2ndCH, LLCv.Michael E. Quigley

Trademark Trial and Appeal Board

Jan 7, 2022

92073900 (T.T.A.B. Jan. 7, 2022)

Mailed: January 7, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ---- 2ndCH, LLC v. Michael E. Quigley Cancellation No. 92073900 _____ Cathryn A. Berryman and Michael D. Karson, of Winstead PC, for 2ndCH, LLC. Travis J. Phillips, Attorney at Law, and William D. Davis of Davis & Associates, for Michael E. Quigley. ---- Before Wellington, Heasley, and Larkin, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Michael E. Quigley (“Respondent”) owns two registrations on the Principal Register in connection with “restaurant services” for the following marks: THIS OPINION IS NOT A PRECEDENT OF THE TTAB Cancellation No. 92073900 2 (hereinafter, “LA Café Mark” and “Reg. ’388”);1 and (hereinafter, the “Shrimp Mark” and “Reg. ’470”).2 2ndCH, LLC (“Petitioner”) filed a petition to cancel both of Respondent’s registrations on the ground of abandonment under Sections 14(3) and 45 of the Trademark Act (“the Act”), 15 U.S.C. §§ 1064(3) and 1127.3 Petitioner pleads common law rights in, and ownership of an application to register, the following mark: 1 Registration No. 2368388 issued on July 18, 2000 and has been renewed. The wording A LOUSIANA STYLE CAFÉ has been disclaimed. 2 Registration No. 5350470 issued on December 5, 2017. The mark is described in the registration as “consist[ing] of the word ‘GUMBO’S’ under a crawfish.” 3 1 TTABVUE (Petition for Cancellation). Cancellation No. 92073900 3 (hereinafter referred to as Petitioner’s “GUMBO’S NORTH” mark) for “restaurant services; catering services; bar services; carry out services,” in International Class 43.4 Petitioner further pleads that “Respondent’s Marks are cited as the basis for rejection of Petitioner’s Application on grounds of priority and likelihood of confusion.”5 In support of the abandonment claim, Petitioner alleges, inter alia, that:6 Respondent has not operated a restaurant using the [LA Café Mark and Shrimp Mark] since at least 2012 … [and] Respondent and his businesses ceased offering restaurant services in 2012, and thereafter for three continuous years Respondent had not taken action to resume such restaurant service offerings under the LA Café Mark. On information and belief, Respondent has not used the LA Café Mark to offer restaurant services in interstate commerce for over three years at the location shown in the specimen of use or any other locations operated by Respondent or any of his businesses. Respondent ceased offering restaurant services at this [Austin, Texas] location over three years ago on or before 2012, and thereafter for three continuous years Respondent had not taken action to resume such restaurant service offerings under the Shrimp Mark. With respect only to Reg. ’470 for the Shrimp Mark, Petitioner seeks cancellation on the additional grounds of non-use at the time of filing the underlying use-based application and fraud based on the non-use. In support of these claims, Petitioner alleges:7 On information and belief, Respondent by and through his attorney of record . . . obtained the registration for the Shrimp Mark as a result of 4 Id. at 4; ¶ 1 (referring to Application Ser. No. 88670978, filed on October 28, 2019). 5 Id.; ¶ 2. 6 Id. at 5; ¶¶ 4-5. 7 Id. at 6-7; ¶ 6. Cancellation No. 92073900 4 material and fraudulent representations made to the USPTO. On information and belief, Respondent by and through his Attorney of Record made such false statements with prior knowledge of non-use for restaurant services with intent to deceive the USPTO in order to obtain approval of his application for the Shrimp Mark filed on Section 1(a) use basis for registration on the Principal Register. . . . the specimen of use submitted by Respondent by and through his Attorney of Record to show its use in commerce clearly reference a menu for a restaurant operating as “Gumbo’s of Westlake” located at the Austin Location, as shown in the Shrimp Mark trademark file wrapper, and, on information and belief and according to public records, Respondent ceased offering restaurant services at this Austin Location on or before 2012 and thereafter for three continuous years had not taken action to resume such restaurant service offerings under Respondent’s Marks, and Respondent was aware of both the closure of his restaurant at the Austin Location and Petitioner’s use of the Petitioner’s Mark for restaurant services in interstate commerce as of the filing date. Respondent filed an answer making several admissions but otherwise denying the salient allegations of abandonment, non-use, and fraud.8 In particular, Respondent admits (with some denials interspersed): 6. With respect to Paragraph No. 4, Respondent admits he has not personally operated a restaurant using the LA Café Mark since at least 2012. Respondent admits he filed Chapter 7 bankruptcy on or about October 22, 2012 and shortly thereafter closed all restaurants operated at that time by Respondent and any of his business. Respondent further admits that the Registrations placed in issue by Petitioner were assigned from Respondent’s businesses to a holding company prior to the personal bankruptcy and thereafter to Respondent personally in 2016. Respondent denies that Respondent’s LA Café Mark has not been in use during that time, noting specifically that the LA Café Mark was licensed to Petitioner/Licensee under an August 22, 2012, licensing agreement (“License”) by Respondent’s predecessor-in-interest, ClubQuig II, LLC and that pursuant to such licensing agreement Petitioner has continued to use the LA Café Mark since that date. … 7. With respect to