Republic Tobacco, L.P.v.Mark R. Newman

Trademark Trial and Appeal Board

Apr 12, 2013

No. 92049348 (T.T.A.B. Apr. 12, 2013)

With ref

Mailed: 4/12/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Republic Tobacco, L.P.
v.
Mark R. Newman
_____

Cancellation No. 92049348
_____

Anthony J. McShane and Thomas E. Williams of Neal, Berber &
Eisenberg for Republic Tobacco, L.P.

Mark R. Newman, pro se.
______

Before Quinn, Grendel and Holtzman,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Mark R. Newman (“respondent”) owns Registration No.
2114226, issued November 18, 1997, of the mark EASY SLIDER (in
standard characters) for “smoker’s articles, namely, bowls for
water smoking pipes” in International Class 34.
Republic Tobacco, L.P. (“petitioner”) filed a petition to
cancel the registration on the ground of abandonment due to
nonuse with intent not to resume use.
Respondent, in his answer, denied the salient allegations
of the petition to cancel.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Can. No. 92049348

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The record comprises the pleadings; the file of the
involved registration; and the following evidence, all
introduced by way of petitioner’s notice of reliance: official
records, excerpts of Internet websites, a discovery deposition
of respondent, respondent’s responses to certain of petitioner’s
discovery requests, and printed publications. Respondent
neither took testimony nor introduced any other evidence. So as
to be clear, none of the evidence introduced in connection with
the parties’ motions for summary judgment in this case is of
record for purposes of consideration at final hearing, unless
the evidence subsequently was made of record during the trial
phase of this proceeding.1 See, e.g., Saul Zaentz Co. v. Bumb,
95 USPQ2d 1723, 1725 n.7 (TTAB 2010). Both parties filed
briefs. With respect to the briefs, we should point out that
respondent’s brief includes certain facts that are not in the
record; also, there are documents attached to the brief that
were not made of record at trial (regarding a purported sale
under the mark for $25 in January 2012). Suffice it to say, we
have made our decision based on the trial evidence of record,
and not on unsupported factual allegations made in a brief or on

1 See the Board’s orders dated March 23, 2010 (n.4), and September 30,
2011 (n.5).
Can. No. 92049348

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documents not properly of record.2 See TBMP §§ 704.05(b) and
704.06(b) (2012).
At the outset we note respondent’s remarks regarding his
decision to proceed pro se in view of his inability to afford an
attorney, and his allegation that petitioner is “acting like a
schoolyard bully,” and “apparently has a business model that
says squash the little guy like a bug just because you can.”
(Brief, pp. 5-6). Although we appreciate the expense of
litigation, respondent’s remarks regarding his outstanding legal
bills and that this litigation “will likely bankrupt me” are
irrelevant to the merits. Just as irrelevant are respondent’s
views of petitioner’s failure to purchase respondent’s mark from
him. (Brief, pp. 2 and 5).
Petitioner has established its standing to bring this
cancellation proceeding against the involved registration. In
particular, petitioner’s application Serial No. 77255565 to
register the mark EASY SLIDE for “injector machines for filling
cigarette tubes for personal use” was refused registration under
Section 2(d) on the basis of respondent’s registration sought to
be cancelled in this proceeding. (Notice of Reliance, Ex. A).
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d

2 Even if considered, the documents attached to the brief do not compel
a different result in this case as argued by petitioner in its reply
brief.
Can. No. 92049348

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1023 (Fed. Cir. 1999); and Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Examination of petitioner’s application was suspended pending a
final determination in this cancellation proceeding.
With respect to the pleaded ground for cancellation, a mark
is considered to be abandoned as a result of nonuse under
Section 1127 of the Trademark Act, 15 U.S.C. § 1127:
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.

For a mark to be “used” on goods, the goods must be “sold or
transported in commerce.” Id. The term “commerce” is defined
as “all commerce which may lawfully be regulated by Congress.”
Id. Mere use in intrastate commerce does not constitute use in
commerce regulated by Congress (that is, the type of use
essential to not only obtaining a federal registration of a
mark, but also to maintaining it under Sections 8 and 9 of the
Trademark Act). See In re Mother Tucker’s Food Experience
(Canada) Inc., 925 F.2d 1402, 17 USPQ2d 1795 (Fed. Cir. 1991);
and In re Silenus Wines, Inc., 557 F.2d 806, 194 USPQ 261 (CCPA
1977). See also Larry Harmon Pictures Corp. v. The Williams
Restaurant Corp., 929 F.2d 662, 18 USPQ2d 1292 (Fed. Cir. 1991).
Can. No. 92049348

