Retrobrands USA LLCv.Lands’ End Direct Merchants, Inc.

Trademark Trial and Appeal Board

Nov 7, 2019

92068175 (T.T.A.B. Nov. 7, 2019)

WINTER
November 7, 2019

Cancellation No. 92068175

Retrobrands USA LLC

v.
Lands’ End Direct Merchants, Inc.

Before Adlin, Heasley, and English,
Administrative Trademark Judges.

By the Board:

Retrobrands USA LLC (“Petitioner”) seeks to cancel two registrations owned by
Lands’ End Direct Merchants, Inc. (“Respondent”) for the mark WILLIS & GEIGER
and design,1 shown below [hereafter the “WILLIS & GEIGER mark”], on the ground
of abandonment.

1 U.S. Reg. No. 1394814, issued May 27, 1986, for clothing, namely, shirts; and U.S. Reg. No.
1492716, for retail store services in the field of clothing and accessories. U.S. Reg. 1394814
was cancelled in part under Section 8 of the Trademark Act with respect to other goods set
forth in the original registration, namely, watches, luggage and tote bags, pants, skirts, vests,
jackets, hats, belts, rainwear, shoes, gloves, and shorts. For both registrations, Trademark
Act Section 9 renewals have been granted, and Sections 8 & 15 declarations have been
accepted and acknowledged.

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
General Email: TTABInfo@uspto.gov
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92068175

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In its answer,2 Respondent has denied the salient allegations in the petition for
cancellation.
This case now comes up for consideration of: (1) Respondent’s renewed motion
(filed June 7, 2019) for partial summary judgment with respect to Reg. No. 1394814;
and (2) Petitioner’s cross-motion for summary judgment on its claims against both
registrations. The motions are fully briefed.
We have considered the parties’ briefs and evidence, but address the record on
summary judgment only to the extent necessary to set forth our analysis and findings,
and do not repeat or address all of the parties’ arguments or evidence. Guess? IP
Holder LP v. Knowluxe LLC, 116 USPQ2d 2018, 2019 (TTAB 2015). For purposes of
this order, we presume the parties’ familiarity with the pleadings, and the arguments
and evidence submitted in connection with the subject motions.
I. Legal Standard
Summary judgment is appropriate where the movant shows the absence of any
genuine dispute as to any material fact, and that it is entitled to judgment as a matter
of law. See Fed. R. Civ. P. 56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317, 323-
324 (1986); Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560,
4 USPQ2d 1793, 1796 (Fed. Cir. 1987). A party asserting that a fact cannot be or is
genuinely disputed must support its assertion by either: (1) citing to particular parts
of materials in the record; or (2) showing that the materials cited do not establish the

2 4 TTABVUE.

Cancellation No. 92068175

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absence or presence of a genuine dispute, or that an adverse party cannot produce
admissible evidence to support the fact. Fed. R. Civ. P. 56(c). A factual dispute is
genuine if, on the evidence of record, a reasonable fact finder could resolve the matter
in favor of the non-movant. Opryland USA Inc. v. Great Am. Music Show Inc.,
970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v.
Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). In deciding a
motion for summary judgment, the Board may not resolve any factual dispute; it may
only determine whether a genuine dispute of material fact exists. See, e.g., Meyers v.
Brooks Shoe Inc., 912 F.2d 1459, 16 USPQ2d 1055, 1056 (Fed. Cir. 1990) (“If there is
a real dispute about a material fact or factual inference, summary judgment is
inappropriate; the factual dispute should be reserved for trial”). Specifically, when
deciding a motion for summary judgment, the Board may not weigh the evidence in
an area of disputed fact or make credibility determinations. See, e.g., Lemelson v.
TRW, Inc., 760 F.2d 1254, 225 USPQ 697, 701 (Fed. Cir. 1983) (court cannot engage
in fact-finding on a motion for summary judgment); Metro. Life Ins. Co. v. Bancorp
Servs. LLC, 527 F.3d 1330, 87 USPQ2d 1140, 1146 (Fed. Cir. 2008) (when resolving
conflicting accounts requires ruling on the weight and credibility of the evidence,
summary judgment not available). Further, the non-movant must be given the benefit
of all reasonable doubt as to whether a genuine dispute as to a material fact exists,
and the evidentiary record on summary judgment and all inferences to be drawn from
the undisputed facts must be viewed in the light most favorable to the non-movant.
See Opryland, 23 USPQ2d at 1472.
Cancellation No. 92068175

