Brooks Sports, Inc.v.Anta (China) Co., Ltd.

Trademark Trial and Appeal BoardNov 20, 2018

No. 92059493 (T.T.A.B. Nov. 20, 2018)

This Opinion is Not a Precedent of the TTAB Mailed: November 20, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Brooks Sports, Inc. v. Anta (China) Co., Ltd. _____ Cancellation Nos. 92059488 and 92059493 (consolidated) _____ William C. Rava of Perkins Coie LLP, for Brooks Sports, Inc. Christina M. Licursi and Ryan M. Van Olst of Wolf, Greenfield & Sacks, P.C. for Anta (China) Co., Ltd. _____ Before Wellington, Shaw and Lynch, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Anta (China) Co., Ltd. (Respondent) owns the following four registrations for the mark : 1. Reg. No. 2750817 for: Shoes; clothing, namely, shirts, shorts, pants, jackets, dresses, collars, bathing suits, bathing trunks; children’s garments, namely, dresses, bonnets; layettes; Cancellation Nos. 92059488 and 92059493 - 2 - waterproof clothing, namely, raincoats; football shoes; and running shoes in International Class 25;1 2. Reg. No. 4142897 for: Overalls; smocks; linen garments, namely, shirts, pants, shorts, blouses, skirts, coats, and jackets; sweaters; shirts; pants; shorts; sweatshirts; dresses; clothing made of leather, namely, leather pants, leather vests, leather shirts, leather jackets, leather shoes, belts made of leather; suits; breeches; trousers; knitwear, namely, knitted shirts, knitted tops, knitted sweaters, knitted socks, knitted blouses, knitted pants, knitted skirts; coats; skirts; pelisses; pullovers; frocks; overcoats; topcoats; jackets; parkas; clothing of imitation leather, namely, pants made from imitation leather, vests made from imitation leather, shoes made from imitation leather, belts made of imitation leather; dust coats; down clothes, namely, down vests, down jackets, down coats, down pants, down shirts; children clothes, namely, headwear, children’s and baby cloth eating bibs, baby bodysuits, baby pajamas, children’s pajamas; sports jerseys; t-shirts; fishing vests; vests; singlets; pajamas; dress shields; shoulder wraps; collar protectors; shirt fronts; shirt yokes; cuffs; layettes; cyclists’ clothing, namely, cycling shorts, cycling shirts, cycling shoes; clothing for gymnastics, namely, leotards, gymnastics shirts, gymnastics pants, gymnastic shoes, gymnastic shorts; judogi, namely, uniforms worn in the sport of judo; wrestling singlets; raincoats; rain-cloaks; dance clothes, namely, leotards, leg warmers, dance shoes, dance costumes, warm-ups, tights, body suits; footwear; shoes; football shoes; gymnastic shoes; studs for football boots; ski boots; jumping shoes; track shoes; mountain climbing shoes; boots; sports shoes; boots for sports; tips for footwear; inner soles; fittings of metal for shoes and boots; footwear uppers; footwear vamps; gaiters; heelpieces for boots and shoes; welts for boots and shoes; soles for footwear; insoles; headwear; cap peaks; ear muffs; headbands; paper hats; non-electric foot muffs; socks; sports socks; athletic socks; gloves; muffs; shawls; scarves; belts; money belts; strap belts; waist strings for kimonos; fabric belts; sashes for wear; wedding gowns in International Class 25;2 1 Issued August 12, 2003; renewed. 2 Issued May 15, 2012. On November 12, 2018, Respondent filed a Section 8 declaration in support of the registration wherein it deleted all goods except “sports shoes.” This constitutes an amendment of the registration. See Rule 2.172 (“Deletion of fewer than all the goods or services in a single class constitutes amendment of the registration.”) A registration that is the subject of a Board inter partes proceeding may not be amended, except with the consent of the other party and the approval of the Board, or except upon motion granted by the Board. Rule 2.133. Here, Respondent did not file a motion nor is there any indication that Petitioner has consented to this amendment. In view of our ultimate finding in this decision with regard to the nonuse claim as to all of the goods, including “sports shoes,” in this registration, we need not decide how to address the proposed amendment. Cancellation Nos. 92059488 and 92059493 - 3 - 3. Reg. No. 4142898 for: Leather, unworked or semi-worked; imitation leather; cattle skins; animal skins; hides; fur-skins; schoolbags; traveling trunks; traveling bags; luggage; suitcases; backpacks; wallets; pocket wallets; purses; mesh, canvas and leather shopping bags; attaché cases; briefcases; bags for climbers; bags for campers; beach bags; handbags; pouches of leather for packaging; envelopes of leather for packaging; suitcase handles; cases of leather or leather board; vanity cases (empty); boxes of vulcanized fiber; haversacks; garment bag for travel; leather keycases; net bags for shopping; bags for sports; slings for carrying infants; leatheroid boxes; canvas boxes for travel; wallets made of leather and wallets made of imitation leather for holding checks and passports; umbrella