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Introduction of evidence of nonuse of the mark in commerce
for three consecutive years constitutes a prima facie showing of
abandonment, whereby intent not to resume use is inferred, and
shifts the burden to the party contesting the abandonment to
show either evidence sufficient to disprove the underlying facts
showing three years nonuse, or evidence of an intent to resume
use to overcome the presumed fact of no intent to resume use.
Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir.
1998); Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d
1575, 14 USPQ2d 1390 (Fed. Cir. 1990); Cerveceria
Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13
USPQ2d 1307 (Fed. Cir. 1989); and Stromgren Supports, Inc. v.
Bike Athletic Company, 43 USPQ2d 1100 (TTAB 1997). The ultimate
burden of persuasion remains with the party claiming abandonment
to prove abandonment by a preponderance of the evidence. On-
line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56
USPQ2d 1471, 1476 (Fed. Cir. 2000).
Respondent coined his mark in “a moment of inspiration,”
and began use in August 1996. (Newman dep., p. 12). ADS
Machining produced the bowls for water smoking pipes; “I believe
SMF (another machine shop here in town) may have also made some
but I don’t recall.” According to respondent, SMF is no longer
in existence. Although respondent owned the mark as an
individual, respondent marketed and sold the goods through his
Can. No. 92049348

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companies, namely MRN Enterprises, LLC and MRN Distributing.
(Id., pp. 16-17). Respondent then began to distribute his
product through Tri. Corp., a wholesale entity that serviced the
retail industry associated with “contemporary smoke shops.”
(Id., p. 28). Respondent also identified Gaiter Lou, Fish Head,
Mac Attack, Franticus, Adams Apple and DBL as distributors for
respondent’s goods (“I don’t recall specifically all the
companies that I used, wherein I sold them to them at discount
and they, in turn, marketed them to retailers.”) (Id., p. 16).
In later years, David Smith became respondent’s “exclusive”
distributor “with exceptions,” a “semi-loose
relationship...based on friendship.” (Id., pp. 49; 54-55).
There are no written agreements or any other documents regarding
respondent’s business relationships. (Id., pp. 28-29; Response
to Discovery Request No. 17). Respondent testified that the
mark EASY SLIDER was in continuous use through these
distributors, as well as through his two smoke shops, from
inception to 2003. According to respondent, the goods are now
sold in two “smoke shops,” owned and operated by respondent’s
company MRN Ltd., in Tucson, Arizona (respondent does not
operate any other shop either in Arizona or in any other state):
Head East and Head West which “sell products associated with
tobacco and smoking.” (Id., pp. 25 and 29). The shops “market
strongly to the University of Arizona.” (Id., p. 48).
Can. No. 92049348

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Applicant’s product originally sold for $6, and now sells for
$4.50, or $50 for a dozen bowls (Id., p. 35). The goods under
the involved mark “are sold to ‘walk in’ customers via sales
staff at each of the retail establishments owned by [respondent]
in Arizona. The products are also sold by third-party
distributors, by agreement with non-affiliated third-party
sellers, and via email.” (Response to Discovery Request Nos. 14
and 20).
Respondent produced all of his invoices (which are in
consecutive order), which he asserts include all sales of his
goods under the mark EASY SLIDER; no other documents were
produced to supplement his discovery production. (Newman dep.,
pp. 40-41; 44). As set forth by respondent’s summary (Notice of
Reliance, Ex. D36), the invoices show the following sales:
Year Units Dollars
2003 312 1,854
2004 239 1,380
2005 118 714
2006 245 1,392
2007 220 1,320

Based on the invoices of record, the last interstate
shipment of goods under the mark EASY SLIDER occurred on July 1,
2007; the shipment was made to David Smith in Bellingham,
Can. No. 92049348

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Washington. (Newman dep., Ex. C916).3 In identifying some of
his customers, including three out-of-state customers,
respondent indicated that the most recent interstate sale
occurred on April 7, 2005 to one of the named customers.
(Response to Discovery Request No. 2).
The record also includes several invoices showing
intrastate shipments of goods under the mark EASY SLIDER during
the period July 2, 2007 to June 1, 2010; the shipments range
from a low of 6 units ($27) to a high of 48 units ($288).
(Newman dep., Ex. 4). These shipments were made to entities
identified as either Franticus or Glass Fiasco (located in
Tucson, Arizona), apparently both owned by David Smith,
respondent’s distributor. According to respondent, Franticus
and Glass Fiasco are “interchangeable.” (Newman dep., p. 46).
Respondent also conducts his business on the internet
through his website, Graffix.com. Petitioner did searches of
respondent’s website Graffix.com which is, according to the
website, “your online site for all of your premium cigarettes,
roll your own tobacco and accessories, the world’s finest pipe
tobaccos, as well as incense and a few other specialty products
that we hope you will find useful.” Petitioner made the
searches at various times in 2009, 2010 and 2012. The searches

