The Leather Guy, LLCv.CGI International, Inc.

Trademark Trial and Appeal Board

Jul 10, 2018

No. 92064726 (T.T.A.B. Jul. 10, 2018)

Mailed: July 10, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

The Leather Guy, LLC
v.
CGI International, Inc.
_____

Cancellation No. 92064726
_____

Cheryl L. Burbach and C. Blair Barbieri of Hovey Williams LLP,
for The Leather Guy, LLC.

R. John Bartz of Bartz & Bartz, P.A.,
for CGI International, Inc.
_____

Before Taylor, Hightower, and Coggins,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
The Leather Guy, LLC (“Petitioner”) petitions to cancel CGI International, Inc.’s
(“Respondent” or “CGI”) registration on the Principal Register of THE LEATHER
GUYS, in typed letters and with “leather” disclaimed, for “cleaning and restoring
leather, vinyl and cloth” in International Class 371 on the grounds of abandonment
and fraud. Finding that Respondent has abandoned the mark, we grant the petition.

1 Registration No. 2711996, issued April 29, 2003; renewed. Before November 2, 2003,
“standard character” drawings were known as “typed” drawings. A typed mark is the legal
equivalent of a standard character mark. TMEP § 807.03(i) (Oct. 2017).
This Opinion Is Not a
Precedent of the TTAB
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I. Record
The record in this case consists of the pleadings and, without any action by the
parties, the file of the involved registration. Trademark Rule 2.122(b)(1), 37 C.F.R.
§ 2.122(b)(1).
Petitioner’s Evidence
Petitioner made of record the testimony declaration of Tracy Brubaker, its co-
founder and co-owner, with Exhibits A through D (7 (confidential) and 8 TTABVUE).
In addition, Petitioner submitted the following documents by notice of reliance:
• Respondent’s responses to certain of Petitioner’s interrogatories and
requests for admission (Exhibits 1 and 2, 9 TTABVUE 7-39). Because
denials of requests for admission cannot be submitted under notice of
reliance, we have considered only Petitioner’s admissions. Trademark Rule
2.120(k)(3)(i), 37 C.F.R. § 2.120(k)(3)(i); see also, e.g., Ayoub, Inc. v. ACS
Ayoub Carpet Serv., 118 USPQ2d 1392, 1395 n.9 (TTAB 2016); Trademark
Trial and Appeal Board Manual of Procedure (TBMP) § 704.10 (June 2018).
• Internet and social media screenshots produced by Respondent dated
January 19, 2017 (Exhibit 3, 9 TTABVUE 40-45), and Internet printouts
from the “Wayback Machine,” web.archive.org (Exhibits 6 and 7, 9
TTABVUE 84-91).
Petitioner also attempted to submit a franchise brochure and license agreement
produced by Respondent in response to requests for production of documents as
Exhibits 4 and 5 to its Notice of Reliance (9 TTABVUE 46-83). Such documents,
however, may not be made of record by notice of reliance in the absence of a
stipulation or admission authenticating them. Trademark Rule 2.122(e), 37 C.F.R.
§ 2.122(e); see also, e.g., TBMP § 403.05(b) (June 2018). Therefore, we have given
Petitioner’s Exhibits 4 and 5 no further consideration.
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Respondent’s Evidence
By Notice of Reliance (10 TTABVUE), Respondent submitted its responses to
certain of Petitioner’s interrogatories and requests for admission (Exhibits 1 and 2,
10 TTABVUE 5-13). Under the Trademark Rules, such discovery responses ordinarily
may be submitted only by the inquiring party. Rule 2.120(k)(5), 37 C.F.R.
§ 2.120(k)(5). An exception exists for responses “which should in fairness be
considered so as to make not misleading what was offered by the receiving or
inquiring party.” Id. Respondent’s Notice of Reliance addresses only why its
responses are relevant, not why an exception should be made for them. See
10 TTABVUE 2-3, ¶¶ 1-2. Nonetheless, Petitioner did not object, so we have
considered the admissions and interrogatory responses submitted by Respondent for
whatever limited probative value they may carry, discussed further infra. As
explained above, under Trademark Rule 2.120(k)(3)(i), we have not considered any of
Respondent’s denials of Petitioner’s requests for admission.
Respondent also filed Internet printouts from the networksolutions.com website,
printed December 7, 2016 (Exhibit 3, 10 TTABVUE 14-15), and thatleatherguy.com,
printed March 21, 2017 (Exhibit 4, 10 TTABVUE 16).
II. Petitioner’s Standing
Standing is a threshold issue that must be proven by the plaintiff in every
inter partes case. In a cancellation proceeding, a petitioner bears the burden of
proving standing as an essential element of its case in chief. Lipton Indus., Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982) (“The facts
regarding standing, we hold, are part of a petitioner’s case and must be affirmatively
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proved.”); Nobelle.com LLC v. Qwest Commc’ns Int’l Inc., 66 USPQ2d 1300, 1303
(TTAB 2003). To establish its standing, Petitioner must prove that it has a “real
interest,” i.e., a “reasonable” basis for its belief of damage. See Empresa Cubana Del
Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014);
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). Standing
may be established through evidence that a petitioner’s trademark application has
been refused registration due to a likelihood of confusion with the mark in the subject
registration. See, e.g., Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd.,
126 USPQ2d 1526, 1532 (TTAB 2018).
Petitioner submitted testimony from its witness, Tracy Brubaker, that it filed
application Serial No. 86949083 for THE LEATHER GUY “to be used in connection
with retail store services, online retail store services and wholesale store services all
featuring leather, hides, leather crafting accessories, conchos and leather hardware,”
and that the USPTO refused the application on July 1, 2016, citing the involved
registration. Brubaker Test. ¶¶ 19-20, 8 TTABVUE 5-6.2 In its answer, Respondent
admitted that Petitioner’s application “is refused because of a likelihood of confusion
with the mark in” the involved registration. Answer ¶ 7, 4 TTABVUE 4. Through
Petitioner’s testimony and Respondent’s admission, we find that Petitioner’s standing
is established.

