We Votev.LeYeF, LLC

Trademark Trial and Appeal Board

Jun 26, 2020

92066153 (T.T.A.B. Jun. 26, 2020)

Mailed: June 26, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

We Vote

v.

LeYeF, LLC
___

Cancellation No. 92066153
___

Paul A. McLean of Greenberg Traurig, LLP
for We Vote.

LeYeF, LLC, pro se.
______
Before Lykos, Adlin and Coggins,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Respondent LeYeF, LLC owns a Principal Register registration of WEVOTE, in
standard characters, for:
Internet advertising services; providing an internet
website featuring news and information in the field of
national and international politics in International Class
35;

Providing an Internet website portal featuring
entertainment news and information specifically in the
field of Politics; Providing biographical information of
individuals via the Internet for educational purposes;
This Opinion is not a
Precedent of the TTAB
Cancellation No. 92066153
2
Providing news in the nature of current event reporting
relating to Politics via the Internet; Research in the field of
education via the internet in International Class 41; and

Identification verification services, namely, providing
authentication of personal identification information via
secure storage and transmitting such information via the
Internet in International Class 45 (the “Registration”).1

In its amended petition for cancellation, Petitioner We Vote alleges prior use
(including through an alleged predecessor-in-interest) of WE VOTE, and ownership
of an application to register the mark on the Principal Register in standard characters
for, inter alia:
Providing a website featuring customized digital sample
electoral ballots, voter guides, and links to news articles,
videos, and social media postings regarding politics;
Providing a website featuring information regarding
voting, voter registration, voting deadlines, polling
locations; Providing a website featuring digital sample
electoral ballots for potential voters, customized by each
individual user’s geographic location and social network,
with summaries of multiple voter guides for each ballot
item; Providing websites featuring voter guides of
organizations, candidates, public figures and general
population voters; Providing information regarding voting-
related deadlines; Providing information about the process
and history of voting; Providing a website where voters can
publish links to news articles, videos, and social media
postings regarding politics; Providing a website featuring
information and news about voting, voting registration,
voter guides; Providing voter registration by organizing
voter registration drives, providing political news about
elections, candidates, referendums, political issues, and
voting-related services, namely, organizing voter
registration drives, providing information regarding
political issues, knowing how to vote and knowing how to
register to vote to help individuals; Providing information

1 Registration No. 4887987, issued January 19, 2016 from an application filed December 26,
2014.
Cancellation No. 92066153
3
and news regarding voter registration and voting-related
services to help individuals in International Class 35;

Educational services, namely, development and
dissemination of educational printed materials of others;
Charitable services, namely, providing education materials
regarding voting, voting registration, creation of voting
guides, the process and history of voting; Providing on-line
non-downloadable digital publications in the nature of
voter guides of organizations, candidates, public figures
and general population voters; Providing on-line non-
downloadable digital publications in the nature of digital
sample electoral ballots for potential voters, customized by
each individual user's geographic location and social
network, with summaries of multiple voter guides for each
ballot item in International Class 41;

Providing a non-downloadable mobile phone application for
voter guide creation and publication; providing a website
featuring non-downloadable software for voter guide
creation and publication; Providing digital tools, namely,
non-downloadable software to register to vote, confirm
voter registration status, find polling locations, plan time
and place of voting in International Class 42; and

Providing news in the field of voting legislation and law in
International Class 45.2

As grounds for cancellation, Petitioner alleges that use of Respondent’s mark for
Respondent’s services is likely to cause confusion with Petitioner’s mark, and that
Respondent abandoned its mark by discontinuing its use with no intention of
resuming use. In its answer, Respondent denies the salient allegations in the
amended petition for cancellation, and asserts a number of “affirmative defenses,”

2 Application Serial No. 87449867, filed May 15, 2017, based on a bona fide intent to use the
mark in commerce for the Class 42 services under Section 1(b) of the Trademark Act; and
based on first use dates of November 1, 2004 for the services in Classes 35, 41 and 45 under
Section 1(a) of the Act. The application also includes goods in Classes 9 and 16, but Petitioner
bases its petition only on use of its mark for its services.
Cancellation No. 92066153
4
many of which merely amplify its denials. Respondent did not pursue any of its true
affirmative defenses at trial, and they are therefore waived. Miller v. Miller, 105
USPQ2d 1615, 1616 n.3 (TTAB 2013); Baroness Small Estates Inc. v. Am. Wine Trade
Inc., 104 USPQ2d 1224, 1225 n.2 (TTAB 2012).3
I. The Record and Evidentiary Objection
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
the file of Respondent’s involved Registration. In addition, Petitioner introduced:
Testimony Declaration of Paul A. McLean, its attorney,
and the exhibits thereto (“McLean Dec.”). 19 TTABVUE 3-
131.4

Testimony Declaration of Dale John McGrew, its Executive
Director, and the exhibits thereto (“McGrew Dec.”). Id. at
133-387.5

Rebuttal Testimony Declaration of Mr. McGrew, and the
exhibits thereto (“McGrew Reb. Dec.”). 26 TTABVUE.

Respondent introduced:

3 Although Respondent argues laches in its Trial Brief, the argument is not based on any
evidence of prejudice from Petitioner’s delay, which is required to establish laches.
Bridgestone/Firestone Research Inc. v. Automobile Club de l’Ouest de la France, 245 F.3d
1359, 58 USPQ2d 1460, 1462 (Fed. Cir. 2001) (prejudice required to establish laches);
Charette Corp. v. Bowater Comm’n Papers Inc., 13 USPQ2d 2040, 2043 (TTAB 1989) (“There
can be no question that mere delay in asserting one’s trademark rights is insufficient to give
rise to an estoppel. More is needed.”). See also Ralston Purina Co. v. Midwest Cottage Co.,
373 F.2d 1015, 153 USPQ 73, 76 (CCPA 1967) (respondent “bears the burden of showing the
injustice”). We therefore need not address laches.
4 Citations to the record reference TTABVUE, the Board’s online docketing system. The
number preceding “TTABVUE” corresponds to the docket entry number(s), and any
number(s) following “TTABVUE” refer to the page number(s) of the docket entry where the
cited materials appear.
5 Testimony should be filed and labeled as “testimony” rather than being included as part of
a notice of reliance. See TBMP § 703.01(k) (2020).
Cancellation No. 92066153
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Testimony Affidavit of Luke Alexander, its owner, and the
exhibits thereto (“Alexander Dec.”). 23 TTABVUE.6

