Alco Electronics Limitedv.Rolf Strothmann

Trademark Trial and Appeal Board

Mar 1, 2012

No. 92052572 (T.T.A.B. Mar. 1, 2012)

GCP
Mailed: March 1, 2012

Cancellation No. 92052572

Alco Electronics Limited

v.

Rolf Strothmann

Before Kuhlke, Wellington, and Wolfson,
Administrative Trademark Judges.

By the Board:
On June 14, 2010, Alco Electronics Limited
(“petitioner”) filed a petition for cancellation that seeks
to partially cancel the registration owned by Rolf
Strothmann (“respondent”) for the mark E-MOTION in standard
character format for “golf carts, shopping carts, mail
delivery carts, industrial trucks, baby carriages, hand
trucks, bicycles, wheel chairs, rikshaws [sic], and carts
for suitcases, all with auxiliary motors” in International
Class 12.1

1 Reg. No. 2700612, issued on March 25, 2003 on the Principal
Register, claiming August 29, 2002, both as the date of first use
anywhere and the date of first use in commerce.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DISPOSITION IS
NOT A PRECEDENT OF
THE TTAB
Cancellation No. 92052572
2
As grounds for cancellation, petitioner alleges that
respondent has abandoned his E-MOTION mark by never using,
and having no intent to begin use, of his mark on some of
the goods identified in the subject registration, namely,
shopping carts, mail delivery carts, industrial trucks, baby
carriages, hand trucks, bicycles, wheel chairs, rickshaws,
and carts for suitcases (collectively, the “Extra Goods.”)
Respondent, in his answer, has denied the essential
allegations of the petition to cancel.
This case now comes before the Board for consideration
of petitioner’s motion (filed August 8, 2011) for summary
judgment for partial cancellation on its asserted claim of
abandonment. The motion is fully briefed.
In support of its motion, petitioner contends that,
although respondent’s subject registration issued over eight
years ago, respondent has never used his E-MOTION mark in
commerce in connection with the Extra Goods. Following the
taking of discovery in this matter, petitioner maintains
that respondent has admitted, under oath, that (1) he is not
currently selling the Extra Goods under the E-MOTION mark
and (2) he has never sold or used the Extra Goods under the
E-MOTION mark at any time since his registration issued.
Furthermore, petitioner argues that respondent has no intent
to resume or, more accurately, begin use of his E-MOTION
mark in connection with the Extra Goods. In support of
respondent’s alleged lack of intent to commence use of his
Cancellation No. 92052572
3
E-MOTION mark in association with the Extra Goods,
petitioner maintains that in response to petitioner’s
discovery requests:
(1) respondent has not produced any documents which
evidence any advertisements or promotion of the Extra
Goods in connection with his E-MOTION mark;

(2) respondent has not produced any documents
evidencing communications with any advertising agency
or public relations firm relating to, or referencing,
the E-MOTION mark in connection with the Extra Goods;

(3) respondent has not produced any documents
evidencing advertising and promotional channels through
which respondent intended to offer for sale the Extra
Goods using the E-MOTION mark;

(4) respondent has not produced any documents that show
projected advertising and promotional costs in
connection with the E-MOTION mark in association with
the Extra Goods or any documents that show monthly
projected sales of the Extra Goods using the E-MOTION
mark;

(5) respondent has not produced any exemplars of the E-
MOTION mark used in connection with any of the Extra
Goods; and

(6) respondent has not produced a single document
showing a business plan, marketing plan, operational
plan, or financial plan relating to the sale or planned
sale of the Extra Goods using the E-MOTION mark.