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Moreover, where the nonmoving party will bear the burden of proof at trial on a
dispositive issue, the moving party may discharge its burden by showing that there
is an absence of evidence to support the nonmoving party’s case. Celotex Corp. v.
Catrett, 477 U.S. at 325; Copelands’ Enters. Inc. v. CNV Inc., 945 F.2d 1563, 20
USPQ2d 1295, 1298 (Fed. Cir. 1991). In that case, the summary judgment motion
may properly be made in reliance solely on the “pleadings, depositions, answers to
interrogatories, and admissions on file” and “requires the nonmoving party to go
beyond the pleadings and by her own affidavits, or by the depositions, answers to
interrogatories, and admissions on file, designate specific facts showing that there is
a genuine issue for trial.” Celotex Corp. v. Catrett, 477 U.S. at 324.
On cross-motions for summary judgment, the moving party in each motion has
the burden as to its own motion, and the Board evaluates each motion on its own
merits and resolves all doubts and inferences against the party whose motion is being
considered. See Mingus Constructors, Inc. v. United States, 812 F.2d 1387, 1390-91
(Fed. Cir. 1987); Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1437
(TTAB 2007). The mere fact that cross-motions for summary judgment have been
filed does not necessarily mean that there is no genuine dispute of material fact or
that a trial is unnecessary. See, e.g., Drive Trademark Holdings, 83 USPQ2d at 1437;
Univ. Book Store v. Univ. of Wis. Board of Regents, 33 USPQ2d 1385, 1389 (TTAB
1994). Additionally, we note that the factual question of intent is particularly
unsuited to disposition on summary judgment. See Copelands’ Enters. 20 USPQ2d at
1299 (question of intent unsuited for summary judgment with respect to fraud claim).
Cancellation No. 92068175

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II. Respondent’s Motion for Partial Summary Judgment
Respondent seeks summary judgment that it did not abandon its mark for “shirts”
(Reg. No. 1394814). Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a mark
shall be deemed 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 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 the mark.

Thus, there are two elements to a non-use abandonment claim: non-use of a mark
and intent not to resume use. Exec. Coach Builders, Inc. v. SPV Coach Co., 123
USPQ2d 1175, 1180 (TTAB 2017); see also Jack Wolfskin Ausrustung Fur Draussen
GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129, 1131 (Fed. Cir. 2015). Because registrations are presumed valid under Section
7(b) of the Trademark Act, 15 U.S.C. § 1057(b), the party seeking cancellation based
on abandonment bears the burden of proving a prima facie case by a preponderance
of the evidence. See Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14
USPQ2d 1390, 1393 (Fed. Cir. 1990); On-Line Careline Inc. v. America Online Inc.,
229 F.3d 1080, 56 USPQ2d 1471, 1476 (Fed. Cir. 2000); Cerveceria Centroamericana,
S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1310 (Fed. Cir. 1989);
Quality Candy Shoppes/Buddy Squirrel of Wisconsin Inc. v. Grande Foods, 90
USPQ2d 1389, 1393 (TTAB 2007).
However, because Respondent is the party moving for summary judgment,
Respondent has the initial burden of establishing that there is no genuine dispute
Cancellation No. 92068175

