Rescue Response Group Inc.v.American Residential Services, L.L.C.

Trademark Trial and Appeal Board

Dec 22, 2015

No. 92060597 (T.T.A.B. Dec. 22, 2015)

Mailed: December 22, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Rescue Response Group Inc.

v.

American Residential Services, L.L.C.
_____

Cancellation No. 92060597
_____

Wendy Peterson, Not Just Patents LLC,
for Rescue Response Group Inc.

P. Jay Hines and Leo V. Gureff, Muncy Geissler Olds and Lowe P.C.,
for American Residential Services, L.L.C.
_____

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

Opinion by Ritchie, Administrative Trademark Judge:

This is a cancellation proceeding in which Rescue Response Group Inc.
(Petitioner) seeks to cancel Registration No. 3716081, owned by American
Residential Services, L.L.C. (Respondent), for the mark shown below, for
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92060597
2
“plumbing services, namely, plumbing repair, drain cleaning and sewer
cleaning,” in International Class 371:

The grounds for cancellation asserted in the amended petition are
abandonment and fraud.2 Petitioner has alleged that it is “a competitor of
Registrant and provides plumbing and drain cleaning services and has been
opposed by Registrant in the Opposition Proceeding 91199269.” 8 TTABVUE
2. Petitioner further alleged that “Respondent has not used this mark in
commerce since approximately 2008” and the “mark has been prima facie
abandoned.” Furthermore, Petitioner alleges that there is “an intent not to
resume use.” Id. at 3-4. Petitioner asserts a claim of fraud based on
Respondent’s Section 8 filing, alleging that Respondent swore that the mark
“has been continuously used in commerce for five (5) consecutive years after
the date of registration” and is “still in use” when in fact Respondent knew
that such statements were “false and material representations of fact.” Id. at
5.

1 Registered on the Principal Register on November 24, 2009, with a Statement of
Use filed October 7, 2009, alleging dates of first use and first use in commerce on
February 4, 2008. Sections 8 and 15 affidavits accepted and acknowledged.
2 Petitioner also alleged nonuse “as of the time of filing,” but only the grounds of
abandonment and fraud were pursued on brief. Accordingly, we consider any other
claims to be waived.
Cancellation No. 92060597
3
In its answer, Respondent denied the salient allegations of the first
amended petition, except that Respondent admitted that Petitioner is a
competitor of Respondent and that the parties are involved in an opposition
proceeding before the Board. As noted below, the parties agreed to proceed
via the Board’s Accelerated Case Resolution (“ACR”) procedure to streamline
their pre-trial and trial procedures and reduce the pendency of this
proceeding.
Both parties filed briefs, and Petitioner filed a reply brief.
The Record and ACR Procedural Background
At their discovery conference, the parties agreed to proceed via ACR, as
outlined in the June 25, 2015 Board order memorializing the conference and
the agreement of the parties.3 11 TTABVUE 1-3. The agreement included the
following fairly standard ACR terms:
1. The parties agreed “to have the Board reach conclusions as to any
issues of material fact in dispute”;
2. The parties agreed “to prosecute this case using the summary
judgment model of ACR”;
3. The parties agreed “there would be no period of discovery”; and
4. The parties agreed their “testimony will be presented by affidavit or
declaration (and, of course, any exhibits referenced by the affiants or
declarants).”

3 The Board attorney attended the discovery conference at the invitation of
Petitioner’s attorney. See 10 TTABVUE 2.
Cancellation No. 92060597
4
Id. at 2.
Both parties submitted exhibits with their ACR briefs, although only
Respondent submitted a declaration in connection with its exhibits. Neither
party objected to the other’s submissions. Accordingly, pursuant to the
parties’ agreement, the record consists of the evidence submitted by each
party with its briefs. See Fiserv, Inc. v. Electronic Transaction Systems Corp.,
113 USPQ2d 1913 (TTAB 2015) (Case decided by ACR based on agreement of
the parties early in proceeding). By operation of law, the record also contains
the pleadings and the file of the involved registration. Trademark Rule 2.122
(b); 37 CFR § 2.122 (b).
Standing
Standing is a threshold issue that must be proven in every inter partes
case. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982) (“The facts regarding standing . . . must be
affirmatively proved. Accordingly, [plaintiff] is not entitled to standing solely
because of the allegations in its [pleading].”). To establish standing in an
opposition or cancellation, plaintiff must show both “a real interest in the
proceedings as well as a ‘reasonable’ basis for his belief of damage.” See
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).
Respondent admitted the assertion by Petitioner in the amended petition
that Petitioner “is a competitor of Registrant and provides plumbing and
drain cleaning services and has been opposed by Registrant in the Opposition
Cancellation No. 92060597
5
Proceeding 91199269.” 8 TTABVUE 2. Petitioner has therefore established
its interest as a competitor. See Lipton Industries, Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185 (CCPA 1982); Cerveceria Modelo S.A. de C.V.
v. R.B. Marco & Sons Inc., 55 USPQ2d 1298 (TTAB 2000); and Hartwell Co.
v. Shane, 17 USPQ2d 1569 (TTAB 1990). Accordingly, we find that
Petitioner here has shown that it has a reasonable belief of damage and a
real interest in this proceeding. Therefore it is not a mere intermeddler, and
has established its standing. 15 U.S.C. §1064.
Abandonment
Section 14(3) of the Trademark Act, 15 U.S.C. §1064(3), lists, as one of the
grounds for cancellation, abandonment, and Section 45 of the Act, 15 U.S.C.
§1127, in pertinent part, defines “abandonment” of a mark as follows:
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.

