St. Denis Parishv.Diana Van Straten

Trademark Trial and Appeal Board

Sep 28, 2011

No. 92051378 (T.T.A.B. Sep. 28, 2011)

Mailed: September 28, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

St. Denis Parish

v.

Diana Van Straten
_____

Cancellation No. 92051378
_____

Anthony M. Verna III of Law Offices of Anthony Verna, for
Diana Van Straten.

Thomas J. Connelly of Wilhelm Law Service S.C., for St.
Denis Parish.
_____

Before Walters, Cataldo and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

This is a cancellation proceeding in which St. Denis
Parish (petitioner) seeks to cancel Registration No.
3552280, owned by Diana Van Straten (respondent), for WORLD
CHAMPIONSHIP CABBAGE CHUCK, for “charitable fund raising by
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92051378
2
means of an entertainment event where competitors throw
cabbages.”1
In the petition for cancellation, petitioner asserts
various grounds. These include fraud on the PTO. (petition
at Para. 10). Petitioner further asserts priority and
likelihood of confusion with petitioner’s prior common-law
rights in the mark “WORLD CHAMPIONSHIP CABBAGE CHUCK” for
“charitable fund raising.” Id. at Para. 12. A third claim
asserted by petitioner is nonuse. In Paragraph 4 of the
peitition, petitioner asserts that “there has been no lawful
use by Respondent of ‘WORLD CHAMPIONSHIP CABBAGE CHUCK’ for
charitable fund raising as a trademark in the United
States.” Id. at Para. 4. In Paragraph 6, petitioner
asserts, “Petitioner is informed and believes, and on that
basis alleges that Respondent has never used the mark ‘WORLD
CHAMPIONSHIP CABBAGE CHUCK’ in commerce for charitable fund
raising apart from volunteering her time to Petitioner.”
Id. at Para. 6. In Paragraph 7, petitioner asserts,
“Petitioner is informed and believes, and on that basis
alleges that Respondent is not the owner of the mark ‘WORLD
CHAMPIONSHIP CABBAGE CHUCK’ and is not [sic] and never has
used the mark in commerce.” Id. at Para. 7. We construe

1 Registered on the Supplemental Register on December 23, 2008,
with a Statement of Use filed September 17, 2008, alleging first
use on February 15, 2006, and first use in commerce on September
30, 2006.

Cancellation No. 92051378
3
these “nonuse” claims in Para. 6 and 7 as setting forth
claims of lack of ownership of the mark based on nonuse.
Respondent filed an answer denying the salient
allegations of the petition. Petitioner filed a brief.
Respondent did not.
The record in this case includes the pleadings and the
file of the involved registration as well as the two
testimonial depositions submitted by petitioner, of Gene
Gerald Diermeier, “plumber” and “lifelong member of the
parish” of petitioner as well as of Laura Tews, “Business
Manager” of the parish for petitioner, along with the
exhibits thereto. Both depositions were taken on September
22, 2010. Respondent did not submit any evidence or
testimony.
Standing

Petitioner’s business manager testified that petitioner
has been running an annual charitable event called the WORLD
CHAMPIONSHIP CABBAGE CHUCK since 2006, with the fifth event
taking place in 2010 (Tews depo. at 8). The exhibits to the
Tews depo confirm the continuity of the event. Id. at Exs.
H, T, AB, BB, CC. We therefore consider that the record
provides a sufficient showing of petitioner’s standing. 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);
Cancellation No. 92051378
4
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.
Lack of Ownership Based on Nonuse
Petitioner asserts a claim of lack of ownership based
on nonuse. In particular, petitioner pleaded an allegation
that “Respondent is not the owner of the mark ‘WORLD
CHAMPIONSHIP CABBAGE CHUCK’ and is not [sic] and never has
used the mark in commerce.” (Petition at Para. 7). The
genesis of this claim is petitioner’s allegation that
petitioner is the true owner of the mark and that respondent
has never used the mark outside the auspices of the control
of petitioner. In this regard, as petitioner alleges,
respondent should never have filed a trademark registration
in her name, since the ownership of the mark rests with
petitioner. See In re Wella A.G., 858 F.2d 725, 8 USPQ2d
1365, 1368 (Fed. Cir. 1988), where the Court of Appeals for
the Federal Circuit, our primary reviewing court, noted “the
right to register these marks is a statutorily conferred
right that may only be exercised by the owner of the mark
sought to be registered.” Accordingly, to show lack of
ownership and nonuse by respondent of the mark, petitioner
submitted the deposition testimony of two persons familiar
Cancellation No. 92051378
5
with the relationship between petitioner and respondent and
with the origin of the mark WORLD CHAMPIONSHIP CABBAGE
CHUCK, as used for charitable fund raising.
Petitioner is the Catholic church in Shiocton
Wisconsin, a rural town of about 1,000, with a parish of
about 240 families. (Diermeier depo. at 11). Respondent
had been a member of the parish. Id. at 4. Every year, the
parish had an annual picnic fundraiser. Id. Respondent
approached the fundraising committee in 2005 and suggested a
new idea for the annual fundraiser, “throwing cabbage.”
Id.; (Tews depo at 8). The committee liked the idea and
added respondent to the committee. (Diermier depo. at 5-6).
At first, the church was going to call it the “cabbage
chunk.” Id. at 13. Within a few months, during the
committee planning for the 2006 event, however, with input
from various committee members, the name evolved. Id.
We were going to originally call it the
cabbage chunk, and at one of the very first
meetings I know Laura Tews, she takes care of
our finances, she made a mistake and it was
spelled cabbage chuck . . . they decided this
has a nice ring to it. . . . As far as the
world championship, that just got added in
through further meetings. It just got added
in there, and that’s how it evolved.
(Diermier depo. at 13)

