Local Foods, LLCv.Foodsmith Bowen Osborn

Trademark Trial and Appeal Board

Jan 26, 2018

CANC (T.T.A.B. Jan. 26, 2018)

MW Mailed: January 26, 2018

Cancellation No. 92064087 (Parent)
Cancellation No. 92064098

Local Foods, LLC

v.
Foodsmith Bowen Osborn

Before Wellington, Kuczma, and Gorowitz,
Administrative Trademark Judges.

By the Board:

This proceeding now comes before the Board for consideration of Petitioner’s
motion, filed September 26, 2017, for summary judgment in Cancellation No.
92064087 on the grounds that Respondent has abandoned the mark and that the
mark is void because Respondent was not the owner of the mark on the filing date of
the underlying application.1 The motion is fully-briefed.2
By way of background, on August 25, 2016, Petitioner filed a consented motion to
amend the petition for cancellation of the following word and design mark:

1 The motion does not seek summary judgment against the registration involved in
Cancellation No. 92064098.
2 The Board notes that Respondent has again filed a brief that is not double-spaced in
compliance with Trademark Rule 2.126. See 21 TTABVUE 2 n.3. We exercise our discretion
and give consideration to this brief. Respondent is advised that the Board may not consider
any future filings which fail to comply with Rule 2.126.
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
Cancellation No. 92064087

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for “Health food, namely freshly prepared meals consisting primarily of local and
organic meat, fish poultry, vegetables, properly proportioned, for delivery and pickup”
in International Class 29.3 The grounds asserted in the amended petition are (1)
likelihood of confusion, and (2) the registration is void because the mark was owned
by a partnership comprising Jamie Smith, an officer of Petitioner, and Bowen Osborn
at the time Respondent filed the underlying application.4 In its answer to the
amended petition, Respondent generally denied “each and every count of the Petition
to Cancel.” 13 TTABVUE 2.
On June 7, 2017, the Board consolidated Cancellation No. 92064087 with
Cancellation No. 92064098 because the parties to the proceedings are identical and
the marks and issues are similar.5
On October 5, 2017, the Board issued an order noting that the proceeding was
suspended as of the filing date of the motion for summary judgment. The Board

3 Registration No. 4661839 was registered on December 30, 2014, claiming July 1, 2013 as
the date of first use anywhere and the date of first use in commerce. The underlying
application for registration was filed on August 7, 2013, based on use in commerce under
Trademark Act Section 1(a), 15 U.S.C. § 1051(a).
4 Respondent is identified in the registration as Foodsmith Bowen Osborn, a California sole
proprietorship comprised of Bowen Osborn. Mr. Osborn refers to himself as the owner of the
registration.
5 Cancellation No. 92064098 seeks cancellation of Registration No. 4870565 for the mark
FOODSMITH and design.
Cancellation No. 92064087

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further noted that Petitioner did not plead the abandonment claim in its amended
petition. Accordingly, the Board advised the parties that it would not consider
summary judgment with respect to the abandonment claim unless Petitioner timely
filed a motion for leave to amend its pleading.
I. Motion for Leave to Amend
On October 6, 2017, Petitioner filed a motion for leave to amend its pleading.
Respondent did not file a response to Petitioner’s motion for leave to amend and did
not oppose the amendment in its response to Petitioner’s summary judgment motion.
In view thereof, the motion for leave to amend the pleading is granted as conceded.6
II. Standing
Standing is a threshold issue that must be pleaded and proven by the plaintiff in
every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d
1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015);
Ritchie v. Simpson, 171 F.3d. 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999); see
also Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1037 (TTAB 2007). Thus, to
prevail on its motion for summary judgment, Petitioner must establish its standing.
Here, Petitioner has pleaded a legally sufficient claim of likelihood of confusion
based on prior common law use of a similar mark on the same or related goods.7 See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.

6 For purposes of the summary judgment motion, we deem the new allegations in the second
amended pleading to be denied. See TBMP § 528.07(a) (June 2017).
7 A plaintiff that is able to show standing on one ground has the right to assert any other
grounds in an opposition or cancellation proceeding. See Corporacion Habanos SA v.
Rodriquez, 99 USPQ2d 1873, 1877 (TTAB 2011).
Cancellation No. 92064087

