Loring Coat Co.v.Pedro Estevan Poveda and Emilio Estevan Poveda

Trademark Trial and Appeal Board

May 26, 2004

No. 92029831 (T.T.A.B. May. 26, 2004)

Mailed: May 26, 2004
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Loring Coat Co.
v.
Estevan Poveda, Pedro and
Estevan Poveda, Emillio
_____
Cancellation No. 92029831
_____
Myron Amer of Myron Amer, P.C. for Loring Coat Co.
Mark I. Peroff, Manjari M. Datta and Darren W. Saunders of
Trademark & Patent Counselors of America, P.C. for Pedro Estevan
Poveda and Emillio Estevan Poveda.
_____
Before Simms, Hohein and Drost, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Loring Coat Co. has petitioned to cancel the
registration, as originally issued to Pedro Estevan Poveda and
Emillio Estevan Poveda, of the mark "SKIPPER" for "clothing for
men, women, and children, namely, shirts, trousers, jackets,
sweaters, shorts, belts, suits, vests, coats, skirts, blouses,
scarves, ties, socks, track suits, jerseys, hats, and footwear."1
As grounds for cancellation, petitioner alleges that it provides
1 Reg. No. 2,181,777, issued on August 18, 1998 from an application
filed on September 13, 1996, based on ownership of Spanish Reg. No.
9342257 dated March 20, 1981.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Cancellation No. 92029831
2
and sells men's overcoats under the mark "P.J. SKIPPER"; that it
has filed application Ser. No. 75519006 to register such mark for
such goods; that the application to register its mark for men's
overcoats "has been refused as likely to cause confusion, or to
cause mistake, or to deceive, in view of registrant's [sic] ...
registration No. 2,181,777"; that upon information and belief,
respondents have "abandoned" their registered mark by
"discontinuing use of said mark with no intent to resume ... use
[thereof]"; and that petitioner "is likely to be damaged by
continuance on the register of said registration No. 2,181,777 as
petitioner presently uses the mark P.J. SKIPPER for 'men's
overcoats' and petitioner's ability to obtain its own
registration of this mark is being impaired and the continuance
of petitioner's legal use of said mark will be damaged by the
continued registration of said abandoned mark of registrant[s]."
Respondents, in their answer to the petition to cancel,
have basically denied the salient allegations thereof.
Respondents have also affirmatively alleged therein that they
"have not abandoned the trademark SKIPPER in the USA" and that:
Petitioner's ... Application Serial No.
75/519,006 has been abandoned for failure to
file a response to an office action issued on
June 29, 1999 as is reported in the TARR and
TESS records displayed in the U.S. Patent and
Trademark website (see Exhibit "A"). The
response to said office action was due on
December 29, 1999. TARR and TESS does [sic]
not reflect that the Petitioner has made any
effort to revive said abandoned application.
Petitioner had based its Petition for
Cancellation on this abandoned trademark
Cancellation No. 92029831
3
application. Accordingly, Petitioner has no
standing to bring the subject action.
During the course of this proceeding, the parties filed
a stipulated motion for withdrawal of the petition to cancel,
contingent upon entry of a consented amendment to respondents'
registration to limit the goods set forth therein to "footwear."
Such motion, in particular, states that:
Petitioner and Joint Registrants have
entered into an Agreement which provides,
inter alia, that pending ... amendment to the
registration for SKIPPER, Petitioner will
withdraw its petition for cancellation with
prejudice. Therefore, it is ... requested
that the Board suspend this proceeding until
it has had an opportunity to consider the
above request to amend the identification of
goods.
The Board, in view thereof, subsequently issued an order which,
among other things, accepted the consented amendment to the
involved registration and allowed petitioner time to file a
withdrawal of the petition to cancel, failing which this
proceeding would go forward on the registration as amended.
While the involved registration has, in due course, been amended
so as to limit the goods set forth therein to "footwear" as
agreed to by the parties, no withdrawal or other response to the
Board's order was received from petitioner. Accordingly, and
since trial and initial briefing had been concluded, the Board
issued an order resuming proceedings and resetting due dates for
filing respondents' brief on the case and petitioner's reply
brief.
The record consists of the pleadings; the file of the
involved registration; and the notice of reliance timely filed by
Cancellation No. 92029831
4
petitioner during its initial testimony period on (i) a copy of
the filing receipt issued by the U.S. Patent & Trademark Office
on July 15, 1998 in connection with an intent-to-use application,
Ser. No. 75519006, filed by "LORING COAT CO., INC." for the mark
"P.J.SKIPPER" for (as listed on the receipt) "OUTERWEAR, NAMELY
LADIES', MEN'S AND CHILDRENS"2 and (ii) respondents' answers to
petitioner's Requests for Admissions Nos. 1 through 4.3 Neither
party, however, took testimony or submitted any other evidence.4
Only petitioner filed a brief, and neither party requested an
oral hearing.
Section 45 of the Trademark Act, 15 U.S.C. §1127,
defines abandonment of a mark in relevant part as follows:
Abandonment of mark. A mark shall be
deemed to be "abandoned" when ... 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 three
consecutive years shall be prima facie
evidence of abandonment. "Use" of a
2 Petitioner asserts, in its notice of reliance, that "[t]he foregoing
exhibit is relevant to establishing use, dating from at least July 15,
1998, by petitioner of the mark P.J. SKIPPER for the goods recited
therein."
3 Petitioner contends, in its notice of reliance, that "[t]he foregoing
exhibit is relevant to establishing that registrants did not export
for resale in the United States any SKIPPER-identified 'clothing for
men, women and children' starting in the year 1998 and continuous to
January 1, 2001.
4 It is pointed out that respondents' Exhibit "A," which is attached to
the answer, forms no part of the record herein inasmuch as Trademark
Rule 2.122(c) provides, in relevant part, that "an exhibit attached to
a pleading is not evidence on behalf of the party to whose pleading
the exhibit is attached unless identified and introduced in evidence
as an exhibit during the period for the taking of testimony."
Respondents, as noted above, did not take testimony or submit any
other evidence at trial.
Cancellation No. 92029831
5
mark means the bona fide use of that
mark made in the ordinary course of
trade, and not made merely to reserve a
right in the mark.
However, as indicated by our principal reviewing court in
Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14
USPQ2d 1390, 1392 (Fed. Cir. 1990), in determining whether there
has been an abandonment of mark where the registration thereof
was obtained on the basis of a foreign registration and no use
has been made of the mark in the United States from the date of
registration, the earliest date from which the period necessary
to establish a prima facie case of abandonment can be measured is
the date of issuance of the registration sought to be cancelled.
Respondents' answers to petitioner's Requests for
Admission Nos. 1 through 4 respectively state that, for the years
1998, 1999 and 2000 and for the period from January 1, 2001 to
June 14, 2001,5 "[r]egistrants admit that they did not export for
resale in the United States ... any SKIPPER-identified 'clothing
for men, women and children" during the time periods in question.
Respondents further state, in each instance, that "[r]espondents
deny that they have abandoned their trademark and that their
response to this admission is a fortiori evidence of
abandonment." In view thereof, and since the involved
registration shows that respondents are Spanish citizens whose
addresses are in Spain, petitioner argues in its brief that:
5 In particular, petitioner's Request for Admission No. 4 states that
"Registrant did not export for resale in the United States in the time
interval from January 1, 2001 to date any SKIPPER-identified 'clothing
for men, women and children.'" Respondents answered such request, as
well as petitioner's other requests for admission, on June 14, 2001.
Cancellation No. 92029831
6
Petitioner's position is that the mere
assertion of denial, unsubstantiated by
testimony proffered under oath, does not
refute petitioner's contention that
abandonment has been proved. Registrants are
located in Spain and logic dictates that to
engage in trade using the mark SKIPPER there
must be SKIPPER-identified goods exported for
resale into the United States. It is
admitted that no such business activity has
occurred and, most significant, it has been
admitted not to have occurred for more than
three years.
The time interval of more than three
years is critical because 15 U.S.C. Section
1127 provides that "Nonuse for 3 consecutive
years shall be prima facie evidence of
abandonment". Thus, there is a presumption
of abandonment which registrants have not
rebutted.
We disagree with petitioner that the evidence of record
introduced at trial by its notice of reliance demonstrates that
respondents did not export for resale in the United States any
clothing for men, women and children which was identified by the
mark SKIPPER for a period of three years or more. Specifically,
respondents' registration, as indicated previously, issued on
August 18, 1998 based upon ownership of a Spanish registration
and there is no proof that respondents have ever commenced use of
such mark in the United States. Thus, as measured from the
August 18, 1998 date of issuance of the involved registration,
respondents arguably have admitted nonuse in the United States of
the mark "SKIPPER" only for a period extending until June 14,
2001, which is just over two months short of a three-year period
of nonuse necessary to demonstrate a prima facie case of
abandonment of the mark for the goods set forth in such
Cancellation No. 92029831
7
registration. Petitioner, therefore, has failed to prove
abandonment.
We need not decide, in view thereof, whether petitioner
has also proven the remaining necessary element of its case-in-
chief, namely, its standing to bring the petition to cancel.
Given the failure by petitioner, as the party who bears the
burden of proof in this proceeding, to present evidence which
supports the allegation, which respondents have denied, of
abandonment, it is adjudged that the petition to cancel must fail
in any event.
Decision: The petition to cancel is denied.