Sean Combsv.All Surface Entertainment, Inc.

Trademark Trial and Appeal Board

Oct 5, 2012

No. 92051490 (T.T.A.B. Oct. 5, 2012)

Mailed: October 5, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Sean Combs
v.
All Surface Entertainment, Inc.
_____

Cancellation No. 92051490
to Registration No. 2814750
registered on February 17, 2004
_____

John A. Squires of Chadbourne & Parke LLP for Sean Combs.

Gary Adelman of Meister Seelig & Felin LLP for All Surface
Entertainment Inc.
______

Before Kuhlke, Quinn and Mermelstein, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Petitioner, Sean Combs, seeks to cancel respondent’s
registration for the mark DIRTY MONEY in typed form for
“men’s and women’s clothing, namely, t-shirts, sweatshirts,
hats, headwear, jackets, jeans and pants.”1

1 Registration No. 2814750, filed on March 17, 2003, issued on
February 17, 2004, claiming a date of first use anywhere and a
date of first use in commerce of October 10, 1994. A Section 8
affidavit was filed on October 5, 2009 and accepted on October
15, 2009.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92051490

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As grounds for cancellation, petitioner alleges that
respondent has abandoned use of its mark on all of the
identified goods because it has discontinued use with an
intent not to resume such use. Petitioner also alleges that
he filed an application for the standard character mark
DIDDY-DIRTY MONEY and that respondent’s registration has
been cited as a bar to registration of petitioner’s mark.2
In its answer, respondent denies the allegations of the
petition to cancel and further asserts that it has not
abandoned use of its mark DIRTY MONEY.
PROCEDURAL HISTORY
On November 24, 2010, petitioner filed a motion for
summary judgment on the claim of abandonment. Respondent
cross-moved for summary judgment in its favor on
petitioner’s claim of abandonment and on the issue of
petitioner’s standing. On May 13, 2011, the Board granted
petitioner’s motion for summary judgment in part. The Board
determined that petitioner established his standing and a
prima facie case of abandonment based on respondent’s nonuse
from February 17, 2004 to February, 2009. Thus, the sole
remaining issue for final determination is respondent’s

2 Application Serial No. 77751393, filed on June 3, 2009, for the
goods “clothing, namely, t-shirts, hooded sweatshirts, jackets,
sweatshirts; headwear” is based on an allegation of a bona fide
intention to use the mark in commerce under Trademark Act Section
1(b), 15 U.S.C. § 1051(b).
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rebuttal of the presumption of abandonment based on an
intent to resume use.
ABANDONMENT/INTENT TO RESUME USE
Abandonment of a mark occurs:
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.

Trademark Act Section 45, 15 U.S.C. § 1127.

A petitioner for cancellation of a registration on the
ground of abandonment bears the burden of proving such
abandonment by a preponderance of evidence. Cerverceria
Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d
1021, 13 USPQ2d 1307 (Fed. Cir. 1989). However, “[o]nce a
prima facie case is established, this ‘eliminates the
challenger’s burden to establish the intent element of
abandonment as an initial part of [his] case,’ and creates a
rebuttable presumption that the registrant abandoned the
mark without intent to resume or commence use under the
statute. This presumption shifts the burden to the
registrant to produce evidence that he either used the mark
during the statutory period or intended to resume or
commence use. The burden of persuasion, however, always
remains with the petitioner to prove abandonment by a
preponderance of evidence.” Rivard v. Linville, 133 F.3d
Cancellation No. 92051490

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1446, 45 USPQ2d 1374 (Fed. Cir. 1998) citing, Imperial
Tobacco Ltd. v. Philip Morris, 899 F.2d 1575, 14 USPQ2d
1390, 1395 (Fed. Cir. 1990). Finally, mere proclamations of
intent to resume use or commence use during the period of
nonuse are given little, if any, weight. Id.
To show an intent to resume use, a respondent must put
forth evidence with respect to either specific activities
undertaken during the period of nonuse or special
circumstances which excuse nonuse. See Imperial Tobacco, 14
USPQ2d at 1394. See also Rivard, 45 USPQ2d at 1376 (“To
provide excusable nonuse, the registrant must produce
evidence showing that, under his particular circumstances,
his activities are those that a reasonable businessman, who
had a bona fide intent to use the mark in United States
commerce, would have undertaken.”) A mere “affirmative
desire by the registrant not to relinquish a mark is not
determinative of the intent element of abandonment under the
Lanham Act.” Imperial Tobacco, 14 USPQ2d at 1394. To
satisfy its burden of production, respondent must come
forward with evidence beyond mere conclusory statements or
denials that it lacks such intent to resume use. Id. at
1394-95. See also Rivard, 45 USPQ2d 1374 (Court upheld the
Board’s finding that evidence of several trips to the United
States to establish hair dressing and beauty salons and
contact with a franchising consultant was insufficient to
Cancellation No. 92051490

