Paul G. Connorsv.Perfect Partners, Inc. and Vodka Perfect, Inc.

Trademark Trial and Appeal Board

Jun 1, 2007

No. 92043707 (T.T.A.B. Jun. 1, 2007)

Mailed:
June 1, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Paul G. Connors
v.
Perfect Partners, Inc. and Vodka Perfect, Inc., joined as
party defendants1
_____

Cancellation No. 92043707

_____

Carl J. Spagnuolo of McHale & Slavin, P.A. for Paul G.
Connors.

Jean S. Perwin for Perfect Partners, Inc. and Vodka Perfect,
Inc.
______

Before Quinn, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Paul G. Connors has petitioned to cancel the following
registration on the Supplemental Register owned by Vodka
Perfect, Inc., assignee of Perfect Partners, Inc., for the
mark VODKA PERFECT (in typed form, Vodka disclaimed) for

1 Joined by Board order on December 22, 2005.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92043707
2
“vodka” in International Class 33.2 As grounds for
cancellation petitioner asserts the claim of nonuse.3 More
specifically, petitioner alleges that respondent “never had
such goods” and that respondent is not using its mark in
interstate commerce. Petition to Cancel ¶8.
Respondent, in its answer, admits to periods of nonuse
between 2002 and 2003 and denies the remaining salient
allegations in the petition for cancellation.
The record includes the pleadings; the file of the
registration sought to be cancelled; respondent’s responses
to petitioner’s first requests for admissions and first,
second and third set of interrogatories, respondent’s
pending application for registration of the mark VODKA
PERFECT and the discovery deposition of Russ Kramer with
accompanying exhibits made of record by petitioner’s notice
of reliance; and respondent’s pending application for
registration of the mark PEUREUX PERFECT 1864, the discovery

2 Registration No. 2468574, issued July 10, 2001. As noted in
the Board’s December 22, 2005 order, although a data processing
error at the USPTO resulted in issuance of Registration No.
2468574 with the goods listed as “mark sought to be registered is
in lawful use in interstate commerce in connection with the
services,” the goods in the underlying application are listed as
vodka.

3 Although it was not clear in the petition if petitioner was
also asserting a claim of abandonment, petitioner clarified in
its brief that the only claim in issue is nonuse. Reply Br. p.
13.
Cancellation No. 92043707
3
deposition of Paul G. Connors, and a settlement agreement
made of record by respondent’s notice of reliance.4
Standing
It is clear from the record that petitioner is engaged
in efforts to import vodka for sale in the United States
under the mark PERFECT VODKA and respondent has admitted
that petitioner has filed an application for the mark
PERFECT VODKA for alcoholic beverages. Thus, the record
sufficiently shows that petitioner has a real interest in
canceling respondent’s registration of the mark. See
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir.
1999).
NONUSE
A “mere token sale or shipment of the goods does not
constitute ‘use’ under the Trademark Act.” Westrex Corp. v.
New Sensor Corp., ___ USPQ2d ___ , Opp. Nos. 91168152 and
91170940 (TTAB May 11, 2007). See also Paramount Pictures
Corp. v. White, 31 USPQ2d 1768, 1774 (TTAB 1994). We look