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that its use of the involved mark has not been discontinued or, if such use has been
discontinued, that there is no genuine dispute that it has no intent not to resume
such use. See Trademark Act Section 45, 15 U.S.C. § 1127. Here, Respondent
attempts to meet its burden by showing that there is an absence of evidence to
support Petitioner’s case. See Persons Co. Ltd. v. Christman, 900 F.2d 1565, 14
USPQ2d 1477, 1481 (Fed. Cir. 1990), aff’g 9 USPQ2d 1477 (TTAB 1988); see also
Celotex Corp. v. Catrett, 477 U.S. at 325 (Rule 56(e) … requires the nonmoving party
to go beyond the pleadings and by [its] own affidavits, or by the “depositions, answers
to interrogatories, and admissions on file,” designate “specific facts showing that
there is a genuine issue for trial.”). Thus, if Petitioner fails to make a sufficient
showing on an essential element of its abandonment claim with respect to which it
would have the burden of proof at trial, judgment as a matter of law may be entered
in favor of the moving party, Respondent. See Fed. R. Civ. P. 56(c); Celotex Corp. v.
Catrett, 477 U.S. at 322-23.
Respondent relies on the declaration of Angela S. Rieger, Respondent’s Senior Vice
President - Planning and Head of International, 24 TTABVUE 24, to show that
Respondent has been continuously using the WILLIS & GEIGER mark in commerce
in connection with the goods identified in U.S. Reg. No. 1394814, namely, shirts. Ms.
Rieger avers the following and/or submitted the following evidence:
a. Ms. Rieger has “direct profit & loss responsibility for all direct-to-
consumer channels (e.g. digital, ecommerce, catalog) of Lands’ End” (dec. ¶ 2).
24 TTABVUE 24-25;
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b. Respondent has continously used the WILLIS & GEIGER mark since
2000 through 2017, except for 2004 and 2012; “sales of W&G Shirts have
averaged in the hundreds (or thousands) of units for most years, with products
bearing the W&G Mark being sold through our website www.landsend.com
(which can also be accessed at www.willisgeiger.com) …” (dec. ¶ 6), 24
TTABVUE 25-26; specifically, from 2002 through 2008, Respondent sold a total
of 10,887 units of WILLIS & GEIGER shirts, for a total revenue of $536,758
(dec. ¶ 8),3 24 TTABVUE 26; and from 2010 through 2017, Respondent sold a
total of 3,412 units of WILLIS & GEIGER shirts, for a total revenue of
$147,171; in particular, 714 shirts were sold in 2015, 5 shirts were sold in 2016,
and 10 shirts were sold in 2017, as shown in the following table (dec. ¶ 9), 24
TTABVUE 26-27; see also Exh. 5, 24 TTABVUE 48-63:

3 Ms. Rieger adopts and confirms the accuracy of the sales and revenue figures set forth in
the declaration of Karl A. Dahlen dated May 1, 2009 in prior, unrelated litigation captioned
Lands’ End, Inc. et al. v. Connecticut Shotgun Mfg. Co., Civ. No. 3:09-cv-00278-BBC (W.D.
Wisc.) (Rieger dec. ¶¶ 7-9). 24 TTABVUE 26-27.
Cancellation No. 92068175

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c. Ms. Rieger testified and submitted documents establishing that
Respondent, “as many apparel retailers do,” has, through its contract
manufacturer, manufactured new products, including WILLIS & GEIGER
shirts, and sold them over the course of several years, as shown in the following
table (dec. ¶ 10), 24 TTABVUE 27; see also Exh. 5, 24 TTABVUE 48-63:

d. In particular, the “beard shirt” sold under the WILLIS & GEIGER
mark was manufactured in 2014; and Respondent sold 670 units of that shirt
in the United States in 2014, 678 units in 2015, and smaller amounts in 2016
and 2017 (dec. ¶ 13), 24 TTABVUE 28.
e. Each of the three types of WILLIS & GEIGER shirts was
manufactured between 2010 and 2014, delivered to one of Respondent’s
warehouses, and sold in commerce in the ordinary course of business (dec.
¶ 15), 24 TTABVUE 28.
f. Respondent has sold other goods since 2000 bearing the WILLIS &
GEIGER mark, including pants, shorts and jackets (dec. ¶ 16), and beginning
in the fall of 2017, Respondent began planning a new WILLIS & GEIGER
bomber jacket, which was first offered for sale in Summer 2018 (dec. ¶ 17), 24
TTABVUE 29.
Cancellation No. 92068175