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2000). Thus, Petitioner may establish its standing by demonstrating common law
rights in its mark. See Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022
(TTAB 2009) (standing established by showing of common law rights). Although
Petitioner has not submitted any testimony or direct evidence of its common law use
of the mark,8 Petitioner has introduced Respondent’s responses to Petitioner’s
requests for admission which establish Petitioner’s real interest in the proceeding.
Specifically, in response to Petitioner’s request that Respondent admit that Local
Foods, LLC was using the FOOD SMITH mark in commerce at least as early as June
20, 2013,9 Respondent answered “True.”10 See Fed. R. Civ. P. 36(b); Texas Dep’t 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).
In view thereof, we find that Petitioner has established its standing to maintain
this proceeding.
III. The Pleadings
While we have accepted Petitioner’s second amended pleading as the operative
pleading, a decision on summary judgment necessarily requires a review of the
pleading to determine the sufficiency of the claims asserted in the motion. See Fed.
R. Civ. P. 56(a); Asian & Western Classics B.V. v. Selkow, 92 USPQ2d 1478, 1478
(TTAB 2009); Intermed Comm., Inc. v. Chaney, 197 USPQ 501, 503 n.2 (TTAB 1977)

8 We note that the exhibits attached to Petitioner’s original petition for cancellation are not
evidence on behalf of Petitioner. Trademark Rule 2.122(c); see TBMP § 704.05(a) (June 2017).
9 Petitioner’s First Set of Requests for Admission No. 17, 24 TTABVUE 41.
10 24 TTABVUE 46.
Cancellation No. 92064087

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(“If a claim has not been properly pleaded, one cannot obtain summary judgment
thereon.”).11
a. Abandonment
Upon review of Petitioner’s second amended petition for cancellation, we find that
Petitioner has pleaded a legally sufficient claim of abandonment due to Respondent’s
alleged nonuse of the mark for at least three consecutive years.12
b. Non-Ownership
In the second amended petition, Petitioner also added an allegation that
Respondent, Foodsmith Bowen Osborn, a California sole proprietorship composed of
Bowen Osborn, was not the owner of the mark at the time the application was filed
because Respondent did not file a fictitious business name statement with the county
recorder as required by the California Business and Professions Code.13 The second
asserted ground in the motion for summary judgment is based on the new allegation.
According to Petitioner, the registration is void as a matter of law because the sole
proprietorship “did not exist at the time the application was filed or registered.” 24
TTABVUE 55.14

11 In its May 23, 2017 order, the Board found Petitioner’s first amended petition for
cancellation legally sufficient, if proven, to establish Petitioner’s standing as well as its
likelihood of confusion claim and its claim that the registration is void because Respondent
was not the rightful owner of the involved mark when the underlying application was filed.
However, Petitioner’s motion for summary judgment is not based on either of the claims in
the first amended petition.
12 Second Amended Petition for Cancellation, ¶¶ 32-39, 26 TTABVUE 14-16.
13 Id. at ¶ 30, 26 TTABVUE 14.
14 Petitioner does not assert the original non-ownership claim in its motion for summary
judgment. See 24 TTABVUE 53-55.
Cancellation No. 92064087

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Pursuant to Trademark Rule 2.71(d), 37 C.F.R. § 2.71(d), an application based on
use in commerce under Trademark Act Section 1(a) that is not filed by the party that
owns the mark on the application filing date is void. Lyons v. Am. Coll. of Veterinary
Sports Med. & Rehab., 859 F.3d 1023, 123 USPQ2d 1024, 1027 (Fed. Cir. 2017). If
there is a mistake in the manner in which the name is set in the application, the
application may be amended to correct the name of the applicant. However, “the
application cannot set forth a different entity as the applicant.” Rule 2.71(d).
In this case, we find that Petitioner’s new allegation in paragraph 30 of the second
amended petition fails to state a separate claim of non-ownership upon which relief
may be granted. The new allegation does not assert that the party that filed the
application, namely, Bowen Osborn, was the wrong party. It merely alleges that the
entity under which the application was filed was a non-existent entity. If the
application is filed in the name of an entity that does not exist on the application
filing date, the application is not void as a result of the error and may be amended to
correct the applicant’s name. See Accu Pers. Inc. v. Accustaff Inc., 38 USPQ2d 1443,
1445 (TTAB 1996) (holding application not void ab initio where corporation named as
applicant technically did not exist on filing date, since four companies who later
merged acted as a single commercial enterprise when filing the application); Argo &
Co. v. Springer, 198 USPQ 626, 635 (TTAB 1978) (holding that application may be
amended to name three individuals as joint applicants in place of an originally named
corporate applicant which was never legally incorporated, because the individuals
Cancellation No. 92064087

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and non-existent corporation were found to be the same, single commercial
enterprise); see also TMEP § 1201.02(c) (October 2017).
In view of the foregoing, Petitioner’s allegation in paragraph 30 of the second
amended petition is insufficient to state a separate claim of non-ownership under
upon which relief may be granted. Rule 2.71(d). Because Petitioner’s motion for
summary judgment on the ground of non-ownership is based solely on the allegations
in paragraph 30, the motion for summary judgment is deemed moot with respect to
the asserted claim. See Asian & Western Classics B.V. v. Selkow, 92 USPQ2d 1480.
Accordingly, we consider Petitioner’s motion for summary judgment solely with
respect to the abandonment claim.
IV. The Record
For purposes of the summary judgment motion, the evidentiary record includes
the pleadings and, by rule, the file of the involved registration. Trademark Rule
2.122(b). In support of its claim that Respondent has abandoned its mark, Petitioner
introduced, inter alia, the following exhibits:
• The Foodsmith partnership agreement between Bowen Osborn and Jamie
Smith (Exhibit 1);