Further, petitioner argues that, even assuming that
respondent can somehow “resume” use of his never used E-
MOTION mark on the Extra Goods, respondent still cannot meet
his burden and overcome the presumption of abandonment. To
prove intent to resume use, petitioner maintains that
respondent must present documentary evidence showing
specific actions taken for the resumption of use of the E-
MOTION mark on the Extra Goods such that his intent to
Cancellation No. 92052572
4
resume use may be reasonably inferred. Petitioner contends,
however, that the sum total of the evidence of respondent’s
intent to “resume” use is a single meeting that he had with
his wife and Mr. John Peirarndozzi in Saarbrucken, Germany.
Petitioner maintains that this meeting was held in May of
2008, more than five years after the subject registration
for the mark E-MOTION issued, and during which respondent
did not discuss any commercial level use of the Extra Goods
at any defined point in the future.
Finally, petitioner argues that even if respondent’s
single meeting with his wife and colleague in May of 2008
was sufficient to show intent to commence commercial-scale
use within a specified and reasonable time, respondent will
nevertheless be unable to show intent to commence use
between September 2002 and February 2008, which is a period
of nonuse of at least three years and constitutes a prima
facie showing of abandonment.
In view of the foregoing, petitioner requests that the
Board grant its motion for summary judgment and strike the
Extra Goods from the subject registration.
As evidence in support of its motion, petitioner has
submitted the declaration of Jerry S. Podkopacz, one of the
attorneys representing petitioner, which introduces, among
other things, the following exhibits: (i) a copy of
respondent’s registration; (ii) a copy of the statement of
Cancellation No. 92052572
5
use filed by respondent on September 10, 2002 during the
prosecution of the underlying application of the subject
registration, declaring use only for golf carts, (iii) a
combined Declaration under Section 8 and 15 of the Lanham
Act for the subject registration signed by respondent on
February 10, 2009 and filed with the USPTO on March 16,
2009, declaring use of the mark on all the goods identified
in the underlying application, (iv) copies of respondent’s
responses and supplemental responses to petitioner’s written
discovery requests, including responses to petitioner’s
requests for admission, (v) copies of petitioner’s pleaded
pending application Serial Nos. 77830956 and 77830959, (vi)
copies of office actions that show that petitioner’s pleaded
pending applications were refused registration under
Trademark Act Section 2(d) based on respondent's involved
registration and (vii) documents produced by respondent in
discovery and filed under seal by petitioner which
constitute the meeting notes of the May 2008 meeting held in
Saarbrucken, Germany between respondent, his wife and a
colleague.
In response, respondent argues that petitioner’s motion
for summary judgment is based on the erroneous premise that
respondent allegedly abandoned his E-MOTION mark with
respect to the Extra Goods, based on respondent’s discovery
responses which petitioner interprets as a concession or
Cancellation No. 92052572
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admission that respondent has no intention to use the mark
on the Extra Goods. Respondent contends, however, that
since the mid-1990s he has been developing and has been
granted several U.S. patents concerning a muscle/motor power
drive technology which has already been applied to golf
carts, one of the goods identified in the subject
registration. Respondent also maintains that he has always
intended to apply this technology to the Extra Goods, as
clearly explained at his website www.human-mobility.com. As
an example of his efforts to apply this muscle/motor drive
technology for vehicles other than the identified golf
carts, respondent further contends that he has tailored this
technology for bicycles, which has already come into the
market in Germany, and plans to export this product to the
United States shortly.
With regard to petitioner’s argument that respondent
has not produced documents evidencing projected advertising
costs, marketing plans and communications with advertising
agencies as “conclusive” evidence of respondent’s lack of
the requisite intent to commence use, respondent argues
that, over the course of many years, respondent has
developed a dependable and valuable business relationship
with a U.S. distributor and has accordingly dedicated his
valuable financial resources to developing this
relationship, as well as to technical aspects of product
Cancellation No. 92052572
7
development, instead of spending money on business planning
and advertising agencies.
Respondent maintains that the above facts demonstrate
that respondent has not abandoned the E-MOTION mark for the
Extra Goods, and such facts are more than sufficient to
rebut petitioner’s contention that respondent has abandoned
his mark. Respondent also contends that petitioner has not
met its burden to show that there is an absence of material
fact which would entitle petitioner to the summary judgment
relief it seeks.
As evidence in support of his opposition to
petitioner’s motion, respondent has submitted his
declaration which introduces the following exhibits: (i)
copies of U.S. patents issued to respondent for a
muscle/motor power drive technology and (ii) copy of a
booklet evidencing the muscle/motor power drive system.
In reply, petitioner contends that respondent makes no
attempt to refute the fact that he has never used the E-
MOTION mark in commerce in the United States in connection