4 Included in respondent’s notice of reliance under Trademark
Rule 2.122(e) were various invoices objected to by petitioner in
its brief as not qualifying for inclusion into evidence by notice
of reliance. Petitioner’s objections are well taken, these items
do not fall into either the category of printed publications or
official records under Trademark Rule 2.122(e) and have not been
considered. Colt Industries Operating Corp. v. Olivetti
Controllo Numerico S.p.A., 221 USPQ 73, 74 n. 2 (TTAB 1983). We
note that the settlement agreement submitted therewith also is
not proper matter to be made of record by notice of reliance.
Trademark Rule 2.122(e). However, inasmuch as petitioner has not
objected to the settlement agreement, we have considered it for
whatever probative value it may have. See TBMP §704.08 (2d ed.
rev. March 2004) and cases cited therein.
Cancellation No. 92043707
4
to the circumstances surrounding the alleged first use in
commerce and subsequent sales or activities in determining
whether or not respondent’s use was sufficient to support a
registration.
The underlying application of the subject registration
was originally filed based on an intention to use the mark
in commerce under Section 1(b) of the Trademark Act. On
November 17, 2000, respondent filed an Amendment to Allege
Use claiming January 29, 2000 as the date of first use.
Based on this record, it is established that the Millennium
Spirits Company, respondent’s assignor, on January 29, 2000,
prior to the November 7, 2000 filing date of the Amendment
to Allege Use, sold a single bottle of vodka through an
importer to a company named Canal Discount Liquors. The
record is unclear as to the nature of that sale inasmuch as
it appears that labels for alcohol must receive approval
from the Department of the Treasury Bureau of Alcohol,
Tobacco and Firearms and the application for certificate of
label approval that is of record was filed after the “sale”
on February 4, 2000, and was apparently for a slightly
different label than the one involved in the January 29,
2000 sale. There is nothing in the record regarding
approval of the label used in the first sale. Kramer Dep.
pp. 89-93. In addition, the record is not clear as to which
mark was used in connection with that sale: MILLENIUM VODKA
Cancellation No. 92043707
5
PERFECT, VODKA PERFECT, or some combination thereof, and if
VODKA PERFECT appeared with the word MILLENIUM, how it
appeared, e.g., was the word MILLENIUM set apart or in
smaller letters. Although the specimen of use submitted
with the Amendment to Allege Use clearly shows the mark
VODKA PERFECT on the front label the record is unclear as to
whether that was the label on the bottle that was sold on
January 29, 2000. Kramer Dep. pp. 91-93.
The settlement agreement assigning rights in the VODKA
PERFECT mark from the Millennium Spirits Company to
respondent was executed on March 14, 2000. There have been
no further sales of vodka under the mark VODKA PERFECT until
2005. The record reveals, in addition to the sale of the
single bottle of vodka, the following activities respondent
has put forth as use to support its registration:
1) respondent entered into an agreement with a
distillery on July 3, 2000;
2) respondent entered into a marketing agreement
with an importer on February 23, 2001;
3) respondent entered into a supplier agreement
with a distiller on July 3, 2002;
4) respondent entered into an agreement with
another distributor on March 11, 2004;
5) respondent entered into an agreement with
another company on September 7, 2004; and
6) respondent has used the mark in presentations
directed to distributors and potential investors,
developed marketing materials and created a
website in 2004.

Kramer Dep. Exh. C.

Even assuming that respondent enjoys any benefits the
January 29, 2000 sale may confer, that sale, of a single
Cancellation No. 92043707
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bottle of vodka, clearly is not sufficient technical
trademark use to support a registration. Further, the
subsequent actions do not serve to bolster that sale in such
a manner to constitute use to support registration.
The list of sporadic activities undertaken by
respondent after the January 29, 2000 “sale” are more in the
nature of evidence to support analogous use in a priority
battle, which is not relevant here inasmuch as no such claim
is at issue. We further note that we render no opinion as
to whether the proffered evidence would be adequate to
support such a claim. While use analogous to trademark use
is sufficient use to establish priority rights against
subsequent users of a mark, it is not sufficient to
establish use as a basis for an application to register.
Shalom Children’s Wear, Inc. v. In-Wear A/S, 26 USPQ2d 1516,
1519 (TTAB 1993). Thus, respondent’s reliance on the cases
that discuss analogous trademark use is misplaced. Those
cases involved priority disputes in which analogous
trademark use is relevant. For example, Miller Brewing
Company v. Oland’s Breweries, 548 F.2d 349, 192 USPQ 266
(CCPA 1976) involved a priority dispute and a question of
abandonment, neither of which is present in this case. In
Marvel Comics Ltd. v. Defiant, 837 F.Supp. 546, 28 USPQ2d
1794 (SDNY 1993), the court noted that pre-sale use can
provide a basis for priority and the “procedure for
Cancellation No. 92043707
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submitting specimens in support of applications for
trademark registration, has little to do with commercial use
which is determined as a matter separate from and
independent of trademark registration with the Patent and
Trademark Office, and is based entirely on association of
the mark in the public mind with a particular product,
regardless of how that association is achieved.” Marvel,
supra, 28 USPQ2d at 1796.
Therefore, to the extent respondent’s activities would
serve to explain respondent’s interruption of use to rebut
an allegation of abandonment, that issue is not before us,
and to the extent they are presented as evidence of ongoing
use they are not sufficient because it is not technical
trademark use. In short, the technical trademark use needed
to support registration of a mark based on use did not occur
prior to the filing of the Amendment to Allege Use.
Respondent’s “use” simply does not rise to the level of a
“bona fide use of a mark in the ordinary course of trade.”
15 U.S.C. 1051(a). The sale of a single bottle to one
retailer certainly alone does not constitute “use,” and
respondent’s subsequent sporadic activities and eventual
sales more than five years later do not imbue this “sale”
with the technical trademark use necessary to support
registration.
Cancellation No. 92043707
8
In view of our determination that only token use was
made prior to the November 7, 2000 filing of the Amendment
to Allege Use, petitioner has proven the claim of nonuse.
Decision: The petition to cancel Registration No.
2468574 based on the claim of nonuse is sustained.