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support an intent to commence use of the mark and the
registrant did not show that the nonuse of the mark during
this period was reasonable.)
Finally, in order to rebut the prima facie case,
respondent must produce evidence of an intent to resume use
during the relevant time period, i.e., the period of nonuse.
See Imperial Tobacco, 14 USPQ2d at 1394-95. Subsequent use
may be probative of whether the registrant intended to
resume use during a previous period of nonuse. Such
evidence should temporally and logically link the later use
to the prior nonuse, such that an inference can be drawn
regarding the intent to use during the period of nonuse.
Without more, mere evidence of subsequent use may not
suffice to establish that the registrant intended to resume
use. Parfums Nautee Ltd. v. American International
Industries, 22 USPQ2d 1306, 1310 (TTAB 1992). “Once a
trademark is abandoned, its registration may be cancelled
even if the registrant resumes use.” Cerveceria, 13 USPQ2d
at 1313 n. 7, quoting, Mission Dry Corp. v. Seven-up Co.,
193 F.2d 201, 92 USPQ 144, 146 (CCPA 1951).
It is respondent’s position that it never intended not
to resume use and has valid reasons for any periods of
nonuse, including a purposeful effort to launch the brand at
a time when the climate of the “street wear” community would
be receptive to such a brand and the limited ability of
Cancellation No. 92051490

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respondent’s president to focus on the brand while producing
another brand at the same time. Respondent contends that
“the evidence in the record unequivocally demonstrates that
during all periods of non-use [respondent] maintained an
intent to resume use and had excusable reasons for non-
use.”3 Resp. Br. p. 1.
To meet its burden, respondent submitted trial
testimony (with accompanying exhibits) of its president
Aaron LaCanfora (“LaCanfora Test.”). We first note that the
bulk of Mr. LaCanfora’s testimony and exhibits relate to
activities occurring in 2003 and earlier, i.e., prior to the
beginning of the 2004-2009 nonuse period. In addition, much
of the testimony and exhibits pertain to use of a mark
(MILKCRATE) that is not the subject of this proceeding.
Respondent asserts that the following actions
illustrate the intent to resume use of the trademark:
searching for and negotiating with potential licensing
partners and brand spokespersons; researching ways to
introduce new collections of the brand; test marketing new
t-shirt and hat designs; pursuing infringers; renewing

3 Respondent also asserts that “even if Petitioner could persuade
the Board that [respondent] had abandoned the mark at some time
prior to February of 2009, [respondent] has resumed use prior to
petitioner and as such maintains priority.” Resp. Br. p. 1. As
discussed infra, priority is not an issue in this case, and once
abandonment has occurred, subsequent use is considered a new and
separate use and does not serve to obviate the abandonment.

Cancellation No. 92051490

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registration of the trademark; and actually resuming use of
the trademark. Resp. Br. p. 16.
We first find that respondent never commenced use of
the mark on sweatshirts, jackets, jeans and pants prior to
2008/2009. LaCanfora Test. p. 213 (“Q. Okay. So up until
that time [2009] there was T-shirts and hats? A. And hats.
Q. And nothing else? A. No.”).4 Moreover, prior to the
nonuse period beginning on February 17, 2004 his use on t-
shirts and hats was minimal and sporadic. From the time Mr.
LaCanfora conceived of the Dirty Money idea in 1994 to the
end of the 90’s he sold approximately three dozen t-shirts.
LaCanfora Test. p. 185. In 2003, “[Mr. LaCanfora] kind of
had already reintroduced [DIRTY MONEY] and it was bubbling
again and [he] was selling it around here and there again.”
LaCanfora Test. p. 178. In 2003, respondent only sold six
hats and a dozen t-shirts with DIRTY MONEY displayed on
them. LaCanfora Test. pp. 179-180.
Turning now to respondent’s asserted actions, we
address each activity in turn. Respondent asserts that Mr.
LaCanfora continuously searched for licensing partners and
spokespersons to launch the DIRTY MONEY brand. Resp. Br. p.
17. This search includes negotiations and discussions with

4 While the claim of nonuse to support a Section 1(a) application
was not pleaded, these facts contribute to the body of evidence
regarding respondent’s intent to resume use, in particular as to
the question of respondent’s constancy of effort.