Paragraph No. 5, Respondent admits: i) he has not personally operated a restaurant using the Shrimp Mark since at least 8 4 TTABVUE (Answer). Cancellation No. 92073900 5 2012, ii) the specimen of use submitted by Respondent to show its use in commerce reference a menu for a restaurant operating as “Gumbo’s of Westlake” located at Austin, Texas, as shown in the Shrimp Mark trademark file wrapper, iii) Gumbo’s of Westlake ceased offering restaurant services more than three years ago, iv) the website for such restaurant location is inactive, and v) the Facebook page for such restaurant had its last posting on or about November 11, 2011. Respondent lacks sufficient knowledge or information to form a belief about the truth of the allegation that “a simple Internet search of online restaurant ordering/review/reservation services (including Yelp) reveals multiple references to the closure of the Austin Location.” Respondent admits that Petitioner has attached undated images that appear to present screenshots of the Gumbo’s of Westlake homepage, Facebook page, and various internet search result pages as Petitioner’s Exhibit D. Respondent denies that the Shrimp Mark has not been used to offer restaurant services in interstate commerce for over three years, noting specifically that that the Shrimp Mark was licensed to Petitioner/Licensee under an August 22, 2012, licensing agreement by Respondent’s predecessor-in-interest, ClubQuig II, LLC, which entity is wholly owned by Respondent, and that pursuant to such licensing agreement Petitioner has continued to use the Shrimp Mark since that date. Respondent raises several defenses, including licensee estoppel.9 The parties fully briefed this cancellation proceeding, including a reply brief from Petitioner.10 9 Respondent also raised “judicial estoppel . . . res judicata … collateral estoppel . . . fraud . . . unclean hands . . . laches [and] lack of capacity,” as separate defenses in his Answer. See 4 TTABVUE 6-10 (Answer ¶¶ 15-21). However, Respondent only argued the defense of licensee estoppel in his trial brief; we therefore address only this defense in our decision. To the extent the other defenses were even viable, they were waived because they were not argued by Respondent in his trial brief. Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1753 (TTAB 2013) (defense not argued in brief deemed waived), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.). See also TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1100-01 (TTAB 2018) (affirmative defenses waived because not pursued at trial or argued in brief). 10 13 TTABVUE (Petitioner’s main brief); 14 TTABVUE (Respondent’s brief); and 15 TTABVUE (Petitioner’s reply brief). Cancellation No. 92073900 6 I. Record The record includes the pleadings and, pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the files for Respondent’s registrations. In addition, Petitioner submitted the following:11  Declarations of (1) Denise Page, Petitioner’s manager, (2) Shuler Page, Petitioner’s president and manager, (3) Travis Page, Petitioner’s employee in general operations and management, with exhibits, (4) Shane Salisbury, Petitioner’s employee in general operations and management, with exhibits, and (5) Kell C. Mercer, Petitioner’s outside counsel for bankruptcy matters.12  Notice of reliance on various materials, including a copy of the file for (cancelled) Registration No. 3863168; a copy of the file of Respondent’s application Ser. No. 88670978; copies of official public records from the Texas Secretary of State for LRTCL, LLC (“LRTCL”) and Clubquig II, LLC (“Clubquig II”); copies of records from the United States Bankruptcy Court for the Western District of Texas, Austin Division, in a proceeding entitled “In re Michael Edward Quigley and Francine Gilmore Quigley”; Facebook screenshots and other internet printouts; and copies of records from a Texas state court civil action involving Clubquig II and Petitioner.13  Rebuttal declaration of Denise Page.14 Respondent submitted the following:  Declarations of (1) Michael E. Quigley, Respondent, with exhibits; (2) Dave Gore, a former employee of “Gumbo’s Restaurant,” and employee of Petitioner until 2009; and (3) Pierluigi Capello, a former general manager of a “Gumbo’s Restaurant” in Austin, Texas, from 2002-2009.15  Notice of reliance on various materials, including copies of the files for involved 11 Petitioner, during its rebuttal period, filed a “notice of reliance” (10 TTABVUE) and “rebuttal disclosures” (11 TTABVUE). There were no documents or evidence attached to these filings; accordingly, they have no evidentiary value. 12 7 TTABVUE 1-46. 13 5 TTABVUE 1-380; and 6 TTABVUE 1-817. 14 12 TTABVUE. 15 9 TTABVUE 1-30. Cancellation No. 92073900 7 Regs. No. ’388 and ’470; a copy of the file for (cancelled) Reg. No. 3863168; a copy of the file for application Ser. No. 88670978; copies of official public records from the Texas Secretary of State for LRTCL, Clubquig, LLC, and Clubquig II; copies of records from the United States Bankruptcy Court (W.D. Texas), Austin Division, proceeding entitled “In re Michael Edward Quigley and Francine Gilmore Quigley”; Facebook screenshots and other internet printouts; copies of records from the Texas state court civil action involving Clubquig II and Petitioner; and copies of records from the U.S. Bankruptcy Court (W.D. Texas), Austin Division, proceeding entitled “In re 2ndCh, LLC d/b/a Gumbo’s North . . .”16 Some of the materials introduced are duplicative and thus unnecessary because, once material has been properly made of record, “it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence.” Trademark Rule 2.122(a). See also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 703.01(a) (2021). In addition, it was unnecessary to submit the file records of the involved registrations because, as noted, they are automatically of record under Trademark Rule 2.122(b). We further note the parties submitted materials or exhibits with their pleadings. Generally, other than pleaded registrations, exhibits to pleadings will not be considered of record unless otherwise properly introduced at trial. Trademark Rule 2.122(c); see also TBMP § 704.05(a).17 II. Background In view of the somewhat complicated circumstances related to this proceeding, including allegations involving ownership, licensing and assignment of the involved marks, it is necessary to provide some basic factual background. 16 8 TTABVUE 1-748. 17 We note that at least some of the exhibits attached to the pleadings were properly submitted during the trial periods and thus are of record. Cancellation No. 92073900 8 Respondent is an individual who, as early as 2003, has been involved in the restaurant business, including acting as managing partner for the legal entities: Clubquig II and LRTCL.18 However, by 2012, Respondent was affiliated with only one restaurant, owned by Clubquig II and located in Georgetown, Texas, known at the time as “Gumbo’s Steak & Seafood.”19 Respondent admits that he has not “personally operated a restaurant using the [LA Café mark or the Shrimp Mark] since at least 2012.”20 Petitioner’s Purchase of Restaurant and License Agreement On or about August 12, 2012, Petitioner purchased the “Gumbo’s Steak & Seafood” restaurant located in Georgetown, Texas from Clubquig II.21 On or about August 22, 2012, Petitioner and Clubquig II executed a “Gumbo’s Steak & Seafood LICENSE AGREEMENT” (hereinafter, the “License Agreement”).22 The License Agreement recites that Petitioner “acquired from [Clubquig II] and now owns the Gumbo’s Steak & Seafood” restaurant in Georgetown, Texas.23 The License 18 9 TTABVUE 4-5 (Quigley Dec. ¶¶ 2-4). 19 8 TTABVUE 371-372 (“Facts” from Memorandum Opinion issued by U.S. Bankruptcy Court, W.D. Texas, on October 10, 2017). 20 4 TTABVUE 3-4 (Answer, ¶¶ 6-7). 21 7 TTABVUE 5 (D. Page Dec. ¶ 3). 22 9 TTABVUE 14-23 (“true and correct copy” of License Agreement attached as “Exhibit B” to Quigley Dec.). We note the same License Agreement was introduced by Petitioner and Respondent more than once in the record; we use this copy at 9 TTABVUE for sake of reference and citation. 7 TTABVUE 6 (Page decl. ¶ 11). 23 9 TTABVUE 14. Cancellation No. 92073900 9 Agreement also contains various provisions regarding the establishment and operation of the restaurant, including:24 WHEREAS, Licensor identifies the Concept by means of its trade name, trademark, logos, emblems and indicia of origin, including, but not limited to, the mark “GUMBO’S STEAK & SEAFOOD”, (hereinafter referred to as “GUMBO’S Marks”); . . . 3. Identification of Restaurant. The Licensee will operate the North Restaurant so that it is clearly identified and advertised as a GUMBO’S Restaurant. The style and form of the words ‘GUMBO’S STEAK & SEAFOOD’ and the other GUMBO’S Marks used in any advertising, marketing, public relations or promotional program shall be consistent with the federal registered trademark and with the historical use thereof at the North Restaurant or at any other GUMBO’S Restaurant owned and operated by Licensor. . . 28. Licensor’s Warranty. Licensor warrants and represents that it is the owner and has the right to license the use of the GUMBO’S Marks, Licensor hereby agrees to indemnify save Licensee harmless against direct liability or loss (other than consequential or indirect loss) suffered by Licensee as a result of Licensee utilizing the GUMBO’S Marks pursuant to this License Agreement. The License Agreement does not identify with particularity the marks or registrations subject to the licensing agreement, other than GUMBO’S STEAK & SEAFOOD. In particular, it does not identify the Shrimp Mark and LA Café mark. As to the “the federal registered trademark” language in paragraph 3 of the License Agreement, the only registration that licensor Clubquig II owned then was Reg. No. 3863168 (hereinafter “Reg. ’168”) for the Shrimp Mark, 24 9 TTABVUE 15, 21. Cancellation No. 92073900 10 for “restaurant services.”25 Reg. ‘168 issued on January 22, 2010 to Clubquig II; was assigned to Respondent on July 11, 2013; and was cancelled on May 26, 2017 based on Respondent’s failure to file a Section 8 declaration of use (or excusable non-use).26 (The same Shrimp Mark for restaurant services is now covered by Respondent’s involved Reg. ’470, which issued that same year, on December 19, 2017). There is no evidence that Clubquig II ever assigned its rights as licensor or any rights deriving from the License Agreement. There is also no evidence of any agreed- upon modifications to the agreement, or any formal notification that Respondent, and not Clubquig II, would be acting as licensor under the License Agreement. The Involved Registrations When the License Agreement was executed, neither Clubquig II nor Respondent owned either of the two involved registrations. Reg. ’388 for (the LA Café Mark) issued to a nonparty company in 2000, was assigned in 2010 to LRTCL, a limited liability company for which Respondent Quigley was managing partner, and was subsequently assigned to Respondent in 2016.27 25 5 TTABVUE 95-98 (copy of registration file from USPTO TSDR electronic database). 26 Id. 27 Assignment recorded on May 12, 2016, executed on January 1, 2016. 