This testimony on the evolution of the name WORLD
CHAMPIONSHIP CABBAGE CHUCK as having been created by group
participation of various members of the church committee was
echoed by Ms. Tews.
Cancellation No. 92051378
6
In the midst of these meetings, actually, I made a
mistake, and I called it cabbage chuckin. And I
did that a couple of times, and members of the
committee were correcting me, it’s not chuckin,
it’s chunkin. Somebody said, well, why don’t we
call it chucking, because we are throwing,
chucking cabbages. That’s how I remember it
evolving into cabbage chucking.
(Tews depo. at 15, Ex G2)

Petitioner adopted the mark WORLD CHAMPIONSHIP CABBAGE
CHUCK for its annual charitable fund raiser in 2006.
(Diermeier depo. at 13); (Tews depo. at 15; Ex. G2; Ex H).
Petitioner has been using the mark continuously since then,
and has held annual fundraisers in 2006, 2007, 2008, 2009,
and 2010 using the mark. (Tews depo. at 8; Exs. H; T; AB;
BB; CC). There is no question that petitioner is the party
responsible for all aspects of the annual WORLD CHAMPIONSHIP
CABBAGE CHUCK, held in Shiocton, Wisconsin from 2006
continuously through 2010. Petitioner’s witnesses
testified, with exhibits, that although numerous volunteers
(such as respondent, on several occasions) participated,
petitioner was the party responsible for paying for costs
associated with each such event. (Tews depo at 11 and Ex.
G7). All of the advertisements tout respondent, “St. Denis
Parish,” as the host of the event. (Tews depo., Ex. H, Ex
T, AB, BB, Ex CC). Ms. Tews has also sent out, on behalf of
petitioner, letters thanking people for their participation,
after each event, and begun preparations for the following
year. (Tews depo. at 11, and Ex. I).
Cancellation No. 92051378
7
Respondent suggested the event to petitioner and
participated as a volunteer helper in the first three of
petitioner’s annual fundraisers that used the mark WORLD
CHAMPIONSHIP CABBAGE CHUCK, in 2006, 2007, and 2008.
(Diermier depo. at 8-9); (Tews depo. at 45). However, there
is no evidence that respondent ever independently adopted or
used the mark WORLD CHAMPIONSHIP CABBAGE CHUCK for the
services for which she registered it, “charitable fund
raising by means of an entertainment event where competitors
throw cabbages.” Rather, petitioner’s witness testified
that he did not “know” of respondent having used the mark
for these services apart from the auspices of petitioner’s
event.
Q: Okay. Do you know if Diana Van Straten ever
put on another cabbage tossing event anyplace?
A: Not that I know of.
(Diermier depo. at 10)
To the contrary, the specimen submitted by respondent
in support of her application for registration of the mark
is a flyer showing “St. Denis Parish” as the host of the
2006 WORLD CHAMPIONSHIP CABBAGE CHUCK.
Cancellation No. 92051378
8

This is the same flyer submitted as Ex T to the Tews
depo., which Ms. Tews attested to being an advertisement
Cancellation No. 92051378
9
prepared by petitioner for the first annual WORLD
CHAMPIONSHIP CABBAGE CHUCK held by petitioner for its
charitable fund raising in 2006.
Accordingly, we find that petitioner has set forth a
prima facie case that respondent does not render and has
never rendered the services identified in its registration
in commerce under the mark ‘WORLD CHAMPIONSHIP CABBAGE
CHUCK.’ We further find on this basis that respondent was
not the owner of the mark at the time of filing her
application or any time thereafter.
We further find that respondent has failed to present
any evidence sufficient to rebut petitioner’s prima facie
showing of lack of ownership based on nonuse. As noted
above, respondent did not present any evidence at all at
trial. Respondent’s statements in its answer to the
petition for cancellation, and its exhibits to the answer,
are not evidence of record. See TBMP § 704.06(a) (3rd ed.
2011); Trademark Rule 2.122(c).
For these reasons, we grant the petition for
cancellation on this ground.2
Decision: The petition to cancel is granted on the
ground of lack of ownership based on nonuse.

2 Since we have granted the petition on the ground of lack of
ownership based on nonuse, we do not find it necessary to discuss
the pleaded grounds of “fraud” or “priority and likelihood of
confusion.”