2 In its brief, Petitioner also cites documents concerning its application submitted as an
exhibit to the Petition for Cancellation. See Petitioner’s Brief at 13, 12 TTABVUE 19. As
Petitioner was advised in the Board’s Order of January 12, 2017, however, the exhibits to its
petition are not evidence on its behalf. 6 TTABVUE 3 n.3.
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III. Abandonment
We first consider Petitioner’s claim that Respondent has abandoned its mark.
Section 45 of the Trademark Act, 15 U.S.C. § 1127, provides in relevant part that a
mark shall be deemed to be “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 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 a nonuse abandonment claim: nonuse of the 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).
Introduction of evidence of nonuse of a mark for three consecutive years
constitutes a prima facie showing of abandonment and triggers a rebuttable
presumption that a mark was abandoned without intent to resume use. Rivard v.
Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376 & n.1 (Fed. Cir. 1998). The
presumption shifts the burden to the party contesting the abandonment to produce
evidence of either (1) use of the mark during the statutory period, or (2) an intent to
resume use. Id. at 1376. The burden of persuasion, however, always remains with the
party asserting abandonment to prove it, by a preponderance of evidence. West Fla.
Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1666 (Fed. Cir. 1994);
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Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d
1307, 1309 (Fed. Cir. 1989).
A. Petitioner’s Prima Facie Case of Abandonment
Petitioner submitted testimony that a private third-party investigation found
that, as of June 20, 2016, Respondent’s mark THE LEATHER GUYS was not used
on Facebook, Twitter, LinkedIn, or on its website www.colorglo.com; and that, “just
prior to the commencement of this proceeding” on October 27, 2016, the website at
the domain owned by Respondent was inaccessible. Brubaker
Decl. ¶¶ 26-27, 8 TTABVUE 7. Petitioner also submitted screenshots showing on
their face that “TheLeatherGuys” joined Twitter in January 2017. Exhibit 3 to
Petitioner’s Notice of Reliance, 9 TTABVUE 41-42. In addition, Petitioner submitted
printouts from the archive.org “Wayback Machine” showing that Respondent’s
domain name redirected to its website www.colorglo.com as of
February 2, 2011, along with printouts from the home page of the colorglo.com site
for each year from 2012 to May 2016 showing no use of the mark THE LEATHER
GUYS. Exhibits 6-7 to Petitioner’s Notice of Reliance, 9 TTABVUE 84-91.
On the facts of this case, we find Petitioner’s evidence of nonuse of Respondent’s
mark for three consecutive years before the petition was filed on October 27, 2016
sufficient to constitute a prima facie showing of abandonment, triggering a rebuttable
presumption that the mark was abandoned without intent to resume use. The burden
now shifts to Respondent to produce evidence of either (1) use of the mark during the
statutory period, or (2) an intent to resume use.
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B. Respondent’s Evidence of Use of THE LEATHER GUYS Mark
A party’s response to an interrogatory is not without evidentiary value, but
generally is viewed as self-serving. ShutEmDown Sports, Inc. v. Lacy, 102 USPQ2d
1036, 1043 (TTAB 2012); cf. Daniel J. Quirk, Inc. v. Village Car Co., 120 USPQ2d
1146, 1151 (TTAB 2016) (discussing evidentiary limitations of party’s own
interrogatory responses). Beyond uncorroborated assertions of use in its
interrogatory responses, which we accord minimal weight, Respondent submitted no
testimony, documents, or any other evidence that it has ever made bona fide use of
THE LEATHER GUYS mark in the ordinary course of trade. As examples of
Respondent’s unsubstantiated claims of use, in response to Interrogatory No. 2,