Cancellation No. 92051490

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Damon Dash, Neil Mossburg, Pharrell Williams, Kanye West,
and people in sales at the Magic trade show in Las Vegas
(Magic). Resp. Br. pp. 17-18. However, the testimony
regarding the search for licensing partners and a
spokesperson is vague and inconsistent, and not corroborated
by testimony of others. The only documentary evidence
consists of a notebook of handwritten notes and a copy of
one facsimile sent to Damon Dash.
The negotiations with Damon Dash occurred in 2003,
prior to the abandonment period (and prior to registration).
He testifies that early 2003 to mid-summer 2003 was the
“heart of the Dirty Money deal” and during this time on May
13, 2003, he faxed a proposed license deal to Damon Dash.
LaCanfora Test. pp. 77, 98, Exhibit E. The testimony
regarding the end of negotiations with Damon Dash is
inconsistent. During direct examination, Mr. LaCanfora
testifies that the negotiations with Damon Dash ended in
August of 2003. LaCanfora Test. p. 102. However, during
cross-examination, Mr. LaCanfora testifies that the
negotiations ended in the beginning of 2004. LaCanfora
Test. pg. 187. Thus, the duration remains unclear. Even if
the later date of the beginning of 2004 is believed, this
vague date appears to coincide with the trademark
registration date. Similarly, talks with Pharrell Williams
and Kanye West to become spokespersons for the brand also
Cancellation No. 92051490

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occurred in 2003. LaCanfora Test. pp. 95 and 113. Thus,
all of these discussions occurred prior to the beginning of
the nonuse period.
In 2004, Mr. LaCanfora had conversations with another
person, Neil Mossburg, to discuss working out a deal. Neil
Mossburg is an exhibitor and buyer at the Magic trade show.
LaCanfora Test. p. 194. Mr. LaCanfora testifies that the
discussions with Neil Mossburg continued from 2004-2005 and
broke down in 2006. LaCanfora Test. pg. 113. However, on
cross-examination, Mr. LaCanfora states there were at most
three meetings with Mr. Mossburg and that these meetings
began with Mr. Mossburg approaching Mr. LaCanfora to design
a line of t-shirts and Mr. LaCanfora brought up the DIRTY
MONEY brand. LaCanfora Test. pg. 194-196. This amounts to
three conversations over the course of three years and no
indication of how much of these conversations related to the
DIRTY MONEY brand. As the witness recounts, they spoke a
couple of times and moved on. LaCanfora Test. p. 196. He
testifies that Mr. Mossberg “didn’t want to invest any money
... and that wasn’t something that was a feasible offer for
Dirty Money” and that these “negotiations” broke down in
2006. LaCanfora Test. p. 114.
Between 2004 and 2009, Mr. LaCanfora testifies that he
attended the Magic trade show where he “had designs that
[he] was test marketing through Milkcrate...” LaCanfora
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Test. p. 111. His booth at Magic was under the MILKCRATE
brand. LaCanfora Test. p. 199. Mr. LaCanfora describes the
test marketing as follows:
Dirty Money is a brand name, but Dirty Money is a
very different aggressive, more aggressive design
style than Milkcrate is. So I would do some
designs that were more aggressive and more Dirty
Money style designs within the Milkcrate
collection to show them to buyers and to show them
to magazine editors and people to get an idea if
the brand – if someone leaps out at something then
I get an idea that the market is turning towards
more aggressive style hip hop clothing.