• Petitioner’s first set of requests for admission to Respondent (Exhibit 4);
• Registrant’s response to Petitioner’s requests for admission (Exhibit 5);
• Petitioner’s first set of interrogatories to Respondent (Exhibit 6);
• Registrant’s response to Petitioner’s interrogatory requests (Exhibit 7);
• Copies of email communications between Bowen Osborn and Jamie Smith
(Exhibits 8 and 9); and

Cancellation No. 92064087

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• The Final Award for the Arbitration decision between the parties (Exhibit
10).15

Respondent has not introduced any evidence in connection with his response to
the motion. Respondent argues, however, that he has not been given the opportunity
to depose Petitioner. In addition, Respondent states that “[n]one of [his] key Requests
for Admission were answered directly and it is imperative to my defense to have those
questions answered.” 27 TTABVUE 3.
To the extent that the foregoing statements in Respondent’s response may be
construed as a request for time to take discovery under Fed. R. Civ. P. 56(d),
Respondent has not properly supported his statements by an affidavit or declaration
showing that he cannot, for specific reasons therein, present facts essential to justify
his opposition to the motion for summary judgment. See Fed. R. Civ. P. 56(d);
Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 23
USPQ2d 1471, 1475 (Fed. Cir. 1992). Thus, Respondent has failed to support the
request. In addition, a request for discovery under Rule 56(d) should be clearly made
and not filed in connection with a response to the motion for summary judgment on
the merits. See Bad Boys Bail Bonds, Inc. v. Yowell, 115 USPQ2d 1925, 1930 (TTAB
2015) (Fed. R. Civ. P. 56(d) motion denied as moot because party filed substantive
response to summary judgment motion).

15 We note that, contrary to self-authenticating official records, the documents in Exhibits 1,
8, 9, and 10 are not self-authenticating and have not been properly authenticated by an
affidavit or declaration pursuant to Fed. R. Civ. P. 56(c)(4). See TBMP § 528.05(e). However,
inasmuch as Respondent has not objected to the evidence on the basis that it cannot be
presented in a form that would be admissible at trial, we have considered the Exhibits. See
Fed. R. Civ. P. 56(c)(2) (Advisory Committee notes) (2010 amendment).
Cancellation No. 92064087

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In view of the foregoing, and to the extent Respondent requests additional
discovery to respond to the motion, the request is denied as moot. Moreover, we note
that the information regarding the issue of abandonment raised in the motion is
largely within the control of Respondent.
V. Summary Judgment
Turning to the merits of the motion for summary judgment with respect to the
abandonment claim, Petitioner argues that Respondent has not used the involved
mark in commerce in connection with the goods identified in the involved registration
since the underlying use-based application was filed in 2013. In support of its
position, Petitioner has provided Respondent’s responses to Petitioner’s requests for
admission. Based on the responses, Petitioner argues that Respondent has admitted
that he as abandoned the mark due to nonuse for at least three consecutive years. In
addition, Petitioner argues that there was no license agreement between Respondent
and the former partnership and that Respondent was unable to provide any evidence
of such an agreement in response to Petitioner’s interrogatory requests.16
In response, Respondent argues that he “let the company, Local Foods, LLC use
the Foodsmith trademark through an implied license as part of doing business.” 27
TTABVUE 2. Respondent states that the mark is currently in use on his website.
However, because he is awaiting the outcome of the cancellation proceeding, he has
“not yet used the Foodsmith trademark in commerce.” Id.

16 24 TTABVUE 57, 61.
Cancellation No. 92064087

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In its reply, Petitioner states that Respondent has only provided conclusory
assertions in his response to the motion. In addition, Petitioner points out that
Respondent has not addressed the lack of evidence of an agreement to license the
mark to the partnership.17
Summary judgment is an appropriate method of disposing of cases in which there
are no genuine disputes as to any material facts and the moving party is entitled to
judgment as a matter of law. Fed. R. Civ. P. 56(a). In reviewing a motion for summary
judgment, the evidentiary record and all justifiable inferences to be drawn from the
undisputed facts must be viewed in the light most favorable to the non-moving party.
See Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029-30
(Fed. Cir. 1993); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d
1542, 1546 (Fed. Cir. 1992). In addition, the Board may not resolve disputes of
material fact; it may only ascertain whether a genuine dispute regarding a material
fact exists. See Lloyd’s Food Prods., 25 USPQ2d at 2029; Olde Tyme Foods, 22
USPQ2d at 1544.
A party moving for summary judgment has the burden of demonstrating a
particular fact is not disputed by citing to particular parts of materials in the record,
including affidavits or declarations, admissions or interrogatory answers; or showing
that the cited materials do not establish the absence or presence of a genuine dispute,