3 Around this time Mr. Smith relocated his business activities to
Arizona and, indeed, the remaining invoices covering goods shipped to
Mr. Newman show his address in Tucson. (Newman dep., pp. 50-51).
Can. No. 92049348

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for “easy slider” revealed zero results on respondent’s website.
(Notice of Reliance, Ex. B).
Respondent advertised his goods through distribution of
flyers and through a third-party catalog of Franticus;
respondent also identified a catalog of Glass Fiasco, but
indicated that it was last distributed 3-5 years ago. (Newman
dep., p. 64). The record is silent as to whether any of the
third-party catalogs were distributed beyond the state of
Arizona. Respondent has no advertising budget or expenditures
that have been attributable to the involved mark. (Response to
Discovery Request No. 11). Although respondent testified that
he attended trade shows to promote his goods, he did not
identify the names of any specific ones when requested to do so.
(Newman dep., p. 67).
We must base our decision on the trial record before us
and, as noted earlier, the record shows that respondent’s last
use in interstate commerce occurred on July 1, 2007.
Respondent’s nonuse in interstate commerce of the registered
mark for the relevant goods for at least three years constitutes
a prima facie showing of abandonment. Cf. 7-11 Sales, Inc. v.
Perma, S.A., 225 USPQ 170 (TTAB 1984) (petitioner that showed
only that respondent made no use of registered mark in
interstate commerce for two years (now three years under the
statute), but that made no showing with respect to commerce
Can. No. 92049348

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between U.S. and foreign countries, did not establish even a
prima facie case of abandonment).4 We readily acknowledge that
the testimony and evidence show use of the mark through June
2010; the problem is that this record establishes only that the
mark was used in intrastate commerce, that is, commerce not
regulated by Congress. Further, there is nothing to suggest
that this use was in interstate commerce or otherwise had an
effect on interstate commerce. Although there are situations in
which intrastate sales may be found to have such an effect on
commerce that may be controlled by Congress that the activities
constitute use in commerce, see In re Silenus Wines, Inc.,
supra, there must be a showing that the activities have such an
effect. The record is devoid of any testimony or evidence that
shows same.
The burden thus shifts to respondent to show evidence of an
intent to resume use to disprove the presumed fact of no intent
to resume use. As noted earlier, respondent did not take
testimony or offer any other evidence at trial. We find that
the circumstances surrounding respondent’s nonuse warrant a
finding that the nonuse was accompanied by the absence of any
intent to resume use of the mark in connection with the listed
goods.

4 There is not even a hint in the record that respondent’s goods have
been used at any time in commerce between the United States and a
foreign country.
Can. No. 92049348

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According to respondent: “I own the EASY SLIDER trademark,
I am using it in interstate commerce, I have not abandoned its
use at any time, and I have no intention of abandoning its use.”
(Brief, p. 4). As is typically the case when abandonment is
involved, respondent claims that it has no intent to abandon.
This proclamation is “awarded little, if any, weight.” Rivard
v. Linville, 45 USPQ2d at 1376. As stated by the Federal
Circuit, “]i]n every contested abandonment case, the respondent
denies an intention to abandon its mark; otherwise there would
be no contest. Imperial Tobacco Ltd. v. Philip Morris Inc., 14
USPQ2d at 1394. See also Cerveceria Modelo S.A. de C.V. v. R.B.
Marco & Sons Inc., 55 USPQ2d 1298, 1303 (TTAB 2000)
(respondent’s “self-serving testimony that it never intended to
abandon its mark is unsupported by the evidentiary record, and
is clearly insufficient to rebut the presumption of
abandonment”); and Parfums Nautee Ltd. v. American International
Industries, 22 USPQ2d 1306, 1309 (TTAB 1992) (respondent’s
statement of no intent to abandon “is little more than a denial
in a pleading”; more is required than a conclusory declaration).
Thus, rather than make a vague, unsubstantiated claim,
respondent must submit evidence “with respect to what activities
it engaged in during the nonuse period or what outside events
occurred from which an intent to resume use during the nonuse
period may reasonably be inferred.” Imperial Tobacco Ltd. v.
Can. No. 92049348

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Philip Morris Inc., 14 USPQ2d at 1394. Respondent only offers
that he has “no plans to deviate from his current marketing and
sales of goods under the EASY SLIDER mark.” (Notice of
Reliance, Ex. D13, Discovery Response No. 12). Again, the
evidence of use from July 2007 through the close of trial in May
2012 shows only intrastate use.
Based on the trial record before us, we conclude that
respondent has abandoned the registered mark due to nonuse in
commerce for at least three years, with intent not to such
resume use.
Decision: The petition for cancellation is granted.
Registration No. 2114226 will be cancelled in due course.