LaCanfora Test. p. 118.
At the Magic trade show during 2003-2007 he “was still
steadily putting a few designs here and there in the
Milkcrate collection and seeing how they would work, getting
an idea and it, you know it still was – it came back to me
once again the time was not right and Dirty Money was still
ahead of its time.” LaCanfora Test. p. 198 (he was
“continuously shopping [Dirty Money] and managing it and
trying to get people interested in it, but the market was
not there. People were not interested in that yet.”).
Again, the testimony regarding interaction with sales people
at Magic is very vague. Specifically, Mr. LaCanfora
testifies that he “met with many people at the Magic show,
various sales reps, various other brands at the time. I was
very vocal in trying to collaborate and to take the DIRTY
MONEY brand to another level.” LaCanfora Test. p. 112.
Cancellation No. 92051490

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This testimony does not include a specific timeframe or
names of individuals with whom Mr. LaCanfora engaged in
licensing negotiations, or even that it was for the benefit
of respondent rather than Mr. LaCanfora’s other company
Milkcrate, Inc. Respondent also testifies to presenting new
designs for DIRTY MONEY, but Mr. LaCanfora testifies that
these new designs were featured under the MilkCrate
collection. LaCanfora Test. pgs. 117-118. No documentary
evidence, such as copies of the designs that were presented
(prior to the 2008 designs) have been provided. Nor has
respondent provided evidence that this constitutes industry
practice to test market the goods in this manner.
Respondent points to its policing efforts as evidence
of an intent to resume use, which consists of one cease and
desist letter sent in 2006. Respondent admits that the 2006
cease and desist letter was sent in response to a request
from a third party to purchase the DIRTY MONEY mark.
LaCanfora Test. p. 114. The only other policing effort was
the cease and desist letter sent in 2010 to petitioner,
which is outside of the relevant time period and subsequent
to the filing of this petition. LaCanfora Test. p. 151.
Finally, sometime in 2008, Mr. LaCanfora was approached
by the cable television network Home Box Office (HBO) to
design a collection of clothing for the television show The
Wire. LaCanfora Test. p. 24. Mr. LaCanfora testified that
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they were familiar with the MILKCRATE brand (LaCanfora Test.
p. 24) but did not provide testimony as to the DIRTY MONEY
brand on this point. He further testifies that he:
... designed new Dirty Money T-shirts that were
Milkcrate branded – they were Milkcrate Dirty
Money brand shirts. And I also had The Wire HBO
Milkcrate collaboration shirts, and I said – and I
launched them at the same time as a marketing
objective to show the public that HBO is
interested in Milkcrate and HBO is also interested
in Dirty Money, and this is the brand that you’ve
been seeing slowly evolve and this is the brand
I’ve been pushing for the past 17 years and no HBO
– it’s a fit.

LaCanfora Test. p. 120.
Regarding the HBO collaboration, he testifies that “It
took a year to negotiate the deal and in 2009 is when we
first introduced The Wire at Magic.” LaCanfora Test. p.
230. An example of the 2009 design is set forth below:

LaCanfora Test. Exhibit I.
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Mr. LaCanfora testifies that in February 2009 t-shirts
with the DIRTY MONEY design were sold. LaCanfora Test. p.
121, 124. We note that the invoice submitted to support
this testimony is from Milkcrate Athletics, Inc., Mr.
LaCanfora’s other company, not respondent, All Surface
Entertainment, Inc. See LaCanfora Test. Exhibit J. The
2010 invoices appear to come from “Dirty Money.” See
LaCanfora Test. Exhibit N.
In order to show an intent to resume use “one must ...
proffer more than conclusory testimony or affidavits.”
Imperial Tobacco Ltd., 14 USPQ2d at 1394. Taken as a whole,
this record does not include evidence of activities during
the nonuse period to support an intent to resume use. The
bulk of the testimony and evidence relates to activities
prior to the relevant time period or to respondent’s other
brand, Milkcrate Athletics. The remaining evidence consists
of testimony that is vague, inconsistent, and insufficiently
supported by documentary evidence or testimony other than by
respondent.
To support its position, respondent relies on Sands,
Taylor, & Wood v. Quaker Oats Co., 18 USPQ2d 1457 (N.D. Ill.
1990) and Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d
1387, 94 USPQ2d 1315, 1319-20 (Fed. Cir. 2010). These cases
are distinguished on their facts from the present case. In
the Sands, Taylor & Wood Co. case, the plaintiff’s efforts
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included: maintaining a file of beverage producers that
might be interested in the trademark; preparing a letter to
soft drink companies regarding the trademark; contacting a
food broker who in return prepared a list of proposed
companies; and contacting public relations firms and other
marketing persons and a business school regarding how to use
the trademark. In Crash Dummy Movie, in addition to the
licensing efforts, the Federal Circuit noted that the Board
relied on substantial evidence and testimony of research and
development efforts to indicate an intent to resume use.
However, the vague testimony regarding weak
intermittent efforts and lack of sufficient supporting
evidence submitted in this case are more in line with other
cases where abandonment was found. See Rivard, 45 USPQ2d at
1383 (abandonment found where registrant submitted evidence
regarding “sporadic trips to investigate potential sites for
salons and half-hearted attempts to initiate the business
relationships necessary to open a salon); Natural Answers,
Inc. v. Smithkline Beecham Corp. 529 F.3d 1325, 87 USPQ2d
1200, 1210 (11th Cir. 2008) (no valid trademark found where
plaintiff provided only a bare assertion by its CEO of an
intent to resume use if funding was found, an unsupported
assertion that another company wanted more information
regarding a joint venture and no evidence of actual and
concrete plans to resume use).
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Respondent also argues that valid reasons exist for any
periods of non-use. “Intent to resume use in abandonment
cases has been equated with a showing of special
circumstances which excuse a registrant’s nonuse.” Imperial
Tobacco, 14 USPQ2d at 1395. The reasons for nonuse provided
by respondent include the decision to wait to launch new
collections until such time that the brand would be well-
received; respondent’s limited capabilities; the need for
help with advertising and funding; and need for a licensing
partner. Resp. Br. pg. 25.
Mr. LaCanfora testifies that the brand was ahead of its
time and that he needed to wait to present the brand when it
would be well-received. LaCanfora Test. p. 116. Respondent
also points to its limited capabilities which required help
with advertising and funding and/or a licensing partner.
Resp. Br. p. 25. However, respondent has provided no
documentary evidence or outside testimony to support either
of these reasons. The only support for these excuses for
nonuse is respondent’s own testimony and handwritten notes.
The Federal Circuit affirmed the Board’s finding of
abandonment in the Rivard case, noting that while he “used
his own business judgment in deciding not to open salons
during this period, not every business reason excuses
nonuse.” Rivard, 45 USPQ2d at 1385. Similarly,
respondent’s excuses consist only of respondent’s own
Cancellation No. 92051490

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business judgment about consumer preferences and the manner
in which it desired to launch its brand, and not as a
“special circumstance” brought on by outside forces.
Imperial Tobacco, 14 USPQ2d at 1395, citing, Miller Brewing
Co. v. Oland’s Breweries Ltd., 548 F.2d 349, 192 USPQ 266,
268 (CCPA 1976) (modernization of equipment and strike by
employees constituted special circumstances).
Furthermore, respondent’s own actions belie its
contentions that the mark could not be used without
additional resources. Initial attempts in 1994 to use the
trademark included respondent’s drawing the mark on the
goods by hand with a Sharpie pen or airbrushing the mark on
the goods and selling limited numbers of goods. LaCanfora
Test. pp. 10 and 165. Further, when the mark was
reintroduced in 2003, when respondent filed the trademark
application, the same basic design was used which only
featured block lettering on a basic t-shirt and trucker hat.
LaCanfora Test. p. 180, Exhibit B. In addition, Mr.
LaCanfora testifies that in 2003 he had a screen printer so
he could “mass produce.” LaCanfora Test. p. 193. By
contrast, respondent has not produced evidence of outside
events that prompted a ceasing of effort to produce the
simple basic design in the years of nonuse.
Respondent’s actions with the later created MILKCRATE
brand also belie a need for additional resources to utilize
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a mark on clothing items. Mr. LaCanfora testifies that,
through his other company, Milkcrate Athletics, Inc., he
“design[s], manufacture[s], produce[s], and ship[s]”
clothing. LaCanfora Test. p. 9. In addition, as to the
MILKCRATE brand, Mr. LaCanfora testifies that it is financed
independently. Id. He also testifies that he has
successfully promoted and sold his MILKCRATE branded
clothing line worldwide and has sold merchandise under that
brand every year since 1997. LaCanfora Test. p. 19. In
short, respondent has been able to successfully build the
MILKCRATE brand during the same time period without partners
or additional funding.5 Finally, once Mr. LaCanfora did
resume use of the DIRTY MONEY designs he did so without
advertising or funding assistance or a licensing partner.
This evidence indicates it was possible to have done so all
along.
In the case law cited by respondent, the business
reasons included fear of warranties implied by use of the
mark on the goods where those goods may not meet the
warranty and a magazine company that discontinued a line of
t-shirts until a new vehicle was found to offer them for
sale, namely, an internal sales catalog. See Poncy v.
Johnson & Johnson, 460 F.Supp. 795 (D.N.J. 1978); Ithaca