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Additionally, Petitioner submitted Respondent’s responses to Petitioner’s
interrogatories, in which Respondent stated that it purchased more labels for its
WILLIS & GEIGER products in 2018,4 26 TTABVUE 111; and, Respondent
submitted with its counsel’s declaration5 a screenshot of a men’s WILLIS & GEIGER
leather bomber jacket, demonstrating how Respondent portrays WILLIS & GEIGER
clothing on its website.
Thus, in addition to pointing out that Petitioner does not have evidence in support
of its abandonment claim, Respondent has established that it has continuously used
the WILLIS & GEIGER mark in connection with shirts from 2010 through 2017,
albeit in varying amounts. Most recently, Respondent sold 678 units of the WILLIS
& GEIGER “beard” shirt in 2015, and smaller amounts in 2016 and 2017; and sold a
total of 714 WILLIS & GEIGER shirts in 2015, 5 in 2016, and 10 in 2017. The
statements in Ms. Rieger’s declaration are clear, internally consistent and consistent
with and supported by the documentary evidence. See Hornblower & Weeks Inc. v.
Hornblower & Weeks Inc., 60 USPQ2d 1733, 1739 (TTAB 2001); 4U Co. of Am., Inc.
v. Naas Foods, Inc., 175 USPQ 251, 253 (TTAB 1972) (in summary judgment,
affidavit admissible to prove prior and continuous use).
Petitioner has not submitted any contradictory evidence. Rather, Petitioner
merely urges the Board to find that Respondent has abandoned the involved mark

4 Respondent’s response to Petitioner’s interrogatory no. 17.

5 Declaration of Nathan T. Harris (¶ 11 and Exh. 11 thereto) 24 TTABVUE 21-22, 86-87.

Cancellation No. 92068175

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because Respondent assertedly sought to sell its Willis & Geiger division in 1998,6
Respondent’s sales in 2015, 2016 and 2017 were assertedly “token sales” when
compared to Respondent’s previous years’ sales or to Respondent’s overall sales, and
that Respondent has only been selling “residual” inventory allegedly leftover from
Respondent’s divestment and liquidation of its separate Willis & Geiger division. 24
TTABVUE 3, 136-137.7 Petitioner’s mere argument on this issue and outdated
evidence is not sufficient to raise a genuine dispute of material fact regarding its
claim of abandonment. Factual assertions, without evidentiary support, are
insufficient to defend against a motion for summary judgment. See Hornblower &
Weeks, 60 USPQ2d at 1739 (“applicant has produced no evidence, or raised any
expectation that at trial it could produce evidence.”).
We find the analysis of our primary reviewing court, the Court of Appeals for the
Federal Circuit, in Persons Co. Ltd. v. Christman, to be instructive in this case. In
Persons, the Court considered whether “intermittent sales,” “paucity of orders” and
“lack of significant sales” demonstrate “a cessation of commercial use and an intent
not to resume such use.” Persons Co. Ltd. v. Christman, 14 USPQ2d at 1481. In that
case, after considering the record as a whole, the Court held that although the
appellee’s sales “were often intermittent and the inventory of the corporation
remained small, such circumstances do not necessarily imply abandonment. There is

6 Petitioner’s Exh. E., 26 TTABVUE 83-84.

7 Compare partial document submitted at Petitioner’s Exh. F, 26 TTABVUE 86-89, to
complete documents submitted by Respondent at Exh. 14 and 15 to Harris dec., ¶¶ 14-15.
24 TTABVUE 22, 97-151.