8 TTABVUE 124. Cancellation No. 92073900 11 With respect to Reg. ‘470 for (the Shrimp Mark), Respondent filed the underlying use-based application on May 12, 2017, well after the execution of the License Agreement.28 The specimen of use submitted by Respondent with his application is described as a “scanned first page of website” and appears as follows:29 28 8 TTABVUE 135-156. 29 Id. at 149. Cancellation No. 92073900 12 This specimen is identical to the specimen submitted in connection with Reg. ’168, which issued to Clubquig II in 2010 and was cancelled in 2017. It even displays the printout date “1/22/2010” in the bottom right corner of the webpage.30 Notably, Re- spondent admitted in his Answer that the restaurant identified in the specimen, “Gumbo’s of Westlake,” had “ceased offering restaurant services more than three years ago,” which means this restaurant did not exist when Respondent filed his use- based application supported by the 2010 specimen on May 12, 2017.31 Bankruptcy Proceeding/ Civil Action On or about October 22, 2012, Respondent “filed Chapter 7 bankruptcy . . . and shortly thereafter closed all restaurants operated at that time by Respondent and any of his business[es].”32 The principals of Petitioner filed a motion to reopen the bankruptcy case, which was denied on October 10, 2017.33 On or around February 14, 2018, Clubquig II filed a civil action in Texas state court against Petitioner and others, alleging, inter alia, “breach of contract” and 30 Compare 5 TTABVUE 120 (specimen submitted in connection with Reg. ‘168) and 6 TTABVUE 16 (specimen used for Reg. ‘470). 31 4 TTABVUE 4 (¶ 7). Petitioner also submitted evidence showing that this restaurant was closed at least as early at 32 Id., ¶ 6. Respondent’s filing for Chapter 7 bankruptcy is not in dispute. See, e.g., 5 TTABVUE 152 (¶ 3) and 8 TTABVUE 389 (Quigley Dep. 13:11-22.) 33 8 TTABVUE 374 Cancellation No. 92073900 13 “trademark infringement.”34 The civil action was dismissed without prejudice on April 11, 2019.35 Petitioner’s Application to Register the GUMBO’S NORTH Mark On October 28, 2019, Petitioner filed its pleaded application to register the GUMBO’S NORTH Mark: for restaurant, catering, bar, and carry-out services. The USPTO refused registration of this mark based on a likelihood of confusion with Respondent’s two registered marks that are subject of this cancellation.36 The application is suspended pending the outcome of this proceeding. III. Entitlement to a Statutory Cause of Action Entitlement to a statutory cause of action37 must be established in every inter partes case. See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, *3 (Fed. Cir. 2020), cert. denied, ___ U.S. ___ (2021), (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 109 34 8 TTABVUE 466-472 (copy of “Plaintiff’s Second Amended Petition and Request for Injunctive Relief,” dated February 14, 2018.) 35 According to Petitioner, the Texas state court civil action “did not result in a final judgment on the merits” and “Clubquig II voluntarily dismissed the Texas State Court litigation.” 13 TTABVUE 51. Respondent does not dispute this. 36 6 TTABVUE 280-306 (copy of application file for Ser. No. 88670978 and copy of Office action (issued February 6, 2020, refusing registration). 37 Board decisions have previously analyzed the requirements of Sections 13 and 14 of the Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in nomenclature, our prior decisions and those of the Federal Circuit interpreting Section 13 and 14 remain applicable. See Major League Soccer, LLC v. F.C. Int’l Milano S.p.A., 2020 USPQ2d 11488, at *5 n. 18 (TTAB 2020); Spanishtown Enters., Inc. v. Transcend Res., Inc., 2020 USPQ2d 11388, *2 (TTAB 2020). Cancellation No. 92073900 14 USPQ2d 2061, 2067 n.4 (2014)). Based on the established facts that Petitioner is the owner of the pleaded application for the mark , which has been provisionally refused registration based on Respondent’s registrations, we find Petitioner has a reasonable belief of damage that is proximately caused by the continued registration of Respondent’s marks, and that the petition to cancel the registrations is within the zone of Petitioner’s interests, as protected by the Act. Corcamore v. SFM, 2020 USPQ2d 11277, at *7-8 (TTAB 2020), cert. denied, ___ U.S. ___ (2021). See also Australian Therapeutic, 2020 USPQ2d 10837 at *3; ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012) (evidence of office action showing that petitioner’s pending application was refused registration based on respondent’s registration established standing); Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d 1953, 1959 (TTAB 2008) (Opposer’s evidence of the suspension of its pending trademark application based on the applicant’s application established its standing); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982) (“standing may be established by assert[ing] a likelihood of confusion which is not wholly without merit ... or, as here, a rejection of an application during prosecution”). Respondent’s argument that Petitioner “lacks standing” to bring this cancellation is based largely on his interpretation as to the merits of the claims presented herein.38 38 14 TTABVUE 19. Cancellation No. 92073900 15 Specifically, Respondent states that he “does not dispute that Petitioner possesses a commercial interest,” but contends that Petitioner “has not elucidated or proven that any risk of damages arises from Respondent’s Marks, given that the Marks, goodwill, reputational value, and indeed the entire GUMBO’S restaurant concept has inured to Petitioner only as a result of its licensee status.”39 But Petitioner has a reasonable belief of damage caused by the continued registration of Respondent’s marks because they serve as a basis for the USPTO refusing registration to Petitioner. Accordingly, Petitioner has established its entitlement to a statutory cause of action. IV. Applicable Law A. Abandonment Under Section 45 of the Act, a mark shall be deemed to be abandoned: When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. 