Respondent asserts a hearsay objection to Mr. McGrew’s testimony about a
discussion Mr. McGrew had with William Swersey of the Hebrew Immigrant Aid
Society (“HIAS”), Petitioner’s predecessor-in-interest. 40 TTABVUE 5 (Respondent’s
objection); 19 TTABVUE 134 (McGrew Dec. ¶ 3). The objection is sustained, to the
extent that Petitioner seeks to rely on what Mr. Swersey told Mr. McGrew about
HIAS’s operation of the domain name “wevote.us.” Fed. R. Evid. 801(c) and 802.
II. The Parties and Their Websites
The parties developed and host remarkably similar websites which each provide
information about voting and elections. The parties both use variations of WE VOTE
in connection with their websites, including in the sites’ domain names.
Unfortunately, even though the parties dispute which of them has priority of use of
WE VOTE/WEVOTE and whether Respondent has made continued use of its mark,
neither party provided the types of detailed information typically used to establish
priority, use or an intention to resume use.7

6 Respondent also introduced a “soft” copy of its involved Registration, by itself, without a
notice of reliance. 24 TTABVUE. In any event, Respondent’s involved Registration is
automatically of record.
7 For example, there are no invoices or other sales records in evidence. For the most part,
examples of the parties’ alleged uses of their marks are missing, or do not include dates or
explanations; in fact, the record includes no evidence showing which specific services the
parties have actually performed for customers or users. Neither party explained exactly how
its mark is used in connection with its services, and more generally, substantive details about
the parties’ uses are few and far between. In addition, the Internet Archive’s Wayback
Machine search results of record are unaccompanied by any explanation of how the Wayback
Machine works or its accuracy, much less from a witness with first-hand knowledge of the
Cancellation No. 92066153
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A. Petitioner
Petitioner is “a nonprofit organization that provides information about voting,
including but not limited to voter registration and voting rights information.” 19
TTABVUE 133 (McGrew Dec. ¶ 1). It operates websites accessible via the domain
names “wevote.us,” “wevote.info” and “wevoteusa.org.” 26 TTABVUE 3 (McGrew Reb.
Dec. ¶2).
Petitioner made presentations about itself and its mission on July 12, 2014, at the
Yes and Yes Yes conference, and marketed itself in unspecified ways later in July
2014 at several Netroots conferences. Petitioner presented at the August 2014 iOS
Dev Camp, where Petitioner’s WEVOTE app was named “Best App for Good.”
Petitioner continued marketing itself at conferences from 2015-2019. Id. at 4-5
(McGrew Reb. Dec. ¶¶ 4-5).
Petitioner has 315 Facebook followers and 591 Twitter followers. Its apps8 have
been downloaded from the Apple App Store over 400 times and from the Android App
Store over 1,000 times. Id. at 5 (McGrew Reb. Dec. ¶ 8).
Mr. McGrew (personally) acquired the “wevote.us” domain name pursuant to an
April 7, 2017 Domain Name Sale and Ownership Transfer Agreement with HIAS (the

Wayback Machine. Cf. Spiritline Cruises LLC v. Tour Mgt. Servs., Inc., 2020 USPQ2d 48324,
*4 & n.33 (TTAB 2020) (because it was authenticated by an Internet Archive employee, who
explained how the Wayback Machine works, Wayback Machine evidence admissible to
establish “how the webpages appeared on particular dates”). Here, the Wayback Machine
evidence is not admissible for the truth of the matters asserted therein.
8 There is little evidence of record concerning the apps, what they do or how they use WE
VOTE, if at all. Petitioner provided information about “future features” of the app, but little
else. See 26 TTAB 4, 121-125 (McGrew Reb. Dec. ¶ 4 and Ex. I).
Cancellation No. 92066153
7
“Agreement”). 19 TTABVUE 137 (McGrew Dec. Ex. A). Pursuant to the Agreement,
HIAS “assigns, sells, transfers and conveys to [Mr. McGrew] all of [HIAS’s] right,
title, and interest in and to the [“wevote.us”] Domain Name.” Id. (Agreement ¶ 1).
Mr. McGrew later “assigned my ownership of the www.wevote.us domain name,
trademark rights and attendant goodwill to [Petitioner], and the domain name was
transferred to [Petitioner] and has been in continuous operation ever since.” Id. at
134 (McGrew Dec. ¶ 4); 26 TTABVUE 138-140 (McGrew Reb. Dec. Ex. M). Thus, Mr.
McGrew acquired only the domain name from HIAS, but purported to assign to
Petitioner not only the domain name, but also unspecified “trademark rights and
attendant goodwill.” It is not clear what the referenced “trademark rights and
attendant goodwill” consist of, how (or importantly, when) Mr. McGrew came to
acquire them or how they relate to the domain name itself.
In any event, we recognize that the preamble to the Agreement indicates that
“This agreement sets forth all terms and conditions under which [HIAS] agrees to sell
and transfer to [Mr. McGrew] all ownership rights in and to the domain name
www.wevote.us (‘Domain Name’) including any and all trademark rights and
attendant goodwill associated therewith.” 19 TTABVUE 137 (emphasis added).
However, as indicated, the Agreement’s terms indicate that only the domain name
was transferred.9

9 As defined in the Agreement’s preamble, “Domain Name” means “all ownership rights in
and to the domain name www.wevote.us,” which is all that the terms of the Agreement
convey. See discussion, infra, at Section IV(B).
Cancellation No. 92066153
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During Petitioner’s original testimony period, Mr. McGrew testified that the
“wevote.us” domain name “has been in continuous operation ever since” execution of
the Agreement in April 2017. 19 TTABVUE 134 (McGrew Dec. ¶ 4). Later, during its
rebuttal testimony period, Petitioner provided what Mr. McGrew claimed to be “a
screenshot of the wevote.info website on July 14, 2014, found through the Internet
Archive [Wayback Machine],” reproduced below:

26 TTABVUE 3-4, 100-101 (McGrew Reb. Dec. ¶ 2 and Ex. G). Shortly thereafter, on
August 24, 2014, Petitioner’s presentation at the August 2014 iOS Dev Camp was
posted on YouTube:
Cancellation No. 92066153
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Id. at 4, 127 (McGrew Reb. Dec. ¶ 4 and Ex. J). Mr. McGrew testified that Petitioner
released its first “public code” on “github.com” on August 27, 2015:

Cancellation No. 92066153
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Id. 5, 129 (McGrew Reb. Dec. ¶ 6 and Ex. K). As discussed below, while Petitioner’s
mark WE VOTE has been publicly displayed since 2014, it is not clear which services,
if any, Petitioner has provided under the mark, or exactly when it provided them.
B. Respondent
Mr. Alexander testified that Respondent’s WEVOTE mark “has been in
continuous use since as early as January 1, 2012.” 23 TTABVUE 2 (Alexander Dec.
¶ 3). He claims that among other things, Respondent has conducted surveys and
symposiums, and provided education, bill tracking, campaigning, news/information
and voter guides “under the WEVOTE MARK.” Id. (Alexander Dec. ¶ 4).
As for the Internet services specifically identified in Respondent’s involved
Registration, however, Respondent’s evidence is as skimpy as Petitioner’s.
Specifically, Respondent provided little if any explanation regarding how it has used
its mark for the advertising, website and identification verification services identified
in the involved Registration. Nevertheless, Respondent claims to have advertised and
to have an “online presence” on, inter alia, YouTube, Facebook and Twitter. Id.
(Alexander Dec. ¶ 5).
Furthermore, Petitioner, during its trial period, provided evidence relating to
Respondent’s use of Respondent’s involved mark. Specifically, Petitioner introduced
under notice of reliance a November 2014 Silicon Prairie News article which, while
not admissible to prove the truth of the matters asserted therein, indicates that
Respondent’s We Vote Project formed in 2012 to develop “an open government
project.” The article indicates that according to Respondent’s co-founders, “We Vote
provides a focused combination of total information transparency of legislative bodies
Cancellation No. 92066153
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as they unfold in real time better than any other legislative software or site in
existence.” 19 TTABVUE 7. While the article does not provide specific dates of
Respondent’s use of its involved mark (nor could we rely on the truth of the article
standing alone if it did), it indicates that Respondent’s website was beta tested
sometime in 2014 during Nebraska’s unicameral session, and that it will “relaunch”
in January 2015. Id.
Petitioner also provided a printout of Respondent’s tweets, authenticated through
Mr. McGrew’s testimony, which shows tweets starting on January 8, 2014 and
running essentially continuously through July 16, 2015. There is then a gap until the
tweets resume on October 31, 2017. 19 TTABVUE 134, 139-213 (McGrew Dec. ¶ 6
and Ex. B). In addition, Petitioner provided Wayback Machine printouts which if
accurate and reliable would appear to indicate that there were no results for
“wevoteproject.org,” one of Respondent’s WEVOTE domain names, until October 11,
2014. The earliest specific Wayback Machine search result for “wevoteproject.org”
which Petitioner made of record is from February 6, 2015, almost four months later,
and is reproduced below:
Cancellation No. 92066153
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19 TTABVUE 134, 215-230 (McGrew Dec. ¶ 7 and Ex. C).
III. Standing
Petitioner has established its use, and continued interest in using, WE VOTE as
at least a trade name in connection with a voting-focused website. 19 TTABVUE 133-
34 (McGrew Dec. ¶¶ 1, 3-4); 26 TTABVUE 3-5 (McGrew Reb. Dec. ¶¶ 2, 4-10). This
establishes Petitioner’s standing. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753
F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Giersch v. Scripps Networks,
Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (“Petitioner has established his common-
law rights in the mark DESIGNED2SELL, and has thereby established his standing
to bring this proceeding.”); Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d
1112, 1118 (TTAB 2009) (testimony that opposer uses its mark “is sufficient to
support opposer’s allegations of a reasonable belief that it would be damaged …”
where opposer alleged likelihood of confusion). In any event, it is clear from the
parties’ websites that they are competitors and that Petitioner uses “wevote” as part
Cancellation No. 92066153
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of its domain name, which also establishes Petitioner’s standing. Alcatraz Media Inc.
v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1760-61 (TTAB 2013), aff’d, 565
F. App’x 900 (Fed. Cir. 2014) (mem.) (standing established because petitioner was a
competitor using the term at issue as part of its domain name).
IV. Likelihood of Confusion (Priority)
The parties are using essentially the same mark for essentially identical services.
Indeed, there is no meaningful difference between the mark WE VOTE written as
two words with a space between them and the mark WEVOTE written as one word
without a space. See e.g., Stockpot, Inc. v. Stock Pot Rest., Inc., 220 USPQ 52, 54
(TTAB 1983), aff’d 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (finding
STOCKPOT and STOCK POT confusingly similar); In re Best W. Family Steak House,
Inc., 222 USPQ 827, 827 (TTAB 1984) (BEEFMASTER and BEEF MASTER found
“practically identical”). Moreover, Petitioner’s services, which include providing a
website about voting and politics, encompass Respondent’s services of providing a
website about politics in Classes 35 and 41. While there are differences between
Petitioner’s services and Respondent’s Class 45 services (identification verification),
this does not impact our ultimate decision. In short, there is a likelihood of confusion.
Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1735
(TTAB 2001) (“Use of identical marks for virtually identical services would create a
likelihood of confusion.”).10 This case is therefore, in essence, a priority dispute.

10 Respondent concedes the point, as: (1) it argues only priority in its Trial Brief; (2) Mr.
Alexander testifies that “Petitioner was violating our trademark with content located at …
Cancellation No. 92066153
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A. Petitioner’s Burden to Prove Priority of Use
“A party claiming prior use of a registered mark may petition to cancel the
registration on the basis of such prior use pursuant to section 14 of the Lanham Act.
15 U.S.C. Section 1064.” W. Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31
USPQ2d 1660, 1662 (Fed. Cir. 1994). However, “a presumption of validity attaches
to” Respondent’s involved Registration, and Petitioner, the alleged prior user, bears
the burden of proving its claim of priority by a preponderance of the evidence. Id.;
Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d
1307, 1309 (Fed. Cir. 1989); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100,
1105-06 (TTAB 2007).
“As a general matter, priority in a Trademark Act § 2(d) case goes to the party
which made first use of its mark on the relevant goods [or services].” Cent. Garden &
Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1139 (TTAB 2013). Here, Respondent
is entitled to rely on the December 26, 2014 filing date of the involved Registration’s
underlying application as its date of constructive first use (though it may seek to
establish actual use before that date). Id. at 1140-41 (“for when an application or
registration is of record, the party may rely on the filing date of the application for
registration, i.e., its constructive use date”); Syngenta, 90 USPQ2d at 1119 (“applicant

wevote.us;” (3) Mr. Alexander testifies that “[t]here have been numerous instances of actual
confusion concerning Petitioner’s use of its alleged trademark;” and (4) Respondent sent a
cease and desist letter to Petitioner alleging that use of WE VOTE constitutes trademark
infringement and is likely to cause confusion with Respondent’s involved mark. 19
TTABVUE; 23 TTABVUE 3, 14-16 (Alexander Dec. ¶¶ 12, 14, 15 and Ex. B).
Cancellation No. 92066153
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may rely without further proof upon the filing date of its application as a ‘constructive
use’ date for purposes of priority”).
For its part, Petitioner has not pleaded ownership of a federal registration, but
instead relies upon common law rights in the term WE VOTE. Specifically, Petitioner
“must show proprietary rights in the [WE VOTE] mark” which “may arise from …
prior trademark or service mark use, prior use as a trade name, prior use analogous
to trademark or service mark use, or any other use sufficient to establish proprietary
rights.” Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378
(Fed. Cir. 2002) [internal citations omitted]; Otto Roth & Co. v. Universal Foods Corp.,
640 F.2d 1317, 1320, 209 USPQ 40, 43 (CCPA 1981).11
B. Petitioner May Not Rely On Assignment of the Domain Name from
HIAS
Before addressing the parties’ own uses of the WE VOTE/WEVOTE marks, we
reject Petitioner’s attempt to rely on HIAS’s service mark use, if any, based on the
assignment of the “wevote.us” domain name from HIAS to Mr. McGrew and then to
Petitioner. The original Agreement between HIAS and Mr. McGrew did not assign
trademark rights from HIAS to Mr. McGrew; it only assigned the domain name.

11 There is no evidence, and neither party argues, that WE VOTE/WEVOTE is anything
other than inherently distinctive, and under these circumstances we need not address the
issue. See, e.g., Giersch, 90 USPQ2d at 1023 (“Respondent has not raised an issue as to the
distinctiveness of petitioner’s mark or otherwise put petitioner on notice of this defense, and
therefore we find that the mark is distinctive.”) (citing Wet Seal Inc. v. FD Mgmt., Inc., 82
USPQ2d 1629, 1634 (TTAB 2007) (absent argument or evidence from applicant, opposer’s
mark deemed distinctive)); Chicago Corp. v. N. Am. Chicago Corp., 20 USPQ2d 1715, 1717
n.5 (TTAB 1991) (rejecting applicant’s argument that opposer failed to prove that its mark
was distinctive where applicant failed to plead the issue or introduce evidence of non-
distinctiveness).
Cancellation No. 92066153
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Indeed, the Agreement “shall be governed by and interpreted in accordance with
the laws of the State of Maryland.” 19 TTABVUE 137 (Agreement ¶ 6). Under
Maryland law, where, as here, the preamble to an agreement conflicts with the
agreement’s actual terms, the terms control.
Contracts often contain recitals: provisions that do not
make binding promises but merely recite background
information about factual context or the parties’ intentions.
Maryland law recognizes the general principle that such
recitals are not binding and, while they may aid the court
in interpreting the contract’s operative terms, cannot
displace or supplement operative terms that are clear. See
Pulaski v. Riland, 199 Md. 426, 86 A,2d 907, 190 (1952);
Cty. Comm’rs of Charles Cty. v. Panda-Brandywine, L.P.,
663 F.Supp.2d 424, 430 (D. Md. 2009), aff’d, 401 F.App’x
831 (4th Cir. 2010).

Sprint Nextel Corp. v. Wireless Buybacks Holdings, LLC, 938 F.3d 113 (4th Cir. 2019)
(interpreting Maryland law). See also Walton v. Washington Cty. Hosp. Ass’n, 13 A.2d
627, 178 Md. 446, 452 (Md. 1940) (“where one part of a contract of guaranty consists
of a recital of premises, while another part contains the actual obligations to be
performed, an incidental recital is not controlling over the direct provisions of the
obligatory part”). Here, the specific operative term of the Agreement, Paragraph 1,
provides that “[i]n consideration for payment … [HIAS] hereby assigns, sells,
transfers and conveys to [Mr. McGrew] all of [HIAS’s] right, title and interest in and
to the Domain Name.” Any associated trademark rights are not mentioned. Thus, Mr.
McGrew acquired the domain name and nothing more.
There are perhaps more important reasons why the Agreement did not result in
Mr. McGrew acquiring service mark rights in WE VOTE, as opposed to merely the
Cancellation No. 92066153
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“wevote.us” domain name. First, even if the clause in the preamble which purported
to transfer to Petitioner “the domain name … including any and all trademark rights
and attendant goodwill associated therewith” was included the Agreement’s terms
and conditions, the clause is hopelessly indefinite. Indeed, it does not purport to
transfer the mark WE VOTE itself to Mr. McGrew, but rather whatever (unspecified)
trademark rights and attendant goodwill are associated with the “wevote.us” domain
name. There is no indication of what those trademark rights are exactly. For example,
what goods or services has HIAS offered under the “wevote.us” domain name, and
(because this is a priority dispute), when, exactly, were any specific goods or services
offered under the mark? Did HIAS retain any rights in the WE VOTE mark while
assigning certain (again unspecified) rights to Petitioner? Crucially, are any
trademark rights HIAS may have had at the time of the Agreement prior to
Respondent’s filing (or first use) date? None of this is clear from the Agreement,
making the nature and content of the purported assignment impossible to evaluate.
The contrasts between the Agreement and a typical trademark assignment
agreement are rather stark. Typically, trademark assignments specify exactly what
was assigned in detail, such as by making clear that all rights in the mark (as opposed
to rights related to a domain name) were assigned, and specifying which specific
goods or services are offered under the mark.
Second, and relatedly, the Agreement is not only indefinite, but appears to be “in
gross” and thus invalid. As the Supreme Court held more than a century ago:
There is no such thing as property in a trade-mark except
as a right appurtenant to an established business or trade
Cancellation No. 92066153
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in connection with which the mark is employed. The law of
trade-marks is but a part of the broader law of unfair
competition; the right to a particular mark grows out of its
use, not its mere adoption; its function is simply to
designate the goods as the product of a particular trader
and to protect his good will against the sale of another’s
product as his; and it is not the subject of property except
in connection with an existing business. Hanover Milling
Co. v. Metcalf, 240 U.S. 403, 412-414 (1916).