and parasol ribs; alpenstocks; walking sticks; leather trimmings for furniture; leather straps; saddlery; guts for making sausages in International Class 18;3 4. Reg. No. 4183530 for: Shuttlecocks; flying discs; jigsaw puzzles; bladders of balls for games; balls for games; playing balls; guts for rackets; strings for rackets; golf clubs; cricket bags; golf bags with or without wheels; nets for sports; tennis nets; rackets; tables for table tennis; tables for table football; badminton shuttlecocks; badminton rackets; ping pong rackets; nets for playing sports; balls and racket bags; chest expanders; dumb-bells; hand grip strengthener; exercise balls; machines for physical exercises; weights for physical exercises; foils for fencing; fencing weapons; surf boards; climbers’ harness; skateboards; ice skates; bags for skis and surfboards; punching bags; jumping ropes; tug-o-war ropes; darts; clay pigeon; sandbags; batting gloves; shin guards for athletic use; gloves for games; elbow guards for athletic use; knee guards for athletic use; protective paddings for playing sports; golf gloves; waist protector for playing sports; palms protectors for playing sports; leg protectors for playing sports; arms protectors for playing sports; abdomen protectors for playing sports; sport girdles; protective wristbands for playing sports; sweatbands for rackets; games, namely, hand held units for playing video games; board games; toys, namely, action figure toys; toy swimming pools; plastic tracks; fishing tackles; 3 Issued May 15, 2012. A Section 8 affidavit of continued use (or excusable nonuse) was due May 15, 2018 to avoid cancellation under that section. A grace period extended this time until November 15, 2018. To date, Office records do not indicate that the required Section 8 affidavit has been filed. If it comes to the attention of the Board, during the course of a proceeding, that a respondent has permitted its involved registration to be cancelled under Section 8, the Board may issue an order allowing respondent time to show cause why the respondent’s failure to file the Section 8 affidavit should not be deemed to be the equivalent of a cancellation by request of respondent without the consent of petitioner and should not result in entry of judgment against respondent. Rule 2.134(b); see also TBMP § 602.02(b). Here, however, in view of our ultimate decision with regard to the nonuse claim and this registration, there is no point in issuing a show cause order. Cancellation Nos. 92059488 and 92059493 - 4 - ornaments for Christmas trees other than lighting fixtures and confetti; helmets for children for playing sports in International Class 28.4 Brooks Sports, Inc. (“Petitioner”) has filed two petitions to cancel the four registrations. Through one petition (instituted as Cancellation No. 92059488), Petitioner seeks to cancel Registration No. 2750817 on the pleaded grounds of abandonment, nonuse of the mark in commerce on the identified goods, and fraud.5 The second petition (instituted as Cancellation No. 92059493) involves Registrations Nos. 4142897, 4142898, and 4183530, and is based on the same grounds, as well as the additional ground that the registrations are void ab initio because Respondent did not have a bona fide intent to use the mark in commerce on the goods at the time the underlying applications were filed.6 In its answers, Respondent denies many of the salient allegations of the petition and asserts the affirmative defenses of laches, estoppel, acquiescence and unclean hands. Respondent also pleaded in its answers that should the Board determine that Respondent “is not entitled to maintain the [registrations] for all of the registered goods,” it is “at least entitled” to registrations that include “some of the registered goods.”7 4 Issued July 31, 2012. A grace period for Respondent to file a Section 8 affidavit ends on January 31, 2019. 5 20 TTABVUE (Petitioner’s amended petition to cancel). 6 21 TTABVUE (Petitioner’s second amended petition to cancel). 7 22 TTABVUE 9 (Paragraphs 21-23 of Answer in Cancellation No. 92059488) and 24 TTABVUE 9 (Paragraphs 24-27 of Answer in Cancellation No. 92059493). However, Respondent did not pursue this defense at trial or argue in its trial brief. Moreover, the defense was not asserted in the answers with sufficient particularity. Accordingly, this defense is waived. Cancellation Nos. 92059488 and 92059493 - 5 - The cancellation proceedings were consolidated prior to trial.8 Thus the record and trial briefs are the same for the consolidated appeals.9 I. The Record As far as evidence, the record consists of the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the files of the involved registrations. Petitioner filed two testimonial affidavits, with exhibits, of Dan Sheridan, Petitioner’s Executive Senior Vice President, General Manager of North America.10 Petitioner also filed a notice of reliance identifying various “litigation-related documents” and “internet materials.”11 However, the notice of reliance is defective inasmuch as Petitioner did not submit copies of the actual materials referenced in the notice of reliance.12 As a result, the notice of reliance is ineffective for purposes of introducing any of the identified materials into the record. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) §§ 704.08(b) and 704.10 (2018). 8 29 TTABVUE (Board order dated December 9, 2016, consolidating the proceedings and designating Cancellation No. 92059488 as the “parent” proceeding). 9 Unless otherwise specified, all TTABVUE citations to evidence and arguments in this decision are made with respect to the docket entries of the parent cancellation (No. 92059488) proceeding. 10 44 TTABVUE (redacted copy), 45 TTABVUE (exhibits 5 and 10 designated “confidential attorneys’ eyes only”) filed during initial testimony period. 35 TTABVUE (rebuttal affidavit). 11 43 TTABVUE. 12 The Board previously granted a motion filed by Petitioner requesting permission to file the notice of reliance (and the affidavit of Mr. Sheridan) outside of its testimony period. 42 TTABVUE (Board order). We further note that Petitioner did not attach any of materials identified in the notice of reliance with its brief in support of the motion. See 36 TTABVUE (Petitioner’s motion). Cancellation Nos. 92059488 and 92059493 - 6 - In spite of Petitioner’s defective notice of reliance, we note that some of the discovery responses identified in that notice of reliance were attached as exhibits to the Sheridan affidavit. Specifically, Respondent’s responses to Petitioner’s first sets of interrogatories in both cancellation proceedings were attached as Exhibits 11 and 12 to the Sheridan Affidavit, and thus are of record.13 In addition, although Petitioner identified Respondent’s responses to requests for admission in the notice of reliance and copies were not submitted, the parties acknowledged in their briefs that Respondent made one such admission. Specifically, in its trial brief, Petitioner asserted that Respondent made the following admission:14 REQUEST FOR ADMISSION NO. 1: Admit that, within the three years prior to the date of filing the Petition for Cancellation, Registrant has not sold any products to customers in the U.S., bearing Registrant’s Mark. RESPONSE: Admitted. Respondent, in its brief, acknowledges that it made this admission, but goes on to state that this response was misconstrued.15 Thus, although Petitioner did not properly introduce copies of Respondent’s responses to the admission requests, Respondent’s has essentially stipulated to this single admission. 13 44 TTABVUE 301-331. 14 46 TTABVUE 28. 15 In acknowledging it made the admission, Respondent states in its brief (at 52 TTABVUE 27-28) that “[Petitioner] has misconstrued [Respondent’s] response to its Request for Admissions [citing Petitioner’s brief]. [Respondent’s] admission stated only that ‘within the three years prior to the date of filing of the Petition for Cancellation, Registrant has not sold any products to consumers in the U.S. bearing Registrant’s Mark.’” Cancellation Nos. 92059488 and 92059493 - 7 - Respondent, for its part, filed testimonial affidavits, with exhibits, for the following individuals:16 • Lai Shixian, Respondent’s Chief Executive Officer; • Huang Wenting, Respondent’s General Counsel; • Zhuang Jianyang, Respondent’s Counsel, Intellectual Property Department; and • Ke Huifeng, a Senior Paralegal for Respondent. Respondent also filed a notice of reliance on various internet materials that purportedly relate to the issue of Respondent’s use of its mark (and intent to use the mark) in commerce.17 II. Petitioner’s Evidentiary Objections In its brief, Petitioner raises objections to certain materials Respondent submitted during its testimony period.18 Specifically, Petitioner contends that photographs of a purported sale display of Respondent’s goods at a shopping mall and a third-party (SportStaff, Inc.) “North America Distribution 2013-2014” document have not been properly authenticated. Petitioner argues that none of Respondent’s witnesses has personal knowledge of how and when the photographs were taken (or of the event purportedly depicted in the photographs). As to the SportStaff document, Petitioner also objects because none of Respondent’s witnesses claimed to have personal 16 34 TTABVUE. 17 33 TTABVUE. 18 46 TTABVUE 10-13. Cancellation Nos. 92059488 and 92059493 - 8 - knowledge regarding the report, including its creation, distribution or solicitation. Respondent, in its brief, responded to the objections.19 The admissibility and probative value of the objected-to materials are addressed in this decision in our discussion of evidence pertaining to the nonuse claim. III. Standing A threshold issue in every inter partes case is the plaintiff’s standing to challenge registration. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). With respect to cancellation proceedings, “[a] petitioner is authorized by statute to seek cancellation of a mark where it has ‘both a “real interest” in the proceedings as well as a “reasonable” basis for its belief of damage.’” Empresa Cubana Del Tabaco, 111 USPQ2d at 1062 (quoting ShutEmDown Sports, Inc. v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012) and citing Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999)). Petitioner has established that it was founded in 1914 and is a global producer and seller of a variety of athletic apparel and shoes.20 Petitioner is the owner of a “diagonal chevron mark,” that is used on these goods and may appear by itself or as part of a composite mark with the company name BROOKS.21 Petitioner owns registrations for these marks for athletic clothing and footwear.22 Petitioner’s 19 52 TTABVUE 7-13. 20 44 TTABVUE (Sheridan Aff. ¶ 4). 21 Id. at ¶ 5. 22 Id., Exhibits 3 and 4 (Registration Nos. 1683840 and 2750754). Cancellation Nos. 92059488 and 92059493 - 9 - “diagonal chevron mark” is sufficiently similar, at least for standing purposes, to Respondent’s mark. These facts demonstrate Petitioner is a competitor of Respondent and has a relevant commercial interest in this matter and standing to petition for cancellation. Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Having determined that Petitioner has standing, we now address the affirmative defenses that Respondent has pleaded and argued. IV. Respondent’s Affirmative Defenses As noted above, Respondent raised the affirmative defenses of laches, estoppel, acquiescence and unclean hands in its answers. However, Respondent only pursued the laches defense at trial and the other affirmative defenses are therefore deemed waived. See Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba Watermark Cruises, 107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d mem., 565 F. App’x 900 (Fed. Cir. 2014). Laches is one of the “equitable principles” specified in Section 19 of the Trademark Act, 15 U.S.C. § 1069, that “where applicable may be considered and applied” in Board inter partes proceedings. However, the courts and the Board have routinely held that where there is a broader public policy concern at issue, certain equitable defenses, such as laches, do not apply. Particularly, the Board has held that laches is unavailable against claims of abandonment and nonuse. Saint-Gobain Abrasives Inc. v. Unova Indus. Automation Sys. Inc., 66 USPQ2d 1355, 1359 (TTAB 2003); see also Linville v. Rivard, 41 USPQ2d 1731, 1733 n.5 (TTAB 1997), aff’d on other grounds, Cancellation Nos. 92059488 and 92059493 - 10 - 133 F.3d 1446, 45 USPQ 1374 (Fed. Cir. 1998); TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311 (TTAB 1989). As the Board explained in Saint-Gobain and Linville, there is a longstanding and “oft-stated” principle that it is within the public interest to have marks stricken from the register that are no longer in use, and that this interest or concern outweighs any inequity due to inaction of any single person or concern no matter how long the delay persists. Saint-Gobain Abrasives, 66 USPQ2d at 1359; Linville, 41 USPQ2d at 1733 n.5. Likewise, in cases involving fraud, the Board has long held that the public interest in removing registrations from the register that were procured or maintained by fraud prevents the application of the laches. See Hornby v. TJX Cos. Inc., 87 USPQ2d 1411, 1419 (TTAB 2008); Bausch & Lomb, Inc. v. Leupold & Stevens Inc., 1 USPQ2d 1497, 1500 (TTAB 1986) (“[I]t is within the public interest to preclude fraudulent registrations”). In view of the foregoing, Respondent’s laches defense is inapplicable to these consolidated proceedings considering the claims asserted by Petitioner are abandonment, nonuse (or lack of a bona intent to use), and fraud. V. Nonuse of Respondent’s Mark – Registration Nos. 4183530; 4142898; and 4142897 Under Section 1(a) of the Trademark Act, 15 U.S.C. § 1151(a), a mark may not be registered unless it is “used in commerce.” Section 45 of the Trademark Act, 15 U.S.C. § 1127, 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.” 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 Cancellation Nos. 92059488 and 92059493 - 11 - requirement); Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1773-75 (TTAB 1994) (reviewing the legislative history), aff’d without published opinion, White v. Paramount Pictures Corp., 108 F.3d 1392 (Fed. Cir. 1997) (opinion available at 1997 WL 76957). The Trademark Act further specifies that a trademark shall be deemed to be in use in commerce when the goods bearing the mark “are sold or transported in commerce.” 15 U.S.C. § 1127. Accordingly, when a mark has not been “used in commerce” on the day the use-based application or statement of use is filed, the application and resulting registration of that mark are void ab initio. Couture v. Playdom, 778 F.3d 1379, 113 USPQ2d 2042, 2043-44 (Fed. Cir. 2015) (internal citation omitted). See also, e.g., Lens.com Inc. v. 1-800 Contacts Inc., 686 F.3d 1376, 103 USPQ2d 1672, 167677 (Fed. Cir. 2012); Int’l Mobile Machs. Corp. v. Int’l Tel. and Tel. Corp., 800 F.2d 1118, 231 USPQ 142 (Fed. Cir. 1986); Paramount Pictures Corp. v. White, 31 USPQ2d at 1769. However, once a registration is more than five years old, the only grounds available upon a petition to cancel are only those enumerated in Trademark Act Sections 14(3) and 14(5), 15 U.S.C. §§ 1064(3) and 1064(5), and this does not include the claim of nonuse of a mark at the time of registration. See Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., 78 USPQ2d 1899, 1906 n.6 (TTAB 2006) (noting registration more than 5 years old may not be challenged on ground mark was not used in commerce at time of application filing); Pennwalt Corp. v. Sentry Chem. Co., 219 USPQ 542, 550 (TTAB 1983) (finding nothing in Section 14 allows nonuse as a separate ground for cancellation of registration after five years have elapsed, unless Cancellation Nos. 92059488 and 92059493 - 12 - misstatement was made with fraudulent intent, which would be grounds for a fraud claim). Because at the time Petitioner filed the petitions to cancel, in 2014, Respondent’s Registration No. 2750817 was more than five years old (see Note 1), the nonuse use claim against this registration is time barred.23 On the other hand, Registration Nos. 4183530; 4142898; and 4142897 (the subjects of Cancellation No. 92059493) were registered in 2012 and none of the asserted grounds for cancellation of these registrations are time-barred under Section 14. Accordingly, we consider the nonuse claim with respect to these registrations. Petitioner argues that despite Respondent’s registrations it “has never used [the mark] in commerce.”24 This claim is broader than it need be because for purposes of the nonuse ground for cancellation of the three registrations, Petitioner need only prove by the preponderance of the evidence that Respondent was not using the mark in commerce as of the expiration of time allowed for filing the statements of use for the applications that matured into the involved registrations. See Embarcadero Techs., Inc. v. Delphix Corp., 117 USPQ2d 1518, 1526 (TTAB 2016). In this case, the latest date Respondent could file a statement of use was on May 29, 2012;25 thus if 23 However, as discussed later in this decision, the abandonment and fraud claims asserted against this registration are not time-barred and are viable. 24 46 TTABVUE 21. 25 For Registration No. 4142898, the USPTO issued a notice of allowance on November 29, 2011, giving Respondent six months to file a statement of use. For Registration Nos. 4183530 and 4142897, the notice of allowance was issued on November 1, 2011. Respondent filed its statements of use for all three registrations on February 2, 2012. For sake of simplicity and because it does not affect our ultimate decision herein, we only use the later time for filing a notice of allowance for purposes of the nonuse claim. Cancellation Nos. 92059488 and 92059493 - 13 - Petitioner can prove that Respondent was not using its mark in commerce on the goods listed in the registrations as of this date, then all three registrations are void ab initio and will be cancelled. In support of its claim, Petitioner relies on three types of evidence to demonstrate that Respondent has not used the mark in commerce: (1) the testimony (by affidavits) of its Senior Executive Vice President, Dan Sheridan), with exhibits, (2) an “investigative report” regarding Respondent’s (in)activity in the U.S., and (3) Respondent’s responses to Petitioner’s discovery requests.26 In his affidavit, Mr. Sheridan avers: • Familiarity with “the general distribution channels of other brands that offer performance running shoes, trail shoes, casual shoes, vintage shoes, and athletic apparel” and “[t]hrough the course of my job, I would normally receive information about competitor brands entering the United States running shoe market.”27 • “Except through information provided from Anta in the course of this litigation, I have never received information from my business contacts in these various distribution channels indicating that Anta was selling goods in the United States” and “prior to this litigation and our receipt of information about Anta’s allegations, I have never heard of - and I understand our Logistics team at Brooks had not previously heard of - the importer Anta alleges to have contracted with: Gifafi Industries LLC.”28 • “In the course of my 19 years of employment at Brooks, I have gained familiarity with the websites and online presence of competitors in the industry. After this dispute was initiated, I learned that Anta registered a website in 2016, ‘antaamerica.com.’ But to my knowledge, this is Anta’s first 26 As noted above, Petitioner did not attach copies of many of the discovery requests and responses identified in its notice of reliance (43 TTABVUE). 27 35 TTABVUE 3 (Sheridan Rebuttal Affