Failure to prove abandonment and fraud results in denial of cancellation

United States of America

In Toufigh v Persona Parfum Inc (Cancellation 9204830, June 30 2010), the Trademark Trial and Appeal Board (TTAB) has made it clear that a petitioner seeking to cancel a registration will be required to prove its case, even where the registrant fails to respond to discovery and to put in any evidence or testimony.

Petitioner Anosh Toufigh’s cancellation action against the registration of the mark ECSTASY for perfume products was motivated by the citation of this registration against his own application for the registration of the same mark. Toufigh petitioned to cancel the blocking registration based on abandonment and fraud, claiming that the mark was not in use when the registrant, Persona Parfum Inc, had filed its statement of use. Persona denied the allegations of the petition and, apparently, did very little else thereafter.

Toufigh attempted to take discovery of Persona on the issues of fraud and abandonment, and filed a motion to compel those answers. The motion to compel was denied as premature, and Toufigh never renewed the motion. The case proceeded to trial based solely on Toufigh’s own testimony and some documentary evidence. Both parties submitted trial briefs.

The TTAB first discussed the issue of standing. Generally, where the registration that is the subject of cancellation is cited against the petitioner’s own later-filed application, the requirement of standing is satisfied. Here, however, Toufigh had failed to put in any evidence of the citation by the US Patent and Trademark Office. He did not submit a copy of the office action, nor did he discuss the refusal in his testimony. Thus, the fact of the refusal had not been proved, and the allegation of the refusal was insufficient to prove standing. The TTAB nevertheless found standing in the fact that Toufigh had filed an application to register a mark identical to Persona’s mark and, therefore, had a “real interest” in the proceeding beyond that of an intermeddler.

Toufigh did not fare as well, however, on the allegations of abandonment and fraud. The only testimony that Toufigh submitted was his own testimony that he had conducted internet research, including of Persona’s website, and had not found use of the mark. He also testified that he had called the corporate telephone number listed on Persona’s website, but had received no answer. The only other evidence that he submitted was internet information concerning third-party fragrance marks containing the word 'ecstasy'.

The TTAB held that Toufigh had failed to prove his case. On the issue of abandonment, Toufigh’s research did not prove that the mark was not in use for at least three consecutive years, as is required to make out a prima facie case of abandonment. Toufigh’s efforts did not show failure to use over a three-year period. Additionally, the TTAB reasoned that Persona could be using the mark even if it did not appear on Persona’s website. The TTAB refused to draw any inference from the fact that Persona had not responded to discovery, because Toufigh had not pursued a timely motion to compel. The TTAB also did not fault Persona for failing to put forth any evidence of use, as Persona did not have the burden of proof.

On the issue of fraud for intentionally filing a false statement of use, the TTAB found that Toufigh had not submitted any evidence showing that Persona’s mark was not in use on its goods on that date. The TTAB also stated in a footnote that the allegation of fraud, as pled in the petition for cancellation, was insufficient under the recent Bose decision (for further details please see "Federal Circuit resoundingly rejects Medinol fraud standard").

In sum, plaintiffs in opposition and cancellation proceedings must be aware that a non-responsive (or minimally responsive) defendant can evade judgment. Plaintiffs have the burden of proof, and the TTAB will not ease that burden merely because the defending party is being 'cagey'.

Karin Segall, Foley & Lardner LLP, New York

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