15 U.S.C. § 1127. Because a registration is presumed valid, 15 U.S.C. § 1057(b), the party seeking its cancellation must rebut this presumption by a preponderance of the evidence. Cold War Museum v. Cold War Air Museum, 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. 39 Id. at 21. Cancellation No. 92073900 16 Cir. 2009); W. Fla. Seafood Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1665-66 (Fed. Cir. 1994). If 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. The burden of production (i.e., going forward) then shifts to the respondent to produce evidence that it has either used the mark or that it has intended to resume use (e.g., a convincing demonstration of ‘excusable non-use’ that would negate any intent not to resume use of the mark). The burden of persuasion remains with the plaintiff to prove abandonment by a preponderance of the evidence. Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1417 (TTAB 2016) (citing Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1393 (Fed. Cir. 1990)). With respect to Reg. ’470 in particular, since this registration originated from a use-based application filed on May 12, 2017, that is the earliest date to start any three-year period of nonuse, proof of which would constitute a prima facie case of abandonment. See ShutEmDown Sports, 102 USPQ2d at 1042. Because Petitioner filed the petition to cancel this registration on March 31, 2020, less than three years from the filing date, the allegations do not set forth at least a three-year period of nonuse for purposes of making a prima facie showing of abandonment. Finally, we point out that abandonment is a question of fact. See Stock Pot Rest., Inc. v. Stockpot, Inc., 737 F.2d 1576, 222 USPQ 665, 667 (Fed. Cir. 1984). Any inference of abandonment must be based on proven fact. 15 U.S.C. § 1127. See also Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1310 (Fed. Cir. 1989) (“The protection due the registrant is provided by Cancellation No. 92073900 17 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.”) (quoting P.A.B. Produits et Appareils de Beaute v. Satinine Societa in Nome Collettivo di S.A. e. M. Usellini, 570 F.2d 328, 196 USPQ 801, 804-05 (CCPA 1978)). B. Non-use Under Section 1(a) of the Act, 15 U.S.C. § 1051(a), a mark may not be registered unless it is “used in commerce,” and “an applicant may not claim a Section 1(a) filing basis unless the mark was in use in commerce on or in connection with all the goods or services covered by the Section 1(a) basis as of the application filing date.” Hachette Filipacchi Presse v. Elle Belle LLC, 85 USPQ2d 1090, 1093 (TTAB 2007) (citing Trademark Rule 2.34(a)(1)(i), 37 C.F.R. § 2.34(a)(1)(i)). The Act provides that “[t]he term ‘use in commerce’ means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 U.S.C. § 1127; see also Christian Faith Fellowship Church v. Adidas AG, 841 F.3d 986, 120 USPQ2d 1640, 1642 (Fed. Cir. 2016) (providing an overview of the statutory use in commerce requirement); Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1773-75 (TTAB 1994) (reviewing the legislative history), aff’d, 108 F.3d 1392 (Fed. Cir. 1997) (unpublished). Section 45 of the Act states in relevant part that a mark is considered in use in commerce for services: when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services. Cancellation No. 92073900 18 15 U.S.C. § 1127. In the case of a use-based application that matures into a registration, as is the case with Reg. ’470, if it is shown that the registrant made no provable use in commerce of its mark prior to or as of the filing date of its application, a plaintiff may seek to cancel the resulting registration on this ground. ShutEmDown Sports, 102 USPQ2d at 1045; see also Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1064 (TTAB 2017) (explaining that non-use provides an “independent basis to cancel Respondent’s registration.”). In such cases, the underlying application is deemed “void ab initio,” and so too is the resulting registration. ShutEmDown Sports, 102 USPQ2d at 1045. Here, the underlying, use-based application for Respondent’s Reg. No. ’470 was filed on May 12, 2017. We focus on this date and decide whether Respondent was using the registered mark in commerce for restaurant services as of that date. V. Parties’ Arguments The parties’ primary arguments hinge heavily on the significance of the License Agreement. Indeed, Petitioner’s claims of abandonment and non-use, and Respondent’s defenses thereto, rely greatly on the parties’ interpretations of the License Agreement, and what ramifications it has with respect to Respondent’s registered marks at issue in this proceeding. Cancellation No. 92073900 19 Respondent Respondent’s argument in this proceeding is best summarized as follows: while he admits that he has not “personally” used either the registered LA Café Mark or the registered Shrimp Mark in connection with restaurant services at any time since 2012, the License Agreement has been in effect since then and use of these marks under that agreement has inured to his benefit. Specifically, Respondent argues:40 the Licensing Agreement is more extensive than just an established mark and accompanying design. It also includes and governs the use of logos and emblems, such as the humanized shrimp in a top-hat