Cancellation No. 92068175

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no rule of law that the owner of a trademark must reach a particular level of success,
measured either by the size of the market or by its own level of sales, to avoid
abandoning a mark.” Id. at 1481 (citing Wallpaper Mfgs. Ltd. v. Crown Wallpapering
Corp., 680 F.2d 755, 214 USPQ 327, 329 (CCPA 1982)). The Court therefore agreed
with the Board’s conclusion that, as a matter of law, the evidence submitted by the
appellant was insufficient to raise an issue of fact of abandonment of the involved
mark. Id. at 1482.
Applying the Persons analysis to the evidentiary record of this case, we find that
although Respondent appears to have liquidated its then existing WILLIS & GEIGER
inventory in 2000, 24 TTABVUE 137, there is no genuine dispute as to the material
fact that Respondent produced more WILLIS & GEIGER shirts in 2010, 2013 and
2014, 24 TTABVUE 28; continuously sold those shirts bearing the WILLIS &
GEIGER mark in all but two years from 2000 through 2017, 24 TTABVUE 28; and
purchased more labels for its WILLIS & GEIGER products in 2018. 26 TTABVUE
111. Therefore, while viewing all inferences from the undisputed facts in the light
most favorable to Petitioner, under Persons, Respondent has met its initial burden by
showing that Petitioner has no evidence establishing abandonment and that
Respondent has not abandoned its WILLIS & GEIGER mark in connection with the
identified goods, namely, shirts.
Petitioner has failed to overcome Respondent’s showing by demonstrating the
existence of a genuine dispute of material fact to be resolved at trial. Petitioner’s
evidence is limited to a partial copy of Respondent’s Form 8-K report filed on
Cancellation No. 92068175

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January 12, 1999, with the Securities and Exchange Commission (“SEC”), relating to
Respondent’s liquidation of its separate WILLIS & GEIGER division, 26 TTABVUE
86-89; copies of Respondent’s responses to Petitioner’s discovery requests, 26
TTABVUE 52-133; and a partial copy of an email from one of Respondent’s telephone
customer care representatives, who told Petitioner’s principal, Jeffrey Kaplan, in an
email that “we did discontinue Willis & Geiger. We do not have any inventory in stock
and will not have inventory in the near future.” 26 TTABVUE 153. None of this
evidence establishes a genuine dispute because even if WILLIS & GEIGER is no
longer a “division,” Respondent nonetheless manufactured more WILLIS & GEIGER
shirts in 2010, 2013, and 2014, and sold those shirts, well after the “liquidation”
mentioned in the SEC report. As for the customer service email, Respondent
preemptively addressed the statement made by that company care specialist by
submitting the declaration of Anne E. Hore, Respondent’s Senior Director, Employee
Services, who avers the following:
Customer Care Specialists are not provided information … [or] any
training or information regarding Lands’ End’s history uses of its
trademarks. In general, a Customer Care Specialist is provided access
to current inventory information for available products … and may also
be aware of a status of a particular product …, such as the product being
out of stock, on backorder, or becoming available again in the coming
days. However, Customer Care Specialists do not have knowledge of, nor
are they provided with information with corporate plans for entire
product lines, or corporate plans for use of individual trademarks used
within those product lines.

Dec. of Anne E. Hore, ¶ 4, 23 TTABVUE 96.
In view of the training provided to Respondent’s Customer Care Specialists, we find
that the specialist’s incorrect assertions in her email do not demonstrate that a
Cancellation No. 92068175

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genuine dispute of material exists for trial. The Customer Care Specialist’s e-mail
addresses a short period of an earlier time and is therefore in no way inconsistent
with Ms. Rieger’s testimony and the accompanying documents.
Similarly, Respondent’s responses to Petitioner’s requests for admission,
interrogatories, and requests for production do not raise a genuine dispute. By way
of example, Petitioner contends that Respondent has not provided any copies of its
purchase orders or bills of lading from its manufacturers since 2010;8 however, as
explained in both Respondent’s response to Petitioner’s interrogatory no. 6 and Ms.
Rieger’s declaration, Respondent does not retain purchase orders or bills of lading for
longer than two years in the ordinary course of business. 26 TTABVUE 25; Rieger
dec. ¶ 15, 24 TTABVUE 28. Moreover, Respondent did provide the purchase order
number for its 2018 order of WILLIS & GEIGER jackets, indicating its intent not to
abandon the involved mark (Respondent’s resp. to Petitioner’s interrogatory no. 6).
26 TTABVUE 111.
Petitioner also points out that Respondent admitted that it no longer has a
dedicated division for WILLIS & GEIGER products; however, Petitioner fails to even
address, let alone establish that a genuine dispute is created by the remainder of
Respondent’s response, viz., that while Respondent “has not operated a dedicated

8 If Petitioner believed that any of Respondent’s discovery responses were incomplete, its
remedy was to file a motion to compel discovery after having made a good faith effort to
resolve the parties’ discovery dispute. See Trademark Rule 2.120(f)(1); TBMP § 523. If
Petitioner believed that it could not respond to Respondent’s motion without obtaining
further discovery from Respondent, its remedy was to file a motion to take discovery under
Fed. R. Civ. P. 56(d) prior to filing its brief in response to the motion for summary judgment.
See TBMP § 528.06.

