Universal Protein Supplements Corporation dba Universal Nutritionv.Michael Irvin

Trademark Trial and Appeal Board

Nov 20, 2019

92064791 (T.T.A.B. Nov. 20, 2019)

LTS
November 20, 2019

Cancellation No. 92064791

Universal Protein Supplements Corporation
dba Universal Nutrition

v.
Michael Irvin

Before Zervas, Bergsman, and English,
Administrative Trademark Judges.

By the Board:

This case comes up on the following motions: (1) Respondent’s motion, filed
January 16, 2019, for summary judgment on Petitioner’s claim of likelihood of
confusion (27 TTABVUE), and Petitioner’s cross-motion, filed July 26, 2019, on the
same claim (46 TTABVUE); and (2) Petitioner’s motion, filed February 15, 2019, for
summary judgment on Petitioner’s claim of nonuse (27 TTABVUE).1 Respondent did
not file a brief in opposition to Petitioner’s cross-motion, but because Respondent
seeks summary judgment in his favor on the issue of likelihood of confusion, we do

1 Petitioner’s change of correspondence address, filed July 25, 2019, is noted, and the Board’s
records have been updated accordingly.
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. 92064791

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not treat Petitioner’s cross-motion as conceded.2 Petitioner’s motion for summary
judgment on its nonuse claim is fully briefed.
I. Background
Respondent owns Registration No. 5073489 for the mark TRAIN LIKE AN
ANIMAL PLAY LIKE A BEAST, in standard characters, for “athletic apparel,
namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; short-
sleeved or long-sleeved t-shirts” in International Class 25.3 In its second amended
petition to cancel, Petitioner alleges prior use and ownership of a number of
registered marks consisting of, or comprising, the term ANIMAL, including the
following marks (collectively, “Petitioner’s Marks”):4
• for “supplements, namely, dietary food supplements, dietary
supplements, food supplements, herbal supplements, meal replacement
and dietary supplement drink mixes, mineral nutritional supplements,
mineral supplements, nutritional supplements, nutritional supplement
drink mix, vitamin and mineral supplements, vitamin supplements, meal
replacement bars” in International Class 5; and “clothing, namely, hats,

2 Respondent also moved for summary judgment on Petitioner’s claim of dilution. In a motion
filed February 15, 2019, Petitioner withdrew its dilution claim, and on June 26, 2019, the
Board dismissed Petitioner’s dilution claim with prejudice. 40 TTABVUE 12. As such,
Respondent’s motion for summary judgment is moot as to Petitioner’s dilution claim.
3 Issued November 1, 2016. The underlying application was filed October 11, 2012 under
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Respondent’s claim of a bona
fide intent to use the mark.
4 Petitioner attached current status and title copies of its pleaded registrations to its second
amended petition to cancel. 34 TTABVUE 18-190. See Trademark Rule 2.122(d) (”A
registration of the … petitioner pleaded in [a] petition to cancel will be received in evidence
and made part of the record if the … petition is accompanied by an original or photocopy of
the registration prepared and issued by the Office showing both the current status of and
current title to the registration, or by a current copy of information from the electronic
database records of the Office showing the current status and title of the registration.”).
Cancellation No. 92064791

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caps, bottoms, tops, shorts, pants, shirts, sweat shirts, sweat pants, sweat
shorts, sweat jackets” in International Class 25;5
• ANIMAL, in standard characters, for “clothing, namely, hats, caps,
bottoms, tops, shorts, pants, shirts, sweat shirts, sweat pants, sweat shorts,
sweat jackets” in International Class 25; and “on-line retail store services
featuring health food products, clothing, and sports gear” in International
Class 35;6
• for “nutritional supplements for human consumption” in
International Class 5; and “clothing, namely, hats, caps, bottoms, tops,
shorts, pants, shirts, sweat shirts, sweat pants, sweat shorts, sweat jackets”
in International Class 25;7
• ANIMAL PAK, in standard characters, for “dietary food supplements; a
nutritional supplement comprised of but not limited to vitamins, minerals
and training nutrients” in International Class 5;8
• ANIMAL STAK, in standard characters, for “dietary food supplements; a
nutritional supplement comprised of but not limited to vitamins, minerals,
amino acids, and training nutrients” in International Class 5;9
• ANIMAL CUTS, in standard characters, for “dietary food supplements; a
nutritional supplement comprised of but not limited to vitamins, minerals,
amino acids, herbs, and training nutrients” in International Class 5;10
• ANIMAL FLEX, in standard characters, for “nutritional supplements for
humans” in International Class 5;11

5 Registration No. 3281904; issued August 21, 2007; renewed.
6 Registration No. 4427966; issued November 5, 2013; Section 8 & 15 declarations accepted
and acknowledged.
7 Registration No. 4427967; issued November 5, 2013.
8 Registration No. 2437306; issued March 20, 2001; renewed.
9 Registration No. 2594433; issued July 16, 2002; renewed.
10 Registration No. 2784232; issued November 18, 2003; renewed.
11 Registration No. 3227943; issued April 10, 2007; renewed.
Cancellation No. 92064791

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• ANIMAL PUMP, in standard characters, for “nutritional supplements for
humans” in International Class 5;12
• ANIMAL NITRO, in standard characters, for “dietary and nutritional
supplements” in International Class 5;13
• ANIMAL, in standard characters, for “nutritional supplements for human
consumption” in International Class 5;14
• ANIMAL BARBELL CLUB, in standard characters, for “social club
services, namely, arranging, organizing, and hosting social events, get-
togethers, and parties for club members in the field of sports nutrition and
exercise; entertainment services in the nature of a sports nutrition and
exercise club” in International Class 41;15
• ANIMAL TEST, in standard characters, for “dietary food supplements for
humans and not for animals; nutritional supplements for humans and not
for animals” in International Class 5;16
• ANIMAL PM, in standard characters, for “dietary and nutritional
supplements for human consumption” in International Class 5;17
• ANIMALPAK.COM, in standard characters, for “on-line retail store
services featuring health food products, clothing, and sports gear” in
International Class 35;18
• ANIMAL JUICED AMINOS, in standard characters, for “nutritional
supplements for human consumption containing amino acids” in
International Class 5;19

12 Registration No. 3227727; issued April 10, 2007; renewed.
13 Registration No. 3282200; issued August 21, 2007; renewed.
14 Registration No. 3439799; issued June 3, 2008; renewed.
15 Registration No. 3492459; issued August 26, 2008; renewed.
16 Registration No. 3577109; issued February 17, 2009; renewed.
17 Registration No. 3871542; issued November 2, 2010; Section 8 & 15 declarations accepted
and acknowledged.
18 Registration No. 4205268; issued September 11, 2012; Section 8 & 15 declarations accepted
and acknowledged.
19 Registration No. 4825634; issued October 6, 2015.
Cancellation No. 92064791

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• ANIMAL WHEY, in standard characters, for “nutritional supplements for
human consumption made with whey protein” in International Class 5;20
• for “mugs” in International Class 21;21
• for “plastic water bottles sold empty” in International Class
21;22
• for “duffle bags” in International Class 18 and “plastic cups”
in International Class 21;23
• ANIMAL, in standard characters, for “digital media, namely, DVDs
featuring fitness and exercise instruction” in International Class 9;
“posters” in International Class 16; “duffle bags” in International Class 18;
“coffee mugs; plastic cups; plastic water bottles sold empty” in International
Class 21; “cloth banners” in International Class 24; “exercise equipment,
namely, straps for weight lifting” in International Class 28; and “providing
non-downloadable electronic publications, namely, books, magazines, and
newsletters in the field of fitness and exercise nutrition; providing non-
downloadable videos in the field of fitness and exercise nutrition” in
International Class 41;24
• for “digital media, namely, DVDs featuring fitness and exercise
instruction” in International Class 9; “posters” in International Class 16;
“duffle bags” in International Class 18; “exercise equipment, namely, straps
for weight lifting” in International Class 28; and “providing non-
downloadable electronic publications, namely, books, magazines, and

20 Registration No. 4875788; issued December 22, 2015.
21 Registration No. 4954939; issued May 10, 2016.
22 Registration No. 4954940; issued May 10, 2016.
23 Registration No. 4954937; issued May 10, 2016.
24 Registration No. 4981763; issued June 21, 2016.
Cancellation No. 92064791

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newsletters in the field of fitness and exercise nutrition; providing non-
downloadable videos in the field of fitness and exercise nutrition” in
International Class 41;25
• ANIMAL MASS, in standard characters, for “nutritional supplements” in
International Class 5;26
• ANIMAL FURY, in standard characters, for “powdered nutritional
supplement drink mix for human consumption; dietary supplement drink
mixes in powdered form for human consumption” in International Class 5;27
• ANIMAL SNAK, in standard characters, for “nut-based food bars; peanut
and nut based food bars” in International Class 29; and “ready to eat, cereal
derived food bars, food bars containing milk protein, oats, and brown rice”
in International Class 30;28 and
• ANIMAL ENERGY, in standard characters, for “energy drinks” in
International Class 32.29
34 TTABVUE 7-12, ¶¶ 1-11. Petitioner further alleges that: (1) “[s]ince 1983,
[Petitioner] has adopted and continuously used a family of ANIMAL marks and
specific individual ANIMAL marks on a variety of products and services,” including
supplements, bodybuilding and athletic apparel, and bodybuilding and athletic
services (34 TTABVUE 7, ¶ 2); (2) “[Petitioner’s] Marks are distinctive of
[Petitioner’s] products and services and are well known, and valuable goodwill has
been generated in [Petitioner’s] Marks” (id. at 12, ¶ 9); (3) “[Petitioner’s] Marks have
been so extensively used and advertised together that the ANIMAL family ‘surname’
is recognized by consumers as an identifying trademark or service mark in and of

25 Registration No. 5036467; issued September 6, 2016.
26 Registration No. 5142480; issued February 14, 2017.
27 Registration No. 5183498; issued April 11, 2017.
28 Registration No. 5482251; issued May 29, 2018.
29 Registration No. 5586999; issued October 16, 2018.
Cancellation No. 92064791

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itself when it appears in a composite for supplements, bodybuilding and athletic
apparel, and bodybuilding and athletic services” (id. at 12, ¶ 10); and (4) “[a]s a result,
[Petitioner’s] Marks constitute an easily recognizable family of marks that identify
[Petitioner] as the source of supplements, bodybuilding and athletic apparel, and
bodybuilding and athletic services” (id. at 12, ¶ 11).
As grounds for cancellation, Petitioner pleads claims of: (1) priority and likelihood
of confusion under Section 2(d) of the Trademark Act; and (2) nonuse. Id. at 12-15,
¶¶ 13-29. In his answer, Respondent denies the salient allegations in the second
amended petition to cancel. 41 TTABVUE.
II. Motions for Summary Judgment
A. Legal Standard
Summary judgment is appropriate when there is no genuine dispute as to any
material fact and the moving party is entitled to judgment as a matter of law. See
Fed. R. Civ. P. 56(a). The Board may not resolve disputes of material fact; it may only
ascertain whether a genuine dispute regarding a material fact exists. See Lloyd’s
Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993);
Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed.
Cir. 1992). A factual dispute is genuine if, on the evidence of record, a reasonable fact
finder could resolve the matter in favor of the non-moving party. Opryland USA Inc.
v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992);
Olde Tyme Foods, Inc., 22 USPQ2d at 1544. The nonmoving party may not rest on
the mere allegations of its pleadings and assertions of counsel, but must designate
Cancellation No. 92064791

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specific portions of the record or produce additional evidence showing the existence
of a genuine dispute of material fact for trial. See Venture Out Props. LLC v. Wynn
Resort Holdings LLC, 81 USPQ2d 1887, 1890 (TTAB 2007).
When cross-motions for summary judgment are presented, the Board evaluates
each motion on its own merits and resolves all doubts and inferences against the
party whose motion is being considered. Ava Ruha Corp. v. Mother’s Nutritional Ctr.,
Inc., 113 USPQ2d 1575, 1579 (TTAB 2015). The mere fact that both parties have filed
motions for summary judgment does not necessarily mean that there are no genuine
issues of material fact, and that trial is unnecessary. See Univ. Book Store v. Univ. of
Wis. Bd. of Regents, 33 USPQ2d 1385, 1389 (TTAB 1994).
B. Standing
“To obtain cancellation of the registration, the petitioning party must show both
standing and valid grounds for cancellation.” Herbko Int’l v. Kappa Books, 308 F.3d
1156, 64 USPQ2d 1375, 1377 (Fed. Cir. 2002). As to standing, “[a] petitioner is
authorized by statute to seek cancellation of a mark where it has ‘both a ‘real interest’
in the proceedings as well as a ‘reasonable’ basis for its belief of damage.” Empresa
Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed.
Cir. 2014) (quoting ShutEmDown Sports, Inc. v. Lacy, 102 USPQ2d 1036, 1041 (TTAB
2012) and citing Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir.
1999)).
The status and title copies attached to the second amended petition to cancel for
Petitioner’s prior pleaded registrations for marks containining the term ANIMAL for
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various goods including articles of clothing establish Petitioner’s real interest and
standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844
(Fed. Cir. 2000) (petitioner’s prior registrations establish “direct commercial interest
and its standing to petition for cancellation”); Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Furthermore, where a plaintiff
has established standing as to at least one properly pleaded ground, it has satisfied
the standing requirement for any other legally sufficient ground. See, e.g., Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727-28
(Fed. Cir. 2012) (“[O]nce an opposer meets the requirements for standing, it can rely
on any of the statutory grounds for opposition set forth in 15 U.S.C. § 1052.”);
Petróleos Mexicanos v. Intermix S.A., 97 USPQ2d 1403, 1405 (TTAB 2010).
On this record, there is no genuine dispute with respect to Petitioner’s standing.
Accordingly, Petitioner’s cross-motion for summary judgment is granted with
respect to Petitioner’s standing.
C. Likelihood of Confusion
For either party to prevail on summary judgment with respect to Petitioner’s
Section 2(d) claim, the party must demonstrate that there is no genuine dispute of
material facts as to whether the contemporaneous use of the parties’ respective marks
on their respective goods would be likely to cause confusion or mistake or to deceive
consumers regarding the source of the goods. See Hornblower & Weeks, Inc. v.
Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1735 (TTAB 2001). The party seeking
Cancellation No. 92064791

10
judgment in its favor carries the burden of proof. See Celotex Corp. v. Catrett, 477
U.S. 317, 323-24 (1986).
Likelihood of confusion involves an analysis of all of the probative facts in evidence
that are relevant to the thirteen factors set forth in In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). See also M2
Software Inc. v. M2 Commc’ns. Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir.
2006); Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005); In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 UPSQ2d 1201, 1203 (Fed. Cir. 2003). Typically, the two
primary factors are the similarity or dissimilarity of the marks, and the similarity or
dissimilarity of the goods and services. Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In certain cases, the Board may
find that a single DuPont factor is dispositive of likelihood of confusion. Citigroup Inc.
v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011);
Kellogg Co. v. Pack’Em Enters. Inc., 14 USPQ2d 1545, 1550 (TTAB 1990), aff’d, 951
F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).
Respondent argues that he is entitled to summary judgment on Petitioner’s
likelihood of confusion claim because the parties’ marks are so dissimilar under the
first DuPont factor (i.e., the similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial impression). 27 TTABVUE 6-
8. In support of his motion, Respondent attached a copy of the involved registration
(27 TTABVUE 12-14), a copy of Petitioner’s petition to cancel and exhibits thereto
Cancellation No. 92064791

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(id. at 15-127), and Respondent’s answer (id. at 128-138).30 Respondent concedes that
“[f]or purposes of this Motion only … this Board may presume that all other relevant
[DuPont] factors favor Petitioner.” Id. at 5. With respect to the alleged dissimilarity
between the marks, Respondent argues, inter alia, that: (1) the parties’ marks are of
a different length and share only one common word, ANIMAL, which “is nestled in
the middle of [Respondent’s] phrase” (id. at 6-7); (2) the word ANIMAL “plays a
relatively minor role in the overall commercial impression” of Respondent’s mark (id.
at 7); and (3) the word “ANIMAL is a common English word” (id.).
In response, Petitioner attaches definitions of the word “beast” (46 TTABVUE 19-
24), a declaration from the president of Petitioner attesting to Petitioner’s use of
Petitioner’s Marks (id. at 25-28), and representative uses of Petitioner’s Marks on the
internet (id. at 29-62)31 and argues, inter alia, that: (1) the parties’ marks are similar
in sound and appearance because the word ANIMAL is the dominant portion of the
parties’ respective marks (id. at 5-11); (2) Respondent fails to consider use of the word
ANIMAL in the context of the parties’ goods, and when the context of the parties’
goods are considered, the parties’ respective marks have the same commercial
impression (id. at 11-12 and 16); and (3) in view of Respondent’s concession that all
other DuPont factors favor Petitioner, including the strength and fame of Petitioner’s

30 The involved registration, petition to cancel, and answer are already of record. See
Trademark Rule 2.122(b). Filing these documents as exhibits unnecessarily enlarges the case
file. The better practice would be to cite to the TTABVUE docket entry and page numbers
where the relevant material appears. See Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d
1953, 1955 (TTAB 2008) (stating the Board’s preference for citations).
31 Petitioner filed the same “Exhibit C” at both 46 TTABVUE 29-62 and 47 TTABVUE.
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Marks, “consumers are likely to perceive the commercial impression of [Respondent’s]
Mark and [Petitioner’s] family of Marks to be the same, individually and collectively”
(id. at 16).
After reviewing the parties’ submissions, and drawing all justifiable inferences in
favor of the non-movant when considering each motion for summary judgment, we
find that neither party has met their burden of establishing that there is no genuine
dispute as to material facts and that neither party is entitled to judgment as a matter
of law on the claim of likelihood of confusion. At a minimum, there are genuine
disputes of material fact regarding the similarities or dissimilarities between the
parties’ marks in connotation and commercial impression, and the strength of
Petitioner’s Marks.
Accordingly, the parties’ cross-motions for summary judgment on Petitioner’s
likelihood of confusion claim are denied.32
D. Nonuse
“It is clear that an applicant cannot obtain a registration under Section 1 of the
Trademark Act for goods or services upon which it has not used the mark. 15 U.S.C.
§ 1051.” Grand Canyon West Ranch, LLC v. Hualapai Tribe, 78 USPQ2d 1696, 1698
(TTAB 2006). In an application based on an applicant’s intent to use the mark in
commerce under Section 1(b) of the Trademark Act, the applicant must begin using

32 Petitioner will have the burden, at trial, of proving priority and likelihood of confusion by
a preponderance of the evidence. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1848 (Fed. Cir. 2000); Cerveceria Centroamericana, S.A. v. Cerveceria India Inc., 892
F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989); Brewski Beer Co. v. Brewski Bros. Inc.,
47 USPQ2d 1281, 1284 (TTAB 1998).
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the mark in commerce on or in connection with the goods or services listed in the
application as of the expiration of its time to file a statement of use, including any
extensions of the initial six-month period. See 15 U.S.C. § 1051(d); Trademark Rule
2.88(a)(1); Ashland Licensing & Intellectual Prop. LLC v. Sunpoint Int’l Grp. USA
Corp., 119 USPQ2d 1125, 1131 (TTAB 2016). Where an applicant has not used the
mark on any of the goods listed in its application as of the expiration of its time to file
a statement of use, the application is rendered void ab initio. See Embarcadero Techs.,
Inc. v. Delphix Corp., 117 USPQ2d 1518, 1524-26 (TTAB 2016).
A notice of allowance issued in connection with Respondent’s underlying
application on August 27, 2013. Respondent filed a statement of use on August 24,
2016.
In support of its motion for summary judgment on its nonuse claim, Petitioner
argues that: (1) Respondent has not produced any discovery that evidences use of
Respondent’s mark in commerce (35 TTABVUE 5 and 18-19); (2) Petitioner
commissioned an investigation with Marksmen Brand Protection Services, and the
investigator found no online use of the mark, including on such platforms as
Amazon.com, eBay.com, Twitter, Facebook, or the personal website or other websites
where Respondent sells or offers goods or services; instead, the investigator only
found a “single [Twitter] post suggesting that [Respondent] was starting a new
program exercising at a gym and included the words and hashtags ‘#TRAIN #Like an
#animal #play like a #beast’” (id. at 5-6; see also id. at 11-13); (3) Respondent’s
specimen of use does not show use in commerce because the mark is used as two
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different phrases, not a single, unitary mark, including that it is separated between
the front and back of a t-shirt depicted in the specimen of use and both the t-shirt
and hangtag use the “TM” symbol next to both phrases (id. at 13-17); (4) Respondent’s
specimen of use does not show actual use in commerce because there is no means to
buy Respondent’s product (id. at 17); and (5) Respondent’s specimen of use does not
show actual use in commerce because it is unclear if it is just a digital recreation of
the mark, and a hangtag itself does not prove use without supporting testimony (id.
at 17-18).
In response, Respondent argues that Petitioner’s motion for summary judgment
on its claim of nonuse should be denied because “[Respondent] was using his mark …
in commerce and in connection [with] ‘athletic apparel,’ namely ‘shirts’ and ‘t-shirts,’
when he filed his statement to allege use on August 24, 2016.” 43 TTABVUE 2. In
support of his response, Respondent attached a declaration from Steve Mandell,
Respondent’s “legal counsel and business agent,” who claims to have personal
knowledge of Respondent’s use of Respondent’s mark in commerce. 44 TTABVUE. In
that declaration, Mr. Mandell avers that: (1) he procured the specimen from the
website located at www.trainlikeananimalplaylikeabeast.com; (2) he registered the
domain on August 11, 2016, on Respondent’s behalf, for the purpose of selling the
athletic apparel listed in the registration; and (3) as shown in the specimen, a
consumer could order a shirt bearing Respondent’s mark on the website. Id. at 2-3.
Mr. Mandell also attached a photograph of a t-shirt bearing the hangtag. 45
TTABVUE 7. Respondent concedes that he did not use Respondent’s mark on all of
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the recited goods, and argues that his failure to use the mark on all of the recited
goods does not void the registration where Respondent used the mark on some of the
goods when he filed his statement of use. 43 TTABVUE 3-5. Respondent consents to
deleting the goods for which he has not used the mark, namely, “pants, jackets,
footwear, hats and caps, athletic uniforms.” Id. at 5.
In reply, Petitioner argues that: (1) Respondent has failed to provide any evidence
of use of Respondent’s mark (48 TTABVUE 3); (2) Mr. Mandell’s declaration should
be given little or no weight because he was not legal counsel of record in this
proceeding or the underlying application, the declaration includes hearsay
statements, and Respondent fails to provide corroborating evidence to support the
averments in the declaration (id. at 4); (3) the photo of the t-shirt attached to Mr.
Mandell’s declaration fails to show use of a single, unitary mark and at most shows
token use (id. at 4-5); and (4) Respondent’s failure to use his mark on all of the recited
goods when he filed his statement of use, as opposed to allegedly only using it on some
of the recited goods, renders the registration void ab initio (id. at 5-7). In the event
the Board does not grant Petitioner’s motion, and in light of Respondent’s admission
that some goods identified in the registration have not been used in commerce in
connection with the mark, Petitioner asks that the Board allow Petitioner to amend
its petition to cancel to include a fraud claim and also require Respondent to delete
the goods from the registration for which the mark has not been used.
Based on the submissions of the parties, we find that Petitioner has failed to meet
its burden of demonstrating that there is no genuine dispute of material fact, except
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as to the goods for which Respondent admits nonuse. Respondent’s failure to use the
mark on some of the goods is not sufficient to cancel the registration as to
International Class 25 in its entirety. See Medinol Ltd. v. Neuro Vasx Inc., 67
USPQ2d 1205, 1208 n.9 (TTAB 2003) (noting that if the finding of fraud were
overturned, the registration, which was based on an intent-to-use application, would
have to be amended to delete the goods for which the mark had not been used); cf.
Grand Canyon West Ranch LLC, 78 USPQ2d 1696, 1697-98 (TTAB 2006) (a party’s
nonuse of its mark on some of its identified services does not invalidate its
application, and that party may cure this error by amending its application to delete
those services for which there has been no use).
The cases Petitioner cites in its reply brief at 48 TTABVUE 6-7 for the proposition
that Respondent’s mark should be canceled in its entirety are inapposite because they
either concern situations where nonuse was found for all of the goods at issue, or they
concern allegations that the applicant lacked a bona fide intent to use the mark when
filing its application, not allegations of nonuse at the time the statement of use was
due.
Apart from the specific goods for which Respondent admits he has yet to use the
mark, there remains a genuine dispute as to whether Respondent was using his mark
in commerce on the other identified goods when his time to file a statement of use
expired. Section 45 of the Trademark Act states that a mark shall be deemed to be
used in commerce on goods when “it is placed in any manner on the goods ... and the
goods are sold or transported in commerce”; and that “commerce” includes “all
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commerce which may lawfully be regulated by Congress.” “‘[C]ommerce’ includes
intrastate transactions that affect interstate or foreign commerce.” In re Silenus
Wines, Inc., 557 F.2d 1977, 194 USPQ 261, 266-267 (CCPA 1977). The issue is
whether the transactions exert “a substantial economic effect on interstate commerce,
and irrespective of whether such effect is what might at some earlier time have been
defined as ‘direct’ or ‘indirect.”‘ Wickard v. Filburn, 317 U.S. 111, 125 (1942).
Here, Mr. Mandell, Respondent’s “legal counsel and business agent,” avers that
he has personal knowledge of Respondent’s use of Respondent’s mark in connection
with shirts when Respondent filed his statement of use on August 24, 2016, including
that Mr. Mandell procured the specimen submitted with the application from the
website www.trainlikeananimalplaylikeabeast.com where consumers could order
shirts bearing Respondent’s mark. 44 TTABVUE 2-3. Notwithstanding Petitioner’s
criticism of the Mandell Declaration, we find that, when viewing the evidence in a
light most favorable to Respondent, and drawing all justifiable inferences in
Respondent’s favor, there remains a genuine dispute with respect to whether
Respondent was using his mark in connection with shirts as of the expiration of his
time to file his statement of use.33 Accordingly, Petitioner is not entitled to judgment

33 Petitioner’s contentions concerning the acceptability of Respondent’s specimen are
unavailing. Respondent’s purported failure to meet ex parte examination requirements as to
the specimens cannot form the basis of an inter partes proceeding on the registrability of the
mark. Saint-Gobain Abrasives, Inc. v. Unova Indus. Automation Sys., Inc., 66 USPQ2d 1355,
1359 (TTAB 2003) (“It would be manifestly unfair to penalize defendant for non-compliance
with a requirement that was never made by the Examining Attorney.”). The Board has held
that questions involving the adequacy of specimens are solely a matter for the ex parte
examination process. See Century 21 Real Estate Corp. v. Century Life of Am., 10 USPQ2d
2034, 2035 (TTAB 1989) (“[I]t is not the adequacy of the specimens, but the underlying
question of service mark usage which would constitute a proper ground for opposition.”).
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as a matter of law on its entire claim of nonuse. However, Petitioner is entitled to a
partial grant of summary judgment on its nonuse claim as to those goods that
Respondent admits nonuse. As such, Petitioner’s motion for summary judgment on
Petitioner’s claim of nonuse is granted in part to the extent that the following goods
shall be deleted from Respondent’s registration: “pants, jackets, footwear, hats and
caps, athletic uniforms.” See Grand Canyon West Ranch LLC, 78 USPQ2d at 1698.
Petitioner’s motion on its claim of nonuse is otherwise denied.
To the extent Petitioner requests leave to file a third amended petition to cancel
to add a claim of fraud, that request is denied without prejudice. Petitioner
requested such leave for the first time in its reply brief so Respondent has not had an
opportunity to respond to the request, and Petitioner did not attach a proposed
amended petition to cancel. If Petitioner believes that it has facts to support a fraud
claim, Petitioner must file a motion for leave to amend and include a copy of its
proposed amended petition for cancellation. Fed. R. Civ. P. 15(a)(2).
III. Summary
Petitioner’s cross-motion for summary judgment is granted with respect to
Petitioner’s standing. The parties’ cross-motions on Petitioner’s claim of likelihood of
confusion under Section 2(d) of the Trademark Act are denied.34