United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97-98 (1918); see also Beech-
Nut Packing Co. v. P. Lorillard Co., 273 U.S. 629, 632 (a trademark “is a
distinguishable token devised or picked out with the intent to appropriate it to a
particular class of goods and with the hope that it will come to symbolize good will”);
Haymaker Sports, Inc. v. Turian, 581 F.2d 257, 198 USPQ 610, 613 (CCPA 1978)
(“The owner of a trade-mark may not, like the proprietor of a patented invention,
make a negative and merely prohibitive use of it as a monopoly.”) (quoting United
Drug Co., 248 U.S. at 97-98); Warner Lambert Pharm. Co. v. Gen. Foods Corp., 164
USPQ 532, 533 (TTAB 1970) (“It is fundamental that to effect a valid transfer of title
to a mark it must be accompanied by the business with which the mark has been
associated.”). Here, even if the Agreement purported to assign the mark WE VOTE
(as opposed to the “wevote.us” domain name), which it did not, the “assignment”
would have been “in gross” because the mark would have been “assigned” separate
and apart from the goods or services in connection with which it was used (if any).
Indeed, the Agreement does not indicate which goods or services HIAS offered under
the mark, if any (nor does the record in this case).
Cancellation No. 92066153
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Relatedly, there is no indication in the record that the services Petitioner provides
under the WE VOTE mark are the same or even similar or related to those HIAS
offered under the mark (if any). In fact, the only evidence about HIAS’s use of the
mark is this Wayback Machine result, captured several times between November 1,
2004 and April 4, 2009:

19 TTABVUE 117-121 (McLean Dec. Ex. D).12 This printout does not reveal service
mark use for any service whatsoever, much less service mark use of WE VOTE for a

12 Petitioner also introduced virtually identical Wayback Machine results from various dates
between October 10, 2010 and March 5, 2016, the only difference being that the Russian
language heading at the top is abbreviated. 19 TTABVUE 122-126 (McLean Dec. Ex. D). This
evidence, if relied on for the truth of the matter asserted, would appear to indicate that before
Petitioner acquired the “wevote.us” domain name from HIAS, Petitioner and HIAS were both
using WE VOTE for a period of time. There is no evidence of any license or other arrangement
between them other than the Agreement.
Cancellation No. 92066153
20
voting-related website. Neither party provided an official translation of the Russian
wording in the Wayback Machine search result, and therefore there is no evidence
that the language pertains to, much less offers or promotes, any particular service,
much less voting or election-related services.13
Yet, for any goodwill associated with the HIAS mark to transfer to Mr. McGrew,
McGrew/Petitioner would have to be using the mark for goods or services similar to
those HIAS offered (if any).
In concluding that goodwill was transferred, the district
court relied in part on its finding that the mark at issue is
registered in International Class 16, “information,
literature, and books.” However, the registration certificate
issued by the United States Patent and Trademark Office
states that the service mark is “in class 42” and is “for retail
store services featuring products and supplies for diabetic
people.” The district court also relied on its finding that
“plaintiff is moving forward to market and sell its own
products and services, which comport with the products
and services sold by the Indiana corporation.” Steward
testified, however, that plaintiff does not have any plans to
operate a retail store, and plaintiff offered no evidence
suggesting that it intends to market directly to consumers
any goods it licenses to carry the “SUGAR BUSTERS!”
name. Finally, we are unconvinced by plaintiff's argument
that, by stating on the cover of its diet book that it may
“[h]elp treat diabetes and other diseases” and then selling
some of those books on the Internet, plaintiff provides a
service substantially similar to a retail store that provides
diabetic supplies.

13 Translations are required for foreign language content to be considered, as Board
proceedings are conducted in English. See, e.g., Luxco, Inc. v. Consejo Regulador del Tequila,
A.C., 121 USPQ2d 1477, 1507 n.221 (TTAB 2017); Swiss Watch Int’l, Inc. v. Fed’n of the Swiss
Watch Indus., 101 USPQ2d 1731, 1734 n.8 (TTAB 2012); TBMP §104 (2020).
Cancellation No. 92066153
21
Sugar Busters LLC v. Brennan, 177 F.3d 258, 50 USPQ2d 1821, 1826 (5th Cir. 1999)
(citations omitted); PepsiCo, Inc. v. Grapette Co., 416 F.2d 285, 163 USPQ 193, 197
(8th Cir. 1969) (“Where a transferred trademark is to be used on a new and different
product, any goodwill which the mark itself might represent cannot legally be
assigned. … To say that this would be remedied by the public soon losing faith in the
product fails to give the consumer the protection it initially deserves.”). Here, there
is no evidence that HIAS provided any services under the WE VOTE mark at any
time, and there is therefore no evidence that Petitioner’s services are similar to any
services HIAS may have provided.
It would not be appropriate for us to overlook the Agreement’s flaws, ambiguities
and omissions. “Requiring strong evidence to establish an assignment is appropriate
both to prevent parties from using self-serving testimony to gain ownership of
trademarks and to give parties incentives to identify expressly the ownership of the
marks they employ.” TMT N. Am., Inc. v. Magic Touch GmbH, 124 F.3d 876, 43
USPQ2d 1912, 1918 (7th Cir. 1997). Based on the record the parties presented, we
find that Petitioner did not acquire service mark rights, as opposed to the domain
name, through the Agreement, and it must therefore rely on its own use of the mark,
which began in 2014.
C. Parties Tried Issue of Use Analogous to Trademark Use
Here, as detailed above, neither party has provided priority evidence which
connects its use of its mark to any specific services on any particular dates, much less
the services identified in the involved Registration or pleaded application. For
Cancellation No. 92066153
22
example, and as discussed in more detail below, while Petitioner apparently operated
a website which displayed the term WE VOTE in 2014, the Wayback Machine
printout of that site reveals on its face at most that the site explained Petitioner’s
“vision” and collected contact information from site visitors who were offered to “join
us.” 26 TTABVUE 100-101 (McGrew Reb. Dec. Ex. G). Similarly, the Wayback
Machine printout of Respondent’s site reveals on its face at most that the site offered
visitors the opportunity to “sign up for free” and “get started,” and that the site offered
something Nebraska-related but otherwise unspecified. 19 TTABVUE 215-230
(McGrew Dec. Ex. C).14
It therefore appears that neither party is attempting to rely on technical service
mark use to establish priority. Rather, the parties’ presentation of the case reveals
that they are each at least implicitly relying on use analogous to trademark use to
establish priority.
Typically, use analogous to trademark use must be pleaded. Cent. Garden, 108
USPQ2d at 1142. Here, however, because both parties are effectively relying on use
analogous to trademark use, and neither has objected to the other’s attempt to do so,
we find that the issue was tried by implied consent and the pleadings are amended
accordingly. Fed. R. Civ. P. 15(b)(2); Conolty v. Conolty O’Connor NYC LLC, 111
USPQ2d 1302, 1305 (TTAB 2014) (finding issue tried by implied consent where “far
from being surprised by Opposer’s evidence and arguments regarding ownership,