with the Extra Goods. Further, petitioner maintains that
respondent has not identified any evidence disclosed in his
discovery responses that demonstrates or even suggests an
“intent to use” the mark during the nonuse period. Instead,
petitioner argues that respondent’s discovery responses
establish the absence of his intent to commence use.
Cancellation No. 92052572
8
Moreover, rather than relying upon the evidence in the
record, petitioner argues that respondent relies upon
unidentified evidence that he might present at some future
date, as well as a few unsupported self-serving statements
set forth in his declaration in an effort to continue
warehousing his E-MOTION mark. Finally, petitioner
maintains that respondent, in his opposition to petitioner’s
motion for summary judgment, introduces new information
regarding U.S. patents that he did not identify or produce
in his discovery responses compelled by the Board’s June 3,
2011 discovery order. Notwithstanding, petitioner argues
that this previously withheld information does not reference
the E-MOTION mark or the Extra Goods and, therefore, the
introduction of this information does not create a genuine
dispute of material fact, and does not overcome the
presumption of respondent’s intent not to “resume” use of
the E-MOTION mark on the Extra Goods.
A party is entitled to summary judgment when it has
demonstrated that there are no genuine disputes as to any
material facts, and that it is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(a). The evidence must be
viewed in a light favorable to the nonmoving party, and all
justifiable inferences are to be drawn in the nonmovant’s
favor. Opryland USA Inc. v. The Great American Music Show,
Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
Cancellation No. 92052572
9
Based on the submissions of the parties, we find that
petitioner has met its burden of demonstrating that there are
no genuine disputes of material fact, and that petitioner is
entitled to judgment, as a matter of law, on its claim of
abandonment.
Standing
As a threshold matter, we note that respondent has not
challenged petitioner’s standing. Notwithstanding, for the
Board to grant summary judgment, petitioner must establish
that there is no genuine dispute as to its standing as well
as to the ground on which it seeks entry of summary
judgment. See Fed. R. Civ. P. 56(a). See also Cunningham
v. Laser-Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844
(Fed. Cir. 2000). Such standing is established by
petitioner’s submission, as exhibits to its brief in support
of its motion for summary judgment, of copies of its pleaded
pending application Serial Nos. 77830956 and 77830959 for
the marks EMOTION and E-MOTION, respectively, both for use
in connection with “automobiles, scooters and bicycles,” as
well as copies of office actions that show that such
applications were refused registration under Trademark Act
Section 2(d), 15 U.S.C. § 1052(d), based on respondent’s
involved registration. See Weatherford/Lamb Inc. v. C&J
Energy Services Inc., 96 USPQ2d 1834 (TTAB 2010). By virtue
of the refusals to register petitioner’s pleaded pending
Cancellation No. 92052572
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applications, there is no genuine dispute that petitioner
has standing to bring the current proceeding.
Abandonment
A party may seek partial cancellation of a registration
on the ground that the registrant has abandoned use of the
mark in connection with certain of its goods or services.
DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434,
1437 (TTAB 1995). Section 45 of the Trademark Act provides
that a mark is abandoned when “its use has been discontinued
with intent not to resume use. Nonuse for three consecutive
years shall be prima facie evidence of abandonment.” 15
U.S.C. § 1127. In order to prevail on a claim for
cancellation on the ground of abandonment, a party must
allege and prove, in addition to its standing, abandonment
of the mark as the result of nonuse or other conduct by the
registrant. See On-Line Careline, Inc. v. Am. Online, 229
F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000). Evidence of
nonuse of the mark for three consecutive years constitutes a
prima facie claim of abandonment and shifts the burden to
the party contesting abandonment to show either: (1)
evidence to disprove the underlying fact triggering the
presumption of nonuse, or (2) evidence of an intent to
resume use to disprove the presumed fact of no intent to
resume use. 15 U.S.C. § 1127. See also, Imperial Tobacco
Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390
Cancellation No. 92052572
11
(Fed. Cir. 1990); and, generally, 3 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, § 17:18 (4th
ed. database updated 2012). In order to establish an intent
to commence use, a respondent must put forth evidence with
respect to either specific activities undertaken during the
period of nonuse or special circumstances which excuse
nonuse.2 See Cerveceria India Inc. v. Cerveceria
Centroamerica, S.A., 10 USPQ2d 1064 (TTAB 1989), aff'd, 892
F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989); see also, On-
Line Careline, Inc., supra.
As noted above, in support of its prima facie case of
abandonment, petitioner relies primarily on respondent’s
responses to petitioner’s discovery requests, particularly
respondent’s responses to petitioner’s requests for
admission.
Respondent’s admissions establish the following:
Respondent has made no use in commerce of his E-MOTION
mark in the United States with any of the Extra Goods
at any time before June 15, 2010. (Admission Nos. 21-
29).
Thus, in view of the above admissions and the statutory
presumption with regard to a claim of abandonment, we find