Cancellation No. 92068175

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division since 2001, … other Lands’ End divisions have continued to design WILLIS
& GEIGER products to be sold through Lands’ End channels” (Respondent’s resp. to
Petitioner’s req. for adm. no. 4). 26 TTABVUE 56-57. Similarly, although Respondent
admitted that there was no reference to WILLIS & GEIGER on its website during
2011 or 2012, Respondent has: (1) denied that it did not refer to WILLIS & GEIGER
on its Lands’ End website in either 2010 or from 2013 through 2017 (Respondent’s
resp. to Petitioner’s req. for adm., nos. 9-18), 26 TTABVUE 58-60; and (2) produced a
recent screenshot of a product listing of a men’s WILLIS & GEIGER leather bomber
jacket from its website. In view of the foregoing, we find that Petitioner has failed to
present evidence creating a genuine dispute of material fact as to whether
Respondent discontinued use of the involved mark for the identified goods with an
intent not to resume use. See Persons, 14 USPQ2d at 1482.
Based on our review of the parties’ arguments and supporting evidence, and
drawing all inferences in favor of Petitioner, the non-movant with respect to
Respondent’s motion, we conclude that Respondent has demonstrated that no
genuine dispute of material fact exists and that it is entitled to judgment as a matter
of law on Petitioner’s abandonment claim with respect to U.S. Reg. No. 1394814.
Accordingly, Respondent’s motion for partial summary judgment on Petitioner’s
abandonment claim regarding U.S. Reg. No. 1394814 is GRANTED, and the claim
is dismissed with prejudice.9

9 This decision is interlocutory in nature. Thus, an appeal may not be taken until after a final
decision in this case. See Copelands’ Enters. Inc. v. CNV Inc., 887 F.2d 1065, 12 USPQ2d
1562 (Fed. Cir. 1989).

Cancellation No. 92068175

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III. Petitioner’s Cross-Motion for Summary Judgment
Petitioner seeks summary judgment on its abandonment claim with respect to
both of Respondent’s registrations for the WILLIS & GEIGER mark. Because we have
already ruled in Respondent’s favor with respect to U.S. Reg. No. 1394814, we
consider only Petitioner’s claim against U.S. Reg. No. 1492716 for the WILLIS &
GEIGER mark for “retail store services in the field of clothing and accessories.”
With respect to standing, Petitioner has submitted a copy of an Office Action that
issued in connection with its pleaded application (application Serial No. 87574744),
demonstrating that the Office has refused to register Petitioner’s WILLIS & GEIGER
standard character mark based on a likelihood of confusion with the mark in
Respondent’s involved registrations. See Petitioner’s Reply and Cross-Motion for
Summary Judgment, Exh. A. 27 TTABVUE 27. Notwithstanding this evidence,
because Petitioner bears the ultimate burden of proof on the standing issue, it may
be required to go beyond the mere pendency and refusal of its application and
establish its entitlement to file, based on a bona fide intent to use the applied-for
mark, the application upon which its standing is based. See Jeffrey Kaplan v.
Faulding Health Care (IP) Holdings, Inc., 2016 WL 1677308 (TTAB January 22,
2016); cf. Salacuse v. Ginger Spirits Inc., 44 USPQ2d 1415, 1418-19 (TTAB 1997)
(finding that respondent’s allegation in its affirmative defense that petitioner’s
applications are invalid is sufficient, if proven, to defeat petitioner’s Section 2(d) claim
and that “[t]he Board conceivably may find, after trial on the merits of respondent’s
affirmative defense, that petitioner’s applications are invalid because petitioner
Cancellation No. 92068175