symbol. The GUMBO’s restaurant concept and related symbols, logos, and emblems, which prominently feature in all marks and designs at issue in this proceeding, have been actively used in business since August 2012 pursuant to the Licensing Agreement. Petitioner has submitted vast amounts of evidence showing its ongoing use of design elements, emblems, and logos, including Respondent’s marks and designs that are clearly derived from Respondent’s marks, throughout the timeframe of August, 2012, until present (see [citations to submissions from Petitioner]). Respondent further asserts that:41 the licensing is a related, ongoing business activity that Respondent has actively managed and has not discontinued, to the effect that Respondent’s marks, and the goodwill historically associated with them, remain in operation. In short, the Licensing Agreement remains in operation, and the marks, emblems, and logos governed by that Agreement have been maintained by Respondent, who is both the individual assignee and the principal in Clubquig, II, LLC, the Licensor under the Agreement. We further note that Respondent avers in his declaration that the License Agreement was mistakenly executed by Clubquig II:42 40 14 TTABVUE 24. 41 Id. at 27. 42 9 TTABVUE 5 (Quigley Dec. ¶ 10). Cancellation No. 92073900 20 The licensing agreement specifically recited that it was on behalf of Clubquig II, LLC, as the licensor. On review, this does appear to be a mistake as to the formal holder of the GUMBO’S related marks even though as of August 22, 2012, I was personally in control of the Shrimp Marks, and both LRTCL, LLC, and Clubquig II, LLC, the entities that had formal possession of the Shrimp Marks. There is no other individual who had the legal right to license the Shrimp Marks as of August 22, 2012. In his brief, Respondent argues and reiterates that “[m]ere scrivener’s error may have seen Respondent misstate Clubquig II, LLC, as the total owner of the GUMBO’S Marks and concept, but the fact remains that Petitioner was validly granted the use of the GUMBO’S Marks, name, and restaurant concept in August 2012 by Respondent, who was the only individual, acting as either an individual or corporate officer, with the legal capacity to grant such rights.”43 Respondent also asserts that because Petitioner’s “status as a licensee is clear,” it is therefore “estopped from attacking the validity of marks that were licensed to that party.”44 Petitioner Petitioner acknowledges the License Agreement with Clubquig II in 2012, but argues that, since that date, it has not used either of the two involved registered marks in connection with its restaurant services. Specifically, in connection with Reg. ’388, Petitioner argues that “[n]either Respondent nor Petitioner has used the LA Café mark, as registered, since at least 2012.”45 Petitioner contends that this period 43 14 TTABVUE 20. 44 Id. at 23. 45 13 TTABVUE 24. Cancellation No. 92073900 21 of non-use of the LA Café mark “for at least 8 years is prima facie evidence of abandonment.”46 As to Reg. ‘470, Petitioner also argues that “neither Respondent nor Petitioner has used the Shrimp Mark, as registered, since at least 2012,” and that the specimen submitted with the underlying application “had not been used in commerce since at least 2012.”47 Petitioner reiterates that the specimen that was submitted by Respondent in 2017 in order to procure Reg. ‘470 is identical to the specimen used by Clubquig II in 2010 to procure the now-cancelled Reg. ‘168. Petitioner questions and casts doubt on Respondent’s contention that he was relying on Petitioner’s use of its GUMBO’S NORTH mark and the License Agreement to support Respondent’s use of the Shrimp Mark (Reg. ‘470):48 If Respondent truly believed that Petitioner’s use of Petitioner’s [GUMBO’S NORTH] Mark supported Respondent’s May 12, 2017 application for [Reg. ‘470, Shrimp Mark], why would Respondent resort to submitting a specimen for an outdated mark that he had not used for restaurant services since at least 2012? Clearly, Petitioner had public website pages and postings showing its use of Petitioner’s Marks in 2017. … Moreover, if Respondent truly believed that Petitioner’s use of Petitioner’s [GUMBO’S NORTH] Mark supported his 2017 application to register the Shrimp Mark, why did he seek to register the Shrimp Mark, rather than the variant design mark actually used in commerce by Petitioner at the time? 46 Id. at 25. 47 Id. at 28. 48 13 TTABVUE 32. Cancellation No. 92073900 22 As noted above, Clubquig II owned a registration (now-cancelled Reg. ‘168) at the time of execution of the License Agreement and this registration was then assigned to Respondent in 2013. Petitioner asserts that the assignment of this registration did not involve the License Agreement: Neither Clubquig II nor Respondent provided Petitioner with any notice of this assignment that divested Petitioner’s Licensor (Clubquig II) of [now- cancelled Reg. ‘168]. Notably, this assignment conveyed [Reg. ‘168], but neither the 2012 License Agreement nor any goodwill associated with the business of Clubquig II. In its reply brief, Petitioner rebuts Respondent’s assertions of licensee estoppel by arguing that it does not apply in this case because Respondent, “in his personal capacity, the same capacity in which he appears in this proceeding-is not a party to the 2012 License Agreement,” and “it is axiomatic that the doctrine of licensee estoppel only estops a challenge to ‘the licensor’s rights in the licensed mark during the time that the license is in force,’” citing Freeman v. Nat’l Ass’n of Realtors, 64 USPQ2d 1700, 1703 (TTAB 2002), and other Board decisions.49 Petitioner argues that Clubquig II was the licensor and it “has never owned” the marks that are subject of this cancellation.50 Petitioner further argues that the License Agreement “stands terminated” based on Clubquig II’s allegations in its civil action against Petitioner filed on February 14, 2018.51 49 15 TTABVUE 16-17. 