14 While this printout purports to display how Respondent’s site appeared on February 6,
2015, Petitioner did not provide a Wayback Machine printout from what appears to be the
earliest date Respondent’s website was available (October 11, 2014).
Cancellation No. 92066153
23
Applicant presented similar evidence and made similar arguments itself. Neither
party objected to the other’s evidence or arguments regarding ownership.”); Nextel
Comm., Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1399 (TTAB 2009) (“because
applicant has not objected to opposer’s assertion of this ground, and as a result of the
parties’ arguments in their briefs (identified above), we deem the pleadings to be
amended under FRCP 15(b) to include issue preclusion as a ground”).
D. Analysis of Use Analogous to Trademark Use
To determine whether either party can establish use analogous to trademark use
prior to the filing date of its application, we must consider the extent to which their
activities impacted the public.
Before a prior use becomes an analogous use sufficient to
create proprietary rights, the petitioner must show prior
use sufficient to create an association in the minds of the
purchasing public between the mark and the petitioner’s
goods … A showing of analogous use does not require direct
proof of an association in the public mind … Nevertheless,
the activities claimed to create such an association must
reasonably be expected to have a substantial impact on the
purchasing public before a later user acquires proprietary
rights in a mark ….

Herbko Int’l, 308 F.3d at 1156, 64 USPQ2d at 1378; T.A.B. Sys. v. PacTel Teletrac, 77
F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996). In addition, we must weigh the evidence
on use analogous to service mark use as a whole, rather than considering each piece
of evidence in isolation. W. Fla Seafood, 31 USPQ2d at 1663 (“However, whether a
particular piece of evidence by itself establishes prior use is not necessarily
dispositive as to whether a party has established prior use by a preponderance.
Cancellation No. 92066153
24
Rather one should look at the evidence as a whole, as if each piece of evidence were
part of a puzzle which, when fitted together, establishes prior use.”).
Petitioner was active in 2014, and some of its activities were apparently in
connection with the WE VOTE mark. Moreover, even though Petitioner provided
little explanation of the nature of its activities, we can assume some consumer
exposure to “WE VOTE” because Petitioner uses the term as a trade name. However,
when considered as a whole, as “pieces of a puzzle,” the record Petitioner presented
does not create a “reasonable expectation” that Petitioner’s use of WE VOTE had a
“substantial impact on the purchasing public” before the filing date of the
Registration’s underlying application.
While Petitioner places a great deal of emphasis on its domain name registration,
ownership and use since 2014, specifically relying on the “whois” and related records
for the domain names, it is settled that ownership of a domain name does not
constitute trademark use, and that whois records do not establish trademark use. See
e.g. United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1046 (TTAB 2014)
(whois report “does not show use” as a mark, nor does the invoice for a domain name
purchase); In re Supply Guys, Inc., 86 USPQ2d 1488, 1493 (TTAB 2008) (“Obviously,
a website can be used for multiple purposes and the simple fact that a term is used
as part of the internet address does not mean that it is a trademark for the goods sold
on the website). See also Brookfield Comms., Inc. v. W. Coast Entm’t Corp., 174 F.3d
1036, 50 USPQ2d 1545, 1555 (9th Cir. 1999) (“Registration with Network Solutions,
however, does not in itself constitute ‘use’ for purposes of acquiring trademark
Cancellation No. 92066153
25
priority.… The Lanham Act grants trademark protection only to marks that are used
to identify and to distinguish goods or services in commerce.”) (internal citations
omitted); Newborn v. Yahoo!, Inc., 391 F. Supp.2d 181, 76 USPQ2d 1845, 1851 (D.D.C.
2005). While promoting WE VOTE as the address or name of Petitioner’s website to
a number of potential purchasers could, depending on the specifics, perhaps have a
“substantial impact on the purchasing public,” there is no evidence of that level of
promotion here. Therefore, use of “wevote.us,” “wevote.info” or “wevoteusa.org”
merely to identify the Internet address of Petitioner’s website(s) does not constitute
trademark use, or even use of WE VOTE analogous to trademark use sufficient to
establish priority. See In re Roberts, 87 USPQ2d 1474, 1479-80 (TTAB 2008).
Turning to Petitioner’s presentations at conferences and the iOS Dev Camp, this
type of activity could weigh in favor of finding use analogous to trademark use if it
supported a finding that these presentations had a “substantial impact on the
purchasing public,” but again there is no evidence that they did. In fact, with a single
exception, Petitioner does not indicate how many people attended any of these
conferences or presentations. See T.A.B. Sys., 37 USPQ2d at 1882 (“The record
contains no evidence, however, to indicate how many of PacTel’s potential consumers
may have been reached by this wire service story.”).
The only exception is for the Yes and Yes Conference, which was “attended by 400
senior professionals from companies like NBC, Google, Intel and Apple,” which by
itself is not a substantial number, especially because it is not at all clear whether
Petitioner is referring to the number of people who attended the conference itself, or
Cancellation No. 92066153
26
Petitioner’s presentation specifically. 26 TTABVUE 4 (McGrew Reb. Dec. ¶ 5). While
Petitioner’s 16 page presentation to this conference is of record, 15 of the 16 pages
comprising the presentation are filled with uncaptioned images which on their face
have nothing to do with voting or elections, much less any particular products or
services. 26 TTABVUE 4, 104-119 (McGrew Reb. Dec. ¶ 5 and Ex. H). Only the
presentation’s final page contains the mark, and it is at best vague and unclear as to
exactly what Petitioner does:

Id. at 119. See T.A.B. Sys., 37 USPQ2d at 1884 (“With regard to its trade show in
August 1989, PacTel’s booth did not connect TELETRAC with the locator service.”).
Cent. Garden, 108 USPQ2d at 1145 (“The analogous use doctrine allows a party to
claim priority as of when it is established that the mark is associated in the mind
of the consumer with a source for the goods … Yet the teaser ad made no
mention of any goods or services on or in connection with which Central
was using or intended to use the mark.… [W]ithout being tied in some way to a
good or service, such use could give rise only to a right in gross ….”) (emphasis
added).
Cancellation No. 92066153
27
Petitioner’s presentation to the iOS Dev Camp references voting and election-
related topics more specifically, and displays WEVOTE above the caption “Voter
Information for Information-Age Voters” on its cover page. 26 TTABVUE at 4, 121-
125 (McGrew Reb. Dec. ¶ 4 and Ex. I). Similarly, the “public code” at “github.com”
appears to potentially have some relationship to elections or voting. Id. 5, 129
(McGrew Reb. Dec. ¶ 6 and Ex. K). However, Petitioner has failed to indicate how
many people were exposed to these uses or presentations featuring WE VOTE. T.A.B.
Sys., 37 USPQ2d at 1882 (“The record contains no evidence, however, to indicate how
many of PacTel’s potential consumers may have been reached by that wire service
story.”); Westrex Corp. v. New Sensor Corp., 82 USPQ2d 1215, 1219 (TTAB 2007) (“the
critical factor is the actual number of prospective customers reached”). Moreover,
while the YouTube page for the iOS Dev Camp presentation indicates that it was
viewed “29 times,” even if we accepted this count as true, this falls far short of
establishing the requisite “substantial impact on the purchasing public,” as does the
400 (at most) who may have viewed the Yes and Yes Conference presentation.
Indeed, because it is relying on use analogous to service mark use to prove priority,
Petitioner could not establish that a particular level of potential purchaser exposure
to its mark is relevant without first establishing the size of the relevant market.
T.A.B. Sys., 37 USPQ2d at 1883. Here, not only has Petitioner failed to establish the
size of the market, but we can safely assume that the market for voting and election-
related information is quite large. See T.A.B. Sys., 37 USPQ2d at 1883 (“if the
potential market for a given service were 10,000 persons, then advertising shown to
Cancellation No. 92066153
28
have reached only 20 or 30 people as a matter of law could not suffice” to establish
use analogous to trademark use).
Petitioner claims to have spent “over $25,000 in marketing the brand at
conferences” between 2014-2019. Annual advertising expenditures averaging $5,000
are not sufficient to establish a “substantial impact on the purchasing public,” at least
not here, where Petitioner has not established that the market for its services is
small. See generally Westrex, 82 USPQ2d at 1219 (“the $50,000-60,000 in advertising
expenditures over an eleven-year time period are insufficient to establish the
necessary association or public identification was indeed among more than ‘an
insubstantial number of potential consumers’”).
Moreover, even if Petitioner’s Twitter, Facebook and LinkedIn accounts expose
potential purchasers to Petitioner’s WE VOTE mark, Petitioner’s total number of
social media followers would be under 1,000 (or perhaps significantly less than 1,000
if there are duplicates, i.e. followers of multiple accounts). 26 TTABVUE 5 (McGrew
Reb. Dec. ¶ 8). After five years of alleged use of the mark, fewer than 1,000 social
media followers does not reflect a “substantial impact” on potential purchasers of
Petitioner’s services. Similarly, even if we assume that all of the downloads Petitioner
refers to were of Petitioner’s voting and election-related apps featuring the WE VOTE
mark, the total of only 1400 downloads over five years is also insubstantial.15

15 Petitioner’s reliance on cash and in-kind donations, including “more than $120,000 in
Google Adwords marketing and promotion services,” 26 TTABVUE 5 (McGrew Reb. Dec. ¶
9), is not probative because these donations and services are not tied to the WE VOTE mark
or any particular goods or services in any way, and there is no indication of how many
potential purchasers were reached by or as a result of these donations.
Cancellation No. 92066153
29
In short, Petitioner has not provided the types of “indirect evidence regarding the
[petitioner’s] use of the word or phrase in advertising brochures, catalogs, newspaper
ads, and articles in newspapers and trade publications” which typically establish use
analogous to trademark use. T.A.B. Sys., 37 USPQ2d at 1881. The evidence Petitioner
has provided is not persuasive, because it is unclear, unexplained, did not have a
“substantial impact” on the purchasing public or is unconnected to any particular
services Petitioner performed or would perform for others. “The indefinite association
of a mark with a general field of commerce is an insufficient basis from which we may
infer the necessary association between the mark, the [services], and a source in the
mind of the consumer.” Cent. Garden, 108 USPQ2d at 1145. Thus, Petitioner has not
met its burden of providing priority over Respondent’s filing date based on use
analogous to trademark use.16