2 In general, the concept of “intent to commence use” in the
context of an abandonment claim comes up in cases involving
registrations issued under Sections 44 or 66 of the Trademark
Act, wherein a showing of use is not required prior to
registration. However, this concept also arises in cases
involving Section 1 registrations where, as here, a simple claim
of nonuse is time-barred. See Section 14(3) of the Trademark Act,
15 U.S.C. § 1064.
Cancellation No. 92052572
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that, as a matter of law, petitioner has established, at a
minimum, a prima facie case of abandonment based upon three
consecutive years of nonuse from the date of issuance of
respondent’s involved registration.
Such a prima facie case of abandonment eliminates
petitioner’s burden of establishing the intent element of
abandonment as an initial part of the case and creates a
rebuttable presumption that respondent abandoned his E-
MOTION mark without any intent to commence use. See Rivard
V. Linvell, 133 F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir.
1998); Imperial Tobacco Ltd. v. Philip Morris, Inc., 899
F.2d 1575, 14 USPQ2d 1390, 1393 (Fed. Cir. 1990). The
presumption shifts the burden to respondent to produce
evidence that he intended to commence use of his E-MOTION
mark on the Extra Goods. See Rivard V. Linvell, supra;
Cerveceria India Inc. v. Cerveceria Centroamerica, S.A.,
supra.
Thus, in the case of a motion for summary judgment,
when the moving party supports its position by evidence
sufficient to indicate that there is no genuine dispute of
material fact, and that the moving party is entitled to
judgment as a matter of law, the burden shifts to the
nonmoving party to demonstrate the existence of specific,
genuinely-disputed facts that must be resolved at trial. In
Cancellation No. 92052572
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this case, the question is whether respondent, like any
other registrant who has not made use for at least three
years, has put forth sufficient evidence to at least raise a
genuine dispute of material fact of intent to commence use.
Imperial Tobacco Ltd. v. Philip Morris Inc., supra.
After reviewing the evidence in a light most favorable
to respondent, we conclude that respondent has not raised a
genuine dispute of material fact to rebut the presumption
that respondent abandoned his E-MOTION mark in connection
with the Extra Goods without an intent to commence use.
We also note that respondent’s statements set forth in
his declaration regarding his intention to apply his
muscle/motor power drive technology to the Extra Goods and
that such plans have never been abandoned are insufficient
to excuse the period of nonuse of his E-MOTION mark on the
Extra Goods or to show respondent’s intent to commence use
of the E-MOTION mark on those goods in the United States.
As is explained by our reviewing court in Imperial Tobacco
v. Philip Morris, 899 F.2d at 1581; 14 USPQ2d at 1394:
“[A]n affirmative desire by registrant not to
relinquish a mark is not determinative of the intent
element of abandonment under the Lanham Act. Nothing
in the statute entitles registrant who has formerly
used [or never used] a mark to overcome a presumption
of abandonment arising from subsequent nonuse by simply
averring a subject affirmative ‘intent not to
abandon.’”