Respondent stated in part that it “has used the mark in connection with the services
throughout the United States. CGI is headquartered in Minneapolis, Minnesota, and
has franchises in substantially all 50 states of the United States.” Exhibit 1 to
Petitioner’s Notice of Reliance, 9 TTABVUE 8. In response to Interrogatory No. 6,
Respondent stated that: “From the time CGI adopted the mark in 2002 there have
been no periods during which CGI did not make use of the mark in connection with
the services in the United States.” Id., 9 TTABVUE 9. Similarly, in response to
Interrogatory No. 3, Respondent stated that it
has used the mark in connection with the services from
2002 to present. The CGI franchisees have had the
authority to use the mark in connection with the services
from 2002 to present.
Crucially, the response to Interrogatory No. 3 concludes:
CGI does not have information or knowledge of the extent
of the use and the dates of use.
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Id., 9 TTABVUE 8.
The following interrogatories were directed to Respondent’s sales and advertising:
INTERROGATORY NO. 4: State, by calendar quarter,
the dollar volume budgeted and expended by Respondent
to promote Respondent’s Mark as used in connection with
Respondent’s Services.
ANSWER: CGI objects to this interrogatory as seeking
information that is irrelevant and not reasonably
calculated to lead to the discovery of admissible evidence.
Without waiving its objection CGI states that it does not
itemize quarterly dollar volumes for budgeting and
expenses in the promotion of its marks, including THE
LEATHER GUYS mark. CGI expends substantial funds in
the promotion of its marks.
INTERROGATORY NO. 5: State, by calendar quarter,
the approximate income anticipated or received to date
from Respondent’s sales of Respondent’s Services under
Respondent’s Mark in the United States.
ANSWER: CGI objects to this interrogatory as seeking
information that is irrelevant and not reasonably
calculated to lead to the discovery of admissible evidence.
Without waiving its objection CGI states that it does not
itemize[ ] quarterly income anticipated or received for its
services associated with its marks, including THE
LEATHER GUYS mark.
Id., 9 TTABVUE 8-9. Respondent’s blanket objection to these interrogatories on the
grounds of relevance is not well-taken. TBMP § 414(18) (June 2018) and the cases
cited therein explain that: “Annual sales and advertising figures, stated in round
numbers, for a party’s involved goods or services sold under its involved mark are
proper matters for discovery . . . .” While the interrogatories sought quarterly rather
than annual figures, Respondent could have provided its actual promotional expenses
and income by year. Because Respondent did not do so and submitted no specific
advertising figures and no evidence whatsoever concerning its sales for any time
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period, we can only conclude that there are none. See ShutEmDown Sports, 102
USPQ2d at 1044 (finding mark abandoned where registrant’s “uncorroborated
interrogatory responses that he used the mark or that he intends to use it . . . are
insufficient to rebut the presumption of abandonment resulting from the lack of any
advertising, sales, or customers for the five years prior to respondent’s responses to
petitioner’s discovery requests”).
Respondent states in its brief that it “has filed a statement of use, and two
declarations of use and specimens showing the mark as used in commerce during the
course of the ‘996 registration.” Respondent’s Brief at 6, 13 TTABVUE 7. Although
the application file of the subject registration is of record, this evidence is unavailing.
Dates of use must be established by competent evidence, as provided by Trademark
Rule 2.122(b)(2), 37 C.F.R. § 2.122(b)(2): “The allegation in an application for
registration, or in a registration, of a date of use is not evidence on behalf of the
applicant or registrant; a date of use of a mark must be established by competent
evidence.” See also TBMP § 704.03(a) (June 2018) and cases cited at n.3. The
requirement to support allegations of use with competent evidence carries particular
force in this case, in which Respondent admits that it submitted “substantially
similar” specimens of use to obtain and maintain the subject registration in
November 2002, May 2008, and April 2013. Exhibit 1 to Petitioner’s Notice of
Reliance, Response to Interrogatory No. 10, 9 TTABVUE 10.
In its response to Interrogatory No. 9, Respondent stated that its specimens “were
created and used on or before September 2002 and were also in use in 2008 and 2013.”
Id., 9 TTABVUE 10. Although this response, like the others, is unsupported and
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insufficiently detailed to have significant probative value, we will weigh our doubts
in Respondent’s favor and construe it as constituting some evidence of use as of the
date the most recent specimen was submitted, on April 18, 2013. There is no
persuasive evidence that Respondent used or intended to resume use of the mark for
the subsequent three years, before the petition was filed in October 2016.
Respondent also submitted a printout from what its counsel represents to be
Respondent’s franchisee using the mark and domain name THAT LEATHER GUY
(vs. registered mark THE LEATHER GUYS). Exhibit 4 to Respondent’s Notice of
Reliance, 10 TTABVUE 16. There is no evidence that “That Leather Guy” is
Respondent’s franchisee. “Attorney argument is no substitute for evidence.” Enzo
Biochem Inc. v. Gen-Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir.
2005). The printout, moreover, is dated March 21, 2017, five months after the petition
was filed, and the copyright on the page is from 2007. There is no evidence concerning
the extent or duration of use of THAT LEATHER GUY by this claimed franchisee,
including between April 2013 and October 2016.
Finally, the only other evidence Respondent submitted is a Whois.com printout
dated December 7, 2016 – more than a month after the petition was filed – showing
on its face that Respondent owned the domain as of that date,
and that the domain name was created in 2001. Exhibit 3 to Respondent’s Notice of
Reliance, 10 TTABVUE 14-15. The Board has held that a Whois.com printout does
not show trademark use of a mark in commerce for services identified in an
application. United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1046
(TTAB 2014).
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We may consider evidence regarding practices that occurred before or after the
three-year period of nonuse to infer intent to resume use during the three-year period.
See Crash Dummy Movie LLC v. Mattel Inc., 601 F.3d 1387, 94 USPQ2d 1315, 1317
(Fed. Cir. 2010). Evidence of subsequent intent to resume use, however, does not
rebut the presumption of abandonment. See Cerveceria Centroamericana, 13 USPQ2d
at 1313. In this case, there is no evidence that Respondent developed an intent to
resume use of THE LEATHER GUYS mark within the nonuse period from at least
April 2013 to October 2016. We find that Respondent ceased use of THE LEATHER
GUYS mark by April 2013 with no intent to resume use and did not resume use of
the mark during the statutory period.
IV. Conclusion
After carefully considering the briefs and the record as a whole, we conclude that
Petitioner has established by a preponderance of the evidence that Respondent
abandoned THE LEATHER GUYS mark.
V. Fraud
Because we have found that Respondent has abandoned its registered mark, we
need not address Petitioner’s fraud claim. See Multisorb Tech., Inc. v. Pactiv Corp.,
109 USPQ2d 1170, 1171 (TTAB 2013).
Decision: The petition to cancel on the ground of abandonment is granted.