50 Id. at 17. 51 Id. at 17-18, referring to Clubquig II’s “Second Amended Petition and Request for Injunctive Relief” in Texas state court civil action No. D-1-GN-17-003380 (copy of pleading submitted at 8 TTABVUE 466-472). Cancellation No. 92073900 23 VI. Analysis A. The License Agreement and Licensee Estoppel For the following reasons, Respondent’s reliance on the License Agreement is misplaced. Simply put, Respondent cannot rely on the License Agreement to show that Petitioner’s trademark use in connection with its restaurant services inures to Respondent’s benefit to defeat the abandonment and non-use claims. In addition, Respondent cannot rely on the License Agreement to assert licensee estoppel in this proceeding. 1. Respondent Was Not a Party to the License Agreement At the outset, we reject one important contention of Respondent, namely, that it was “mere scrivener’s error” that he is not identified as the licensor or owner of trademarks in the License Agreement. It is clear from the entirety of the License Agreement that Clubquig II is a “Texas Limited Liability Company” and intended to be the “Licensor.” Respondent’s name only appears in the signature line, and he is clearly signing the agreement on behalf of Clubquig II as its “Manager,” not in his individual capacity. He also initialed each page. It is utterly implausible that he would have signed and initialed the License Agreement if it was in the name of the wrong party. Respondent’s averment in his declaration that it was a “mistake” for Clubquig II, LLC to be identified as the “Licensor” in the agreement because Respondent was “personally in control of the GUMBO’S marks . . . [and] there [was] no other individual who had the legal right to license the GUMBO’S marks as of August 22, 2012” is flatly inconsistent with the terms of the License Agreement. Paragraph 28 Cancellation No. 92073900 24 states: “28. Licensor’s Warranty. Licensor [Clubquig II] warrants and represents that it is the owner and has the right to license the use of the GUMBO’S Marks.” If Clubquig II did not have ownership rights in any of the putative marks being licensed to Petitioner, then the entire agreement is void because there were no rights in the marks for Clubquig II to license. If the License Agreement was not valid, then this puts Respondent in even a more precarious position, because he relies on the License Agreement for purposes of rebutting Petitioner’s claims of non-use and abandonment of the involved registered marks. Moreover, Respondent’s contention that he was the owner of the “GUMBO’S Marks” at the time of the License Agreement directly contradicts the analysis and findings of the Bankruptcy Court, which are also corroborated by USPTO assignment records. Specifically, the Bankruptcy Court found that, in 2012, the LA Café Mark was owned by “LRTCL, LLC, a company partly owned by [Respondent],” and the now- cancelled Reg. ‘168 was owned by Clubquig II. In other words, Respondent did not own the LA Café Mark or the Shrimp Mark when the License Agreement was executed in 2012. To be clear, Respondent and Clubquig II, LLC are two distinctly different entities and, despite Respondent’s position as Manager of Clubquig II, the two entities are not treated as one and the same. For purposes of determining ownership of a trademark, the Board and the Court of Appeals for the Federal Circuit have long made a distinction between an individual and a corporate entity owned by that individual. See, e.g., Great Seats Ltd. v. Great Seats Inc., 84 USPQ2d 1235, 1239 Cancellation No. 92073900 25 (TTAB 2007) (individual and corporations treated as distinct legal entities for purposes of trademark ownership and licensing despite individual’s controlling interest in the corporations); see also Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335, 1336 (Fed. Cir. 1988) (Federal Circuit agreed with Board’s decision to hold an application void ab initio based on distinction between an individual, who filed the application, and a corporation affiliated with the same individual). We reiterate that there is also no evidence that Clubquig II assigned its rights in the License Agreement to Respondent or anyone else for that matter. Rather, based on the civil action brought by Clubquig II against Petitioner, in or about 2017 or 2018, Clubquig II appears to be an ongoing entity and asserted what it believed were rights it had as the licensor in the License Agreement. In sum, Respondent was not a party to the License Agreement and consequently cannot assert rights in, or benefit from, the License Agreement. 