17 Petitioner also submitted evidence with its reply brief. Because we have denied
Respondent’s request for additional discovery, the evidence is unnecessary for the
determination of the issues in the motion. In addition, the copy of the web page from
www.foodsmith.com is not self-authenticating in accordance with Trademark Rule 2.122(e),
37 C.F.R. § 2.122(e). Thus, we have not considered any of the evidence submitted with the
reply brief.
Cancellation No. 92064087

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or that the adverse party cannot produce admissible evidence to support the fact. Fed.
R. Civ. P. 56(c)(1). See generally Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).
When the moving party has supported its motion with sufficient evidence that, if
unopposed, indicates there is no genuine dispute of material fact, the burden of
production shifts to the non-moving party to demonstrate the existence of a genuine
dispute of material fact to be resolved at trial. Enbridge, Inc. v. Excelerate Energy LP,
92 USPQ2d 1537, 1540 (TTAB 2009).
With respect to the abandonment claim, under Trademark Act Section 45, a mark
is deemed statutorily abandoned 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.

15 U.S.C. § 1127. Thus, if a petitioner can show three consecutive years of nonuse, it
has established a prima facie showing that the registrant has abandoned the mark
without intent to resume use. The burden then shifts to the registrant to produce
evidence that it has either used the mark, or intended to resume use. ShutEmDown
Sports Inc. v. Lacy, 102 USPQ2d 1036, 1042 (TTAB 2012).
Here, Petitioner supported its allegations of abandonment with evidence that
Respondent did not use the mark in commerce for at least three consecutive years. In
response to requests for admission, Respondent admits that he did not use the
involved mark in commerce in connection with any of the goods in the registration
from 2013, the year the used-based application was filed, through 2017. 24 TTABVUE
Cancellation No. 92064087

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38-43, 46-47. In addition, in his response to the motion for summary judgment,
Respondent states that he has “not yet used the Foodsmith trademark in commerce.”
27 TTABVUE 3. Respondent’s admissions are sufficient to establish that he has
abandoned the mark. See ShutEmDown Sports Inc., 102 USPQ2d at 1042.
Respondent, as the non-moving party, has failed to provide any evidence in
response to the motion that would raise a genuine dispute of material fact that the
mark was in use by the former partnership through an “implied license” or that he
intends to resume use of the mark. See Imperial Tobacco Ltd. v. Philip Morris Inc.,
899 F.2d 1575, 14 USPQ2d 1390, 1393 (Fed. Cir. 1990) (to overcome prima facie
showing, registrant must provide evidence that it discontinued use without an intent
not to resume). While Respondent indicates that he intends to use the mark in
commerce pending the outcome of this proceeding,18 Respondent has provided no
documentary evidence of his plans to use the mark in commerce and has provided no
evidence to support his statement that he has used the mark on packaging and
brochures for meal tastings. Thus, Respondent has failed to rebut Petitioner’s prima
facie showing that he has abandoned the registered mark. See Venture Out Props.
LLC v. Wynn Resort Holdings LLC, 81 USPQ2d 1887, 1890 (TTAB 2007); see also
Fed. R. Civ. P. 56(c)(1). (“The nonmoving party may not rest on the mere allegations
of its pleadings and assertions of counsel, but must designate specific portions of the

18 We note that the Board’s authority is limited to determining the right to registration. See
TBMP § 102.01 (June 2017). The Board is not authorized to determine the right to use a
mark. FirstHealth of the Carolinas Inc. v. CareFirst of Md. Inc., 479 F.3d 825, 81 USPQ2d
1919, 1921 (Fed. Cir. 2007).
Cancellation No. 92064087

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record or produce additional evidence showing the existence of a genuine issue of
material fact for trial.”).
In view of the foregoing, we find that, based on the record herein, Petitioner has
met its burden of demonstrating that no genuine dispute of material fact exists
regarding whether Respondent has abandoned the involved mark.
Accordingly, Petitioner’s motion for summary judgment on the asserted
abandonment claim is GRANTED, summary judgment is entered on the issue of
abandonment and Registration No. 4661839 will be cancelled in due course.
In view of the foregoing, the two cancellation proceedings are no longer
consolidated, proceedings in Cancellation No. 92064098 will resume on a separate
schedule and the Board will issue an order setting the remaining dates in the
proceeding.