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lacked the requisite bona fide intention to use his applied-for mark on the goods
identified in the applications”). In that regard, we note Respondent’s submission of
Petitioner’s amended responses to Respondent’s first requests for admission,
including the response to request no. 2, in which Petitioner admitted that “as of
August 18, 2017, [the filing date of the pleaded application,] [Petitioner] had prepared
no business or marketing plans or style guides concerning its intended use of
[Petitioner’s] WILLIS & GEIGER Mark.” 28 TTABVUE 35. Respondent has also
submitted copies of printouts from the USPTO Trademark Status & Document
Retrieval (“TSDR”) database, showing Petitioner’s (or related parties’) history of filing
numerous intent-to-use applications. See Respondent’s Combined Opposition to
Cross-Motion for Summary Judgment and Reply in Support of Renewed Motion for
Partial Summary Judgment of Non-Abandonment, Table at 28 TTABVUE 13-14;
second declaration of Nathan T. Harris, ¶¶ 12-13, 28 TTABVUE 27; and Exh. 24-25,
28 TTABVUE 136-206.
Based on our review of the parties’ arguments and evidence of record, and drawing
all inferences in favor of Respondent, the non-movant with respect to Petitioner’s
cross-motion, we find that Petitioner has not met its burden of establishing that there
is no genuine dispute of material fact and that it is entitled to judgment as a matter
of law on its abandonment claim with respect to U.S. Reg. No. 1492716. At a
minimum,10 there exists a genuine dispute as to whether Petitioner has standing.

10 The fact that we have identified in this order only certain material facts that are genuinely
in dispute should not be construed as a finding that these are necessarily the only issues that
remain for trial. The parties should note that the evidence submitted in connection with the
cross-motions for summary judgment is of record only for consideration of those motions. To
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Further, because Petitioner did not submit any evidence showing that Respondent
does not provide “retail store services in the field of clothing and accessories” in
connection with the WILLIS & GEIGER mark, there also exists a genuine dispute as
to whether Respondent has ceased using the WILLIS & GEIGER mark in connection
with those services. Accordingly, Petitioner’s motion for summary judgment on its
remaining abandonment claim is DENIED.
Insofar as discovery is closed and Petitioner’s pretrial disclosure due date is
imminent, Petitioner is NOT allowed to file another motion for summary judgment.
IV. Proceeding Resumed; Trial Dates Reset
This proceeding is resumed. Trial dates are reset as shown in the following trial
schedule:
Plaintiff's Pretrial Disclosures Due 11/30/2019
Plaintiff's 30-day Trial Period Ends 1/14/2020
Defendant's Pretrial Disclosures Due 1/29/2020
Defendant's 30-day Trial Period Ends 3/14/2020
Plaintiff's Rebuttal Disclosures Due 3/29/2020
Plaintiff's 15-day Rebuttal Period Ends 4/28/2020
Plaintiff's Opening Brief Due 6/27/2020
Defendant's Brief Due 7/27/2020

be considered at final hearing, any such evidence must be properly introduced in evidence
during the appropriate trial period. See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28
USPQ2d 1464, 1465 n.2 (TTAB 1993); Pet Inc. v. Bassetti, 219 USPQ 911, 913 n.4 (TTAB
1983); American Meat Institute v. Horace W. Longacre, Inc., 211 USPQ 712, 716 n.2 (TTAB
1981).

Cancellation No. 92068175

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Plaintiff's Reply Brief Due 8/11/2020
Request for Oral Hearing (optional) Due 8/21/2020

Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125, 37 C.F.R. §§ 2.121-2.125. These include
pretrial disclosures, the manner and timing of taking testimony, matters in evidence,
and the procedures for submitting and serving testimony and other evidence,
including affidavits, declarations, deposition transcripts and stipulated evidence.
Trial briefs shall be submitted in accordance with Trademark Rules 2.128(a) and (b),
37 C.F.R. §§ 2.128(a) and (b). Oral argument at final hearing will be scheduled only
upon the timely submission of a separate notice as allowed by Trademark Rule
2.129(a), 37 C.F.R. § 2.129(a).
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