34 The fact that we have identified certain genuine disputes as to material facts should not
be construed as a finding that these are necessarily the only disputes which remain for trial.
Additionally, the parties should note that the evidence submitted in connection with their
motions for summary judgment is of record only for consideration of the motions. To 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).
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Petitioner’s motion for summary judgment on Petitioner’s claim of nonuse is
granted in part and denied in part. The following goods shall be deleted from
Registration No. 5073489: “pants, jackets, footwear, hats and caps, athletic
uniforms.” See Grand Canyon West Ranch LLC, 78 USPQ2d at 1698 (“Opposer’s
motion for summary judgment is granted only to the extent that judgment is entered
against applicant on the ground that applicant did not make use of its mark in
connection with the following services ….”).
Respondent’s identification of goods will be amended as follows (deletions shown
in strikethrough):
From: Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps,
athletic uniforms; Short-sleeved or long-sleeved t-shirts
To: Athletic apparel, namely, shirts; Short-sleeved or long-sleeved t-shirts
IV. Proceedings Resumed
Proceedings are resumed. Dates are reset on the following schedule:
Expert Disclosures Due 12/20/2019
Discovery Closes 1/19/2020
Plaintiff’s Pretrial Disclosures Due 3/4/2020
Plaintiff’s 30-day Trial Period Ends 4/18/2020
Defendant’s Pretrial Disclosures Due 5/3/2020
Defendant’s 30-day Trial Period Ends 6/17/2020
Plaintiff’s Rebuttal Disclosures Due 7/2/2020
Plaintiff’s 15-day Rebuttal Period Ends 8/1/2020
Plaintiff’s Opening Brief Due 9/30/2020
Defendant’s Brief Due 10/30/2020
Plaintiff’s Reply Brief Due 11/14/2020
Request for Oral Hearing (optional) Due 11/24/2020

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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. 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). 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).