may only ascertain whether such disputes are present. See Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992). The burden is on the party moving for summary judgment to demonstrate the absence of any genuine dispute of material fact, and that it is entitled to summary judgment as a matter of law. Fed. R. Civ. P. 56(c). When a moving party’s motion for summary judgment is supported by evidence sufficient to indicate that there can be no genuine dispute as to any material fact and that the moving party is entitled to judgment, the burden shifts to the non-moving party to demonstrate the existence of at least one genuine dispute as to a material fact that requires resolution at trial. See Opp. No. 91214578, Opp. No. 91226723, and Canc. No. 92063552 15 Fed. R. Civ. P. 56(e); Kellog Co. v. Pack’Em Enters. Inc., 14 USPQ2d 1545, 1549 (1990). The non-moving party may not rest on the mere allegations of its pleadings and assertions, but must designate specific portions of the record or produce additional evidence showing the existence of a genuine dispute as to a material fact for trial. Kellog Co., 14 USPQ2d at 1549; Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). Consequently, factual assertions, without evidentiary support, are insufficient to defend against a motion for summary judgment. See Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1739 (TTAB 2001) (“applicant has produced no evidence, or raised any expectation that at trial it could produce evidence”); S & L Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221, 1225 n.9 (TTAB 1987). a. Opposition Nos. 91214578 and 91226723: Nonuse In support of its motion for summary judgment on the claims that Respondent was not using the marks in application Serial Nos. 85956925 and 86367828 as of the filing date of the applications, Petitioner has submitted, inter alia, Respondent’s admissions that: he had not sold in commerce “athletic shorts, baseball caps and hats, or T-shirts” with the THORO mark as of the June 11, 2013, filing date of application Serial No. 85956925; he had not sold in commerce any hooded sweatshirts with the THORO mark as of the August 15, 2014, filing date of application Serial No. 86367828; he has no sales record, including invoices, or receipts for products sold under the THORO mark; he has no documents reflecting any advertising Opp. No. 91214578, Opp. No. 91226723, and Canc. No. 92063552 16 expenditures relating to products sold under the THORO mark; and that he never reported any sales income or revenue or collected or paid any sales tax in connection with any product actually sold under the THORO mark. See responses to RFAs listed at pp. 10-11, supra. The matters admitted by Respondent by operation of Fed. R. Civ. P. 36(a)(3) are conclusively established. Fed. R. Civ. P. 36(b); see also Texas Dept. of Transp. v. Tucker, 95 USPQ2d 1241, 1244 (TTAB 2010) (admission conclusively establishes matter that is the subject of request for admission, subsequent argument to the contrary in response brief insufficient to raise genuine issue of material fact); Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1036 n.8 (TTAB 2007) (same). Petitioner’s evidence therefore is sufficient to meet Petitioner’s threshold burden of establishing that there is no genuine dispute of material fact that Respondent was not using the subject THORO marks on any of the goods identified in application Serial Nos. 85956925 and 86367828 when it filed the applications. See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986) (no requirement that moving party support its motion with affidavits or other similar materials negating the opponent’s claim but may be based on nonmovant’s failure to make sufficient showing as to its own case on which it has burden of proof). The burden therefore shifts to Respondent to demonstrate the existence of at least one genuine dispute as to a material fact that requires resolution at trial. As discussed above, however, Respondent has not submitted any admissible evidence to establish that as of the respective filing dates of the subject applications Opp. No. 91214578, Opp. No. 91226723, and Canc. No. 92063552 17 it was using the mark THORO for “athletic shorts, baseball caps and hats, or T-shirts” or using the mark THŌRŌ for “hooded sweatshirts.” The documents submitted by Respondent are not self-authenticating, have not been supported by a declaration, and therefore are not properly of record.19 Accordingly, Respondent has failed to produce evidence showing the existence of a genuine dispute as to a material fact regarding the nonuse of the marks THORO and THŌRŌ as of the date the subject applications were filed. In view of Respondent’s admissions and his failure to produce any documents evidencing his use of the marks, the arguments in his response brief regarding alleged use of the marks are insufficient to raise a genuine dispute of material fact. See Texas Dept. of Transp., 95 USPQ2d at 1244; Sinclair Oil Corp., 85 USPQ2d at 1036 n.8; see also Hornblower & Weeks Inc., 60 USPQ2d at 1739 (factual assertions, without evidentiary support, are insufficient to defend against a motion for summary judgment). We therefore grant Petitioner’s motion for summary judgment on its claims that application Serial Nos. 85956925 and 86367828 are void ab initio due to nonuse as of the filing dates of the respective applications. b. Cancellation No. 92063552: Abandonment “There are two elements to an abandonment claim that a plaintiff must [allege and subsequently] prove: nonuse of the mark and intent not to resume use.” ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1042 (TTAB 2012). However, a 19 Even if the documents were properly of record (and they are not), they would not be probative of actual use of the mark on a date certain. Neither the invoices from suppliers to Applicant nor the email correspondence reflects marketing or sales of the products. The remaining photographs and printed materials are not competent evidence because they bear hand-written dates but are unaccompanied by a declaration verifying those dates of use and providing an explanation of the nature and context of the documents. Opp. No. 91214578, Opp. No. 91226723, and Canc. No. 92063552 18 prima facie showing of abandonment may be established where the alleged nonuse has ensued for three years or more. See 15 U.S.C. § 1127; ShutEmDown Sports, 102 USPQ2d at 1042. Petitioner contends that Respondent abandoned the mark THORO and design in Registration No. 3206498 by discontinuing use of the mark for at least the three consecutive years prior to November 4, 2015.20 Petitioner’s Br., p. 19-24 (67 TTABVUE 20-25). In support of its motion for summary judgment on the abandonment claim, Petitioner again relies on Respondent’s failure to produce documents establishing use of the mark, and Respondent’s admissions, including, inter alia, Respondent’s admissions that: Respondent has no sales records, invoices, or receipts for products sold by under the THORO mark; Respondent has no documents reflecting any advertising expenditures relating to products sold under the THORO mark; Respondent has never reported any sales income or revenue or collected or paid any sales tax in connection with any product actually sold under the THORO mark; the specimen filed by Respondent in connection with his Section 8 declaration of use for Registration No. 3206492 consisted of a picture of a standalone label not attached to a product actually sold by Respondent under the mark; none of the photographs produced during discovery by Respondent were taken after August 2010; the website materials produced by Respondent were not accessible through the 20 November 4, 2015, is the date on which Respondent filed a paper with the Board in which he stated that he had provided Petitioner with “the necessary [discovery] responses” as required by the Board. See 54 TTABVUE 2. Although Petitioner contends that Respondent does not possess documentation sufficient to establish use of the mark at any time (see 67 TTABVUE 18), Petitioner has focused on the three-year period preceding November 4, 2015. Opp. No. 91214578, Opp. No. 91226723, and Canc. No. 92063552 19 url after September 2011; the website has not been active since September 2011; the websites and have never displayed information relating to any product sold by Respondent under the mark THORO; and (RFA Nos. 12-15; 67 TTABVUE 121); and other than the documents produced by Respondent during discovery, no other documents exist that are responsive to Petitioner’s document requests seeking documents relating to the continued use of the THORO mark set forth in Registration No. 3206498 as of October 21, 2012. See pp. 10-11, supra. Petitioner also has submitted copies of its requests for production of documents and things to Respondent, establishing that during discovery Petitioner requested that Respondent produce records of both sales figures and marketing and advertising expenditures for each of the years from 2001-2015 for any product alleged to have been sold or offered under the mark THORO. See p. 11, supra. Petitioner’s evidence in the form of Respondent’s admissions and Respondent’s failure to produce documents evidencing sales, marketing, and advertising numbers is sufficient to meet Petitioner’s threshold burden of establishing a prima facie case that Respondent abandoned use of the mark by discontinuing use for at least the three-year period preceding November 4, 2015. See Celotex Corp., 477 U.S. at 323-24 (no requirement that moving party support its motion with affidavits or other similar materials negating the opponent’s claim but may be based on nonmovant’s failure to make sufficient showing as to its own case on which it has burden of proof). Petitioner’s evidence creates a rebuttable presumption that Respondent abandoned Opp. No. 91214578, Opp. No. 91226723, and Canc. No. 92063552 20 its mark THORO without any intent to resume use. See Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998); Imperial Tobacco, Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1393 (Fed. Cir. 1990). The presumption shifts the burden to Respondent to produce evidence that he either used the mark during the statutory period or intended to resume use. Rivard, 45 USPQ2d at 1376; see also Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1312-13 (Fed. Cir. 1989). In the case of a motion for summary judgment, we must ascertain whether Respondent has put forth sufficient evidence to demonstrate the existence of at least one genuine dispute as to a material fact that requires resolution at trial. As discussed above, Respondent has not submitted any admissible evidence of his bona fide use of the mark in commerce. The documents submitted by Respondent are not self-authenticating, have not been supported by a declaration, and therefore are not properly of record.21 Accordingly, Respondent has failed to produce evidence rebutting Petitioner’s prima facie case of abandonment or showing the existence of a genuine dispute as to a material fact regarding the nonuse of the mark THORO and design for a period of at least three years preceding November 4, 2015. We therefore grant Petitioner’s motion for partial summary judgment on its claim that the mark THORO and design in Registration No. 3206498 has been abandoned. 21 We again note that even if the documents were properly of record (and they are not), they would not be probative of actual use of the mark on a date certain. See p. 17 n.9, supra. Opp. No. 91214578, Opp. No. 91226723, and Canc. No. 92063552 21 5. Determination With respect to Opposition Nos. 91214578 and 91226723, Petitioner’s motion for partial summary judgment on its claims that application Serial Nos. 85956925 and 86367828 are void ab initio due to nonuse is granted, the oppositions are sustained on that ground, and registration is refused. With respect to Cancellation No. 92063552, Petitioner’s motion for partial summary judgment on the abandonment claim is granted, the petition for cancellation is granted on that ground, and Registration No. 3206498 will be cancelled in due course. In view of our decision, Petitioner’s Section 2(d) claims in Opposition Nos. 91214578 and 91226723, and Petitioner’s Section 2(a) and fraud claims in Cancellation No. 92063552 are dismissed without prejudice as moot.