There are two elements to an abandonment claim: non-use and an intent
not to resume use. A plaintiff must show both of these elements unless it can
show three years of nonuse, which prima facie establishes abandonment, in
which case the burden shifts to the defendant to show either that it has used
the mark, or that it has an intent to resume use. See Cerveceria
Cancellation No. 92060597
6
Centroamericana S.A. v. Cerveceria India Inc., 892 USPQ2d 1307, 1309 (Fed.
Cir. 1989).
Petitioner claims that Respondent is not using and has not used its
registered mark, but rather is using a variation thereof, as submitted in its
Section 8 filing on November 29, 2014:

Petitioner submitted samples of web pages from Respondent’s website
from what appear to be 2010 to the present4 (we note again that Petitioner
did not submit a declaration with its evidence) to demonstrate that
Respondent’s website only depicts the mark as submitted with its Section 8
filing rather than the mark as shown on its registration, and that this
therefore constitutes abandonment of the latter. The parties did not conduct
any discovery in this case, and Petitioner took no testimony from Respondent.
Petitioner is not able to point to any admissions by Respondent, whether
through discovery or otherwise, that would assist in making Petitioner’s
prima facie case of nonuse for at least three consecutive years. See Toufigh v.
Persona Parfum Inc., 95 USPQ2d 1872, 1875 (TTAB 2010).

4 All printouts except those from the present are from an archive source. While we
may accept these printouts, they are limited in probative value to what they “show
on their face.” Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1039 (TTAB
2010) (“We underscore that a printout from a webpage may have more limitations on
its probative value than traditional printed publications. A party may increase the
weight we will give such website evidence by submitting testimony and proof of the
Cancellation No. 92060597
7
We note that the burden does not shift to Respondent unless Petitioner
has made a prima facie case of abandonment. Id. Nevertheless, Respondent
did submit a declaration from its corporate counsel, Christopher C. Fairey,
which states that Respondent “uses the original form of the mark as well as
slight variations thereof.” 13 TTABVUE 15. The declaration includes as
Exhibit B thereto “[a] true and correct copy of [Respondent’s] postcard to
customers that has been in use since 2013, depicting the use of the mark.” Id.
Exhibit B displays a postcard to a prospective customer with Respondent’s
registered mark in the top left corner, over the return address.
Petitioner disputes the authenticity of the postcard, as well as its actual
use; however, we have no reason to doubt the uncontroverted testimony of
Mr. Fairey that the registered mark is in use, as shown on the postcard.5 In
sum, even if we were to find that Petitioner has established a prima facie
case of abandonment, and we do not, Respondent has adequately shown that
it has not abandoned use of its mark, as registered.6 Petitioner has failed to

extent to which a particular website has been viewed. Otherwise, it might not have
much probative value.”)
5 The evidence submitted by Petitioner merely indicates that Respondent may be
using other marks or variations in addition to, not instead of the registered mark.
Because we find that Respondent is using the registered mark, we need not consider
the issue of whether the mark as shown on the specimen submitted with
Respondent’s Section 8 filing is the “legal equivalent” for purposes of creating “the
same continuing commercial impression.” See Hana Financial, Inc., v Hana Bank,
574 U.S. ___ (2015), citingVan Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156,
17 USPQ2d 1866, 1868 (Fed. Cir. 1991).
6 Petitioner is mistaken in its assertion that “[a]t a bare minimum, Respondent
needed to show not just a few bare samples of advertising artwork but also use of the
mark for each of the services (Plumbing services, namely, plumbing repair, drain
cleaning and sewer cleaning) in the registration for each of the time periods in
question for the abandonment and fraud claims.” 14 TTABVUE 2.
Cancellation No. 92060597
8
establish its claim of abandonment, and the petition to cancel on this basis is
dismissed.
Fraud
The second ground for cancellation is fraud.7 Specifically, Petitioner avers
that in making its Section 8 filing, Respondent swore that the mark “has
been continuously used in commerce for five (5) consecutive years after the
date of registration” and is “still in use” when in fact Respondent knew that
such statements were “false and material representations of fact.”
The Court in In re Bose Corp., 476 F.3d 1331, 91 USPQ2d 1938, 1939
(Fed. Cir. 2009), set out the relevant standard for proving fraud:
Fraud in procuring a trademark registration or
renewal occurs when an applicant knowingly
makes false, material representations of fact in
connection with his application.” Torres v. Cantine
Torresella S.r.l., 808 F.2d 46, 48 [1 USPQ2d 1483]
(Fed. Cir. 1986). A party seeking cancellation of a
trademark registration for fraudulent procurement
bears a heavy burden of proof. W.D. Byron & Sons,
Inc. v. Stein Bros. Mfg. Co., 377 F.2d 1001, 1004
[153 USPQ 749] (CCPA 1967). Indeed, “the very
nature of the charge of fraud requires that it be
proven ‘to the hilt’ with clear and convincing
evidence. There is no room for speculation,
inference or surmise and, obviously, any doubt
must be resolved against the charging party.”
Smith Int’l, Inc. v. Olin Corp., 209 USPQ 1033,
1044 (TTAB 1981).

Respondent executed and filed its Section 8 affidavit of continuing use on

7 Although Respondent argues the Board dismissed Petitioner’s fraud claim, as
Petitioner notes in reply, the amended petition to cancel contains a fraud claim
which Respondent answered rather than filing a motion to dismiss.
Cancellation No. 92060597
9
November 29, 2014. Petitioner has not submitted any evidence that shows
Respondent’s mark was not in use on its goods on that date. Rather, as stated
above, Respondent’s corporate counsel has attested that its mark is in use,
and has submitted evidence to support that statement.
Since Petitioner has failed to show that any statements made in
Respondent’s Section 8 affidavit of continuing use were false, let alone
proving this to the hilt, Petitioner’s claim of fraud must fail.
Decision: The petition to cancel is dismissed with respect to both the
ground of abandonment and the ground of fraud.