A trademark registration may be cancelled if the registered mark has been abandoned. Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998) (citing 15 U.S.C. § 1064(3)). The abandoned mark then returns to the public domain, so it may be used by others in the marketplace. Exec. Coach Builders, Inc. v. SPV Coach Co., Inc., 123 USPQ2d 1175, 1180 (TTAB 2017).

Under 15 U.S.C. § 1127, there are two elements to a nonuse abandonment claim: (1) use of the mark has been discontinued, (2) with intent not to resume use. Tiger Lily Ventures Ltd. v. Barclays Cap. Inc., 35 F.4th 1352, 2022 USPQ2d 513, *4 (Fed. Cir. 2022); Cerveceria Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1310 (Fed. Cir. 1989).

Three consecutive years of nonuse creates a prima facie case of abandonment with a rebuttable presumption that use of the mark was discontinued with intent not to resume use. On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476 (Fed. Cir. 2000); ARSA Dist., Inc. v. Salud Natural Mexicana S.A. de C.V., 2022 USPQ2d 887, *24–*25 (TTAB 2022).

“The prima facie case eliminates the challenger's burden to establish the intent element of abandonment as an initial part of [his] case, and creates a rebuttable presumption that the registrant abandoned the mark without intent to resume … use under the statute.” Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998) (internal punctuation omitted).

De Minimis Domestic Sales

The TTAB found that de minimis domestic sales of amplifiers under the CS mark between 2016 and 2021 were “insufficient to constitute bona fide use of that mark in the ordinary course of trade,” and held there was no excuse for this extended period of nonuse in Adamson Systems Engineering, Inc. v. Peavey Electronics Corp., Cancellation No. 92076586, 2023 USPQ2d — (TTAB Nov. 1, 2023). While Peavey stopped promoting and selling CS amplifiers in the U.S., it continued to make and sell those same amplifiers abroad.

In the 2012–2015 period, domestic sales, measured in dollar amounts, of CS amplifiers were in the five-to-six figure range annually. But after 2013, when the CS amps were last advertised in domestic catalogs, domestic sales plummeted, rapidly dwindling to single digits and then zero at some points in the critical 2016–2021 time-frame. By 2021, the U.S. website stated that the CS amplifier was no longer available. The TTAB found that this showed “a purposeful drawing-down of domestic CS amplifier sales.”

Use of a trademark must be deliberate and continuous, not sporadic, casual or transitory. Wallpaper Mfrs., Ltd. v. Crown Wallcovering Corp., 680 F.2d 755, 214 USPQ 327, 330-31 (CCPA 1982); La Societe Anonyme des Parfums le Galion v. Jean Patou, Inc., 495 F.2d 1265, 181 USPQ 545, 548 (2d Cir. 1974).

While there were international shipments of CS goods from China to non-U.S. buyers, this did not constitute use in commerce within the meaning of the Trademark Act. See Fiat Group Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111, 1115 (TTAB 2010) (“activity solely outside the United States is ineffective to create or maintain rights in marks within the United States”); Anthony J. Colangelo, The Foreign Commerce Clause, 96 Va. L. Rev. 949, 954 (2010) (“Foreign commerce that is the subject of federal regulation therefore must be not only ‘with' foreign nations, but also ‘with' the United States. That is, there must be a U.S. nexus.”).

Resales and Repairs

Furthermore, resales by third parties do not defeat the presumption of abandonment from three years of nonuse in the ordinary course of trade. Gen. Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179, 1183 (TTAB 2008) (no residual goodwill from collectors reselling LASALLE cars long after General Motors ceased producing them); see also McCarthy on Trademarks and Unfair Competition 19:139 (Sept. 2023) (“Products originally sold at retail and offered unused for resale to collectors in small quantities on Internet web sites (such as eBay) should, in the authors opinion, not qualify as being in ‘the ordinary course of trade.'”).

            Similarly, the repair and refurbishment of Respondent's CS amplifiers does not maintain its rights in the mark, as neither the repair shops nor the parts bear the brand.

Thus, the TTAB granted a petition to cancel the registered CS mark.

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.