2. The License Agreement Does Not Identify the LA Café Mark or Shrimp Mark The License Agreement is unclear as to what particular trademarks are encompassed by the agreement. Although the agreement contains language regarding a restaurant “Concept” that includes “trade name, trademark, logos, emblems and indicia of origin, including, but not limited to, the mark ‘GUMBO’S STEAK & SEAFOOD’, (hereinafter referred to as ‘GUMBO’S Marks’),” there is no illustration or description of the “GUMBO’S Marks,” much less of either the LA Café Mark or the Shrimp Mark. There are no additional materials of record or extraneous evidence to indicate with any amount of reasonable certainty that the License Cancellation No. 92073900 26 Agreement encompassed either of the two registered marks involved in this proceeding. Accordingly, even if we were to deem Respondent as benefitting from the License Agreement, and we do not, we cannot further find on this record that the License Agreement involved the LA Café Mark or the Shrimp Mark. Even if, arguendo, we were to assume that the license grant of the GUMBO’S Marks included the Shrimp Mark in Reg. ’168 because of the stray reference in numbered paragraph 3 to an unidentified “federal registered trademark,” this would not alter the outcome because Respondent was not a party to the License Agreement. Thus, once the licensor, Clubquig II, assigned ownership of that registration to Respondent in 2013, the Shrimp Mark could no longer be subject of the licensing agreement because Clubquig II could not license what it did not own. 3. Licensee Estoppel is Inapplicable Under the doctrine of licensee estoppel, certain claims brought by a licensee challenging the validity of the licensor’s mark may be barred, including an allegation that the licensor abandoned its mark through naked licensing. Leatherwood Scopes Int’l Inc. v. Leatherwood, 63 USPQ2d 1699, 1703 (TTAB 2002) (naked licensing claim barred). A licensor may raise this equitable defense during the term of the license or following its expiration if the claim is based on facts that occurred during the license period. Estate of Biro v. Bic Corp., 18 USPQ2d at 1386 (“Inasmuch as applicant is challenging the agreement based on facts which occurred during the time frame of the ‘license’, we find that applicant is estopped under the doctrine of licensee estoppel.”). Inherent in any licensee estoppel defense, though, are the following elements: (1) Cancellation No. 92073900 27 the party asserting the defense is the licensor; and (2) the challenged marks are the subjects of the licensing agreement. See Sturgis Motorcycle Rally, Inc. v. Rushmore Photo & Gifts, Inc., 908 F.3d 313, 128 USPQ2d 1575, 1583 (8th Cir. 2018) (licensee estoppel only applies to marks subject of licensing agreement). In this case, Respondent has failed to prove these two elements necessary to successfully assert the licensee estoppel defense. To the contrary, as discussed above, we find by the preponderance of the evidence that (1) Respondent was not a party to the License Agreement and was never Petitioner’s licensor, and (2) the License Agreement did not encompass either of the two registered marks that Petitioner now challenges. Accordingly, Respondent’s argument that Petitioner is estopped from seeking to cancel his registrations based on the License Agreement is meritless. B. The Mark in Reg. ’388 (LA Café Mark) Has Been Abandoned Based on the record in its entirety and factual findings we have made, discussed supra, but with particular emphasis on the following:  Respondent’s admission that he has not used the LA Café Mark in connection restaurant services since at least 2012;  Respondent was not a party to the License Agreement and, in any event, the License Agreement does not encompass licensing of the LA Café Mark; and  the unrebutted averments from Petitioner’s principals that Petitioner has not used the LA Café Mark since 2012, we conclude that this period of more than 3 consecutive years of nonuse (from 2012 to 2020) establishes prima facie that the mark LA Café Mark shown in Reg. ’388 has been abandoned. 15 U.S.C. § 1127. Respondent has not rebutted this prima facie case with evidence showing that he has either used the mark or did not cease its use with Cancellation No. 92073900 28 the intent not to resume use, and has not provided a convincing demonstration of ‘excusable non-use.’ Accordingly, Reg. ’388 for the LA Café Mark is abandoned. C. Reg. ’470 (Shrimp Mark) Is Void Ab Initio Based on Non-use Based on the record in its entirety and factual findings we have made, discussed supra, but with particular emphasis on the following:  Respondent’s admission that he has not used the Shrimp Mark in connection restaurant services since at least 2012;  the specimen submitted in support of the application that matured into Reg. ’470 identifies a restaurant that had closed long before the specimen was filed;  Respondent was not a party to the License Agreement and, in any event, the License Agreement does not encompass licensing of the Shrimp Mark; and  the unrebutted averments from Petitioner’s principals that Petitioner has not used the Shrimp Mark since 2012, we conclude that as of the May 12, 2017 filing date of the underlying use-based application that matured into Reg. ’470 for the Shrimp Mark, Respondent was not using this mark in commerce. Accordingly, Reg. ’470 for the Shrimp Mark is void ab initio for non-use of the mark in commerce. Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1305 (Fed. Cir. 2009) (“The registration of a mark that does not meet the use requirement is void ab initio.”).52 52 Because we are granting the petition to cancel Reg. ‘470 on the claim of non-use, we need not decide the claim of fraud with respect to this registration. ShutEmDown Sports, 102 USPQ2d at 1045 (“Because we find that respondent’s allegation of use of his mark in com- merce for the identified goods, at the time of filing of his application was false, we hold that the application was void ab initio, and we need not decide the fraud claim.”). Cancellation No. 92073900 29 Decision: The petition to cancel Registration No. 2368388 is granted on the ground of abandonment. The petition to cancel Registration No. 5350470 is granted on the ground of non-use of the mark in commerce prior to or as of the filing date of the underlying use-based application.