5 From page 13 to page 54 Mr. LaCanfora’s testimony pertains only
to the MILKCRATE brand and his continuous successful marketing of
clothing under this brand since at least 1997.
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Indus., Inc. v. Essence Communications, Inc. 706 F.Supp.
1195 (W.D.N.C. 1986). Even in the Crash Dummy Movie case,
the business reasons for nonuse included the time needed to
merge Tyco’s line of toys into Mattel and the cost necessary
to meet safety standards, which were shown through testimony
as well as documentary evidence. The Crash Dummy Movie,
LLC, 94 USPQ2d at 1318.
However, here the reasons provided are based on
respondent’s own business judgment without documentary
support regarding those reasons or industry practice.
“[N]ot every business reason excuses nonuse.” Rivard v.
Linville, 45 USPQ 2d 1374, 1377. In fact, he testifies that
such a long delay (2003-2009) between developing the design
and launching a brand is not standard for the industry. He
explains that it simply shows “how ahead of the time Dirty
Money is.” LaCanfora Test. p. 134.
Taken as a whole the record shows at most that for
seventeen years he waited for the market to catch up to the
DIRTY MONEY idea, while he devoted his “time, money and
efforts” (LaCanfora Test. p. 57) to the MILKCRATE brand.
While respondent’s hopes may have been eventually to enter
into a particular deal to make a large relaunch, there was
nothing preventing respondent from continuing use of its
brand during this time, as demonstrated by Mr. LaCanfora’s
continuing use of the MILKCRATE brand. This describes a
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business choice to go forward with one brand and warehousing
the other brand.
Finally, respondent incorrectly asserts that the
resumption of use prior to the time petitioner filed its
application makes the issue of abandonment moot. Respondent
cites to cases involving the issue of prior rights to a mark
where the abandonment of a plaintiff’s asserted common law
mark was deemed irrelevant in view of the subsequent use
prior to the defendant’s first use. However, the issue of
priority between the parties is not in issue in this
proceeding where the only claim is abandonment.6 Once
deemed abandoned, a registration will be cancelled even if
registrant later resumes commercial use. Cerveceria, 13
USPQ2d at 1313, n.7 citing Mission Dry Corp., 92 USPQ at
146. Re-adoption of a mark after abandonment represents a
new and separate use and cannot cure the abandonment.
Parfums Nautee Ltd., 22 USPQ2d at 1310.

6 As discussed above petitioner’s standing is already established
and it was based on the refusal of its application because of the
registration which is the subject of this proceeding, i.e., not
based on prior rights. May 13, 2011, Board Order pp. 8-9. The
question of prior rights between the parties would be relevant in
case involving a claim of likelihood of confusion under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Whether or not
respondent’s renewed use is (1) use sufficient to constitute
common law trademark use, and (2) prior to petitioner’s first use
or constructive use based on petitioner’s application filing date
is not before us in this proceeding brought on the claim of
abandonment and concerned solely with the ability to maintain the
current registration.

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The testimony indicates that in November 2008,
respondent designed new clothing items bearing the DIRTY
MONEY trademark to be used in connection with The Wire
collection shown in early 2009. LaCanfora Test. p. 158,
Exhibit S. However, even if we were to find this testimony
sufficient to establish use of the mark at that time, the
evidence submitted is insufficient to show an intent to
resume use in 2004, 2005, 2006, and 2007. Taking into
consideration the entire record, respondent abandoned its
registration by virtue of its nonuse and has failed to meet
its burden of production to rebut the presumption of
abandonment.
Certainly, the record does not reveal a constancy
of effort in marketing the clothing brand DIRTY MONEY
which would show an intention to resume meaningful
commercial use of the mark between, at least, 2004 and
early 2008. To the extent the use in 2009 is
sufficient trademark use to support a registration, it
occurred after the abandonment of the mark, and does
not reflect continuing efforts to resume use through
the period of nonuse.
In view thereof, petitioner has met its burden to
establish that respondent abandoned the mark DIRTY
MONEY.
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Decision: The petition for cancellation is
granted. Registration No. 2814750 will be cancelled in
due course.