16 Even if Respondent was not entitled to rely on the filing date of its Registration’s
underlying application, Petitioner’s argument that Respondent did not make interstate use
of its WEVOTE mark in 2014 is misplaced. In fact, even if Petitioner is correct that
Respondent’s services “were only available in Nebraska” when Respondent’s website
launched on October 11, 2014, 39 TTABVUE 16, that may still be use upon which Respondent
may rely. Christian Faith Fellowship Church v. adidas AG, 841 F.3d 986, 120 USPQ2d 1640,
1645-47 (Fed. Cir. 2016) (case cited by Petitioner). See also Gonzales v. Raich, 545 U.S. 1
(2005); Wickard v. Filburn, 317 U.S. 111 (1942); Larry Harmon Pictures Corp. v. Williams
Rest. Corp., 929 F.2d 662, 18 USPQ2d 1292 (Fed. Cir. 1991). Indeed, as used in the Lanham
Act, “[t]he word ‘commerce’ means all commerce which may lawfully be regulated by
Congress,” 15 U.S.C. § 1127, and Congress may regulate even local, intrastate activities
which have a “substantial economic effect on interstate commerce.” Raich, 545 U.S. at 17;
Wickard, 317 U.S. at 127-128; In re Silenus Wines, Inc., 557 F.2d 806, 194 USPQ 261, 264
(CCPA 1977) (“Thus, we hold that intrastate sale of goods, by the party who caused those
goods to move in regulatable commerce, directly affects that commerce and is itself
regulatable.”). In short, “[b]ecause one need not direct goods across state lines for Congress
to regulate the activity under the Commerce Clause, there is likewise no such per se condition
for satisfying the Lanham Act’s ‘use in commerce’ requirement.” Christian Faith Fellowship,
120 USPQ2d at 1647. In any event, it is well known that residents of one state may be
Cancellation No. 92066153
30
Petitioner’s likelihood of confusion claim is therefore dismissed.
V. Abandonment
The Trademark Act provides for the cancellation of a registration if the registered
mark has been abandoned. See Section 14 of the Trademark Act, 15 U.S.C. §1064.
Under Section 45 of the Act, 15 U.S.C. §1127, a mark is considered abandoned when
“its use has been discontinued with intent not to resume such use,” and “[n]onuse for
3 consecutive years shall be prima facie evidence of abandonment.” That is, “[i]f
plaintiff can show three consecutive years of nonuse, it has established a prima facie
showing of abandonment, creating a rebuttable presumption that the registrant has
abandoned the mark without intent to resume use.” ShutEmDown Sports Inc. v. Lacy,
102 USPQ2d 1036, 1042 (TTAB 2012). Furthermore, “‘[u]se’ of a mark means the
bona fide use of such mark made in the ordinary course of trade, and not merely to
reserve a right in a mark.” 15 U.S.C. §1127.
Petitioner bears the burden of proof to establish its case by a preponderance of the
evidence. See On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 56 USPQ2d
1471, 1476 (Fed. Cir. 2000); and Cerveceria Centroamericana, 13 USPQ2d at 1309. If
petitioner makes a prima facie case of abandonment, the burden of production, i.e.,
of going forward, then shifts to the respondent to rebut the prima facie showing with
evidence. Id. “The burden of persuasion remains with the plaintiff to prove

interested in voting and elections taking place in other states, including but not limited to
voting and elections for national offices, and there is no indication that Respondent’s
customers/users are all residents of Nebraska.
Cancellation No. 92066153
31
abandonment by a preponderance of the evidence.” ShutEmDown Sports, 102
USPQ2d at 1042.
Ultimately, abandonment is a question of fact. See Stock Pot Rest., 222 USPQ at
667. Indeed, any inference of abandonment must be based on proven fact. See
Cerveceria Centroamericana, 13 USPQ2d at 1310 (“The protection due the registrant
is provided by requiring that the inference have an adequate foundation in proven
fact. Whenever an inference is based on pure speculation and ‘there is no basis ... to
infer nonuse,’ a prima facie case of abandonment must fail.”) (citations omitted).
Here, Petitioner argues that “Respondent did not use and thus abandoned
WEVOTE as of October 30, 2016 at the latest when its wevoteproject.org website
became inactive. It may be that Respondent actually abandoned its mark as early as
July 17, 2015 when its previously-active Twitter account became inactive.”17 39
TTABVUE 17. Petitioner further argues that we may infer abandonment from
Respondent waiting until April 1, 2017 to send a cease and desist letter challenging
Petitioner’s use of WE VOTE. Id. at 18. We are not persuaded.
By its own account, Petitioner has not established a prima facie case of
abandonment by showing three years of nonuse. That is, even if Petitioner was correct
that Respondent discontinued use of its mark on July 17, 2015, that is less than three

17 The basis for Petitioner’s allegation that Respondent’s use stopped on October 30, 2016 is
Wayback Machine search results indicating that the site was accessed on October 30, 2016,
and then not again until June 14, 2017. 19 TTABVUE 134, 218 (McGrew Dec. ¶ 7 and Ex. C).
As indicated, the Wayback Machine evidence was not introduced in a way which makes it
probative on this issue. And even if Petitioner had established that Respondent stopped using
its mark for those eight months or less, that by itself would not prove abandonment.
Cancellation No. 92066153
32
years since Respondent’s use commenced (according to Petitioner), and less than
three years before Respondent’s use resumed (according to Petitioner). 39 TTABVUE
16-18 (arguing that Respondent discontinued use as early as July 17, 2015 and
resumed on June 14, 2017).18
Nor has Petitioner established that Respondent’s use was discontinued for less
than three years with “intent not to resume such use.” 15 U.S.C. § 1127. Respondent’s
Twitter account is not definitive, or even particularly persuasive, on the subject. As
Petitioner makes clear, Respondent had a website through which it offered its
services, so its Twitter activity, which is separate from that website, does not
necessarily reflect the entirety of what Respondent was doing, on the Internet or
otherwise. The Twitter account also does not reveal any decision to discontinue use
of the mark, much less establish any discontinuance of use. Respondent’s cease and
desist letter to Petitioner in April 2017 similarly does nothing to prove Respondent’s
cessation of use before that date.
Finally, even if Petitioner had established that Respondent discontinued use of its
WEVOTE mark, which it has not, there is no evidence that Respondent intended not
to resume its use of the mark. Petitioner’s admission that Respondent resumed use
no later than June 14, 2017, 39 TTABVUE 18, and Respondent’s cease and desist
letter to Petitioner both suggest the opposite, that Respondent intended to (and did)

18 While Respondent argues that it commenced use of its mark prior to filing the application
which matured into its involved Registration, we need not resolve this question, as Petitioner
has not established its own use prior to Respondent’s filing date, or that Respondent
abandoned its mark at any time.
Cancellation No. 92066153
33
resume use (if its use had ever stopped). See Crash Dummy Movie, LLC v. Mattel,
Inc., 601 F.3d 1387, 94 USPQ2d 1315, 1317 (Fed. Cir. 2010) (finding an intent to
resume use based in part on finding that “Mattel’s shipment of CRASH DUMMIES
toys in December 2003 supports Frank’s testimony about Mattel’s research and
development efforts in the early 2000’s”); Oromeccanica, Inc. v. Ottmar Botzenhardt
GmbH, 223 USPQ2d 59, 64 (TTAB 1983) (“respondent’s letter to petitioner relative
to an infringement charge is certainly a positive indication of respondent’s intention
to continue to protect its rights in the mark”).
For all of these reasons, Petitioner has not established a prima facie case of
abandonment, and its abandonment claim is also dismissed.
VI. Conclusion
Petitioner’s evidence and the record as a whole, considered in its entirety, fails to
establish that Petitioner has priority of use, through use analogous to trademark use
or otherwise, and also fails to establish a prima facie case of abandonment.
Accordingly, Petitioner cannot prevail on either claim.

Decision: The petition to cancel is denied.