Moreover, the mere submission of respondent’s U.S.
patents for a muscle/motor power drive technology without
Cancellation No. 92052572
14
any further corroborating evidence on what activities
respondent has undertaken to apply this technology since the
issuance of the patents to the Extra Goods is also
insufficient to rebut the presumption of lack of intent to
commence use.3 While respondent, by his declaration,
declares that he has applied the muscle/motor power
technology to bicycles which have come into the market in
Germany and which he intends to shortly market in the United
States, respondent has not submitted any documentary
evidence to demonstrate his commencement of use of the
technology on bicycles in Germany or the sale of such
bicycles under the E-MOTION mark.4 Additionally, respondent
has not submitted any documentary evidence demonstrating any
activities regarding his intended marketing, advertising,
and/or eventual sale of the bicycles in the United States
under his E-MOTION mark. Moreover, while respondent relies
on his website www.human-mobility.com to demonstrate his
intent to commence use of his E-MOTION mark on the Extra
Goods, we note that respondent failed to submit copies of

3 We note that the U.S. patents submitted by respondent do not
reference respondent’s E-MOTION mark or how the patented
technology applies to any of the Extra Goods.
4 Even if respondent had submitted documentary evidence
demonstrating use of his E-EMOTION mark on bicycles in Germany
such evidence would not overcome the presumption of no intent to
commence use in the United States inasmuch as use in a foreign
country is nondispositve. Imperial Tobacco Limited v. Philip
Morris, 14 USPQ2d at 1393.

Cancellation No. 92052572
15
any of the webpages of his site which evidences his alleged
intent to commence use. Mere reference to the website alone
does not make the contents of record and, as such, does not
constitute evidence of a continuing intent to commence use
of respondent’s mark. We also find little value in the
booklet submitted by respondent as an exhibit to his
declaration which allegedly shows use of his muscle/motor
power drive technology because (1) the booklet is in German
without an English translation and (2) it does not appear to
demonstrate use of respondent’s E-MOTION mark as a source
indicator for bicycles.
Notwithstanding the foregoing, evidence of use or an
intent to commence use of a mark subsequent to the period of
three years of nonuse (in this instance, the first three
years from the registration date of respondent’s
registration) is irrelevant and does not cure a prima facie
case of abandonment. See Auburn Farms Inc. v. McKee Foods
Corp., 51 USPQ2d 1439 (TTAB 1999); Stromgren Supports Inc.
v. Bike Athletic Co., 43 UPSQ2d 1100 (TTAB 1997). See also
Mission Dry Corp. v. Seven-Up Co., 193 F.2d 201, 86 USPQ 263
(CCPA 1951)(once a trademark is abandoned, its registration
may be cancelled even if the registrant resumes use).
Accordingly, even if we were to consider respondent’s
declaration, and attached exhibits, as well as the meeting
notes of the meeting held in Germany in May 2008 between
Cancellation No. 92052572
16
respondent, his wife and a colleague, as evidence of
respondent’s intent to commence use of his E-MOTION mark on
the Extra Goods, other than the submitted U.S. patents which
do not specifically concern any of the Extra Goods, such
evidence does not serve to rebut the prima facie case of
abandonment of three years of nonuse since the issuance date
of respondent’s registration, i.e., March 25, 2003, inasmuch
as this evidence concerns activities following the three
years of nonuse established by petitioner. Simply put,
respondent has not presented any evidence regarding his
intention to commence use of his mark on the Extra Goods for
the first three-year period following registration of his
mark.
In view of the foregoing, we find that respondent has
not put forth sufficient evidence to raise a genuine dispute
of material fact to overcome the presumption of no intent to
commence use of his E-MOTION mark on the Extra Goods during
the three years of established nonuse of his mark.
Thus, petitioner’s motion for summary judgment on its
only asserted claim of abandonment is granted and judgment
for partial cancellation is hereby entered against
respondent with respect to the Extra Goods. The Extra Goods
will be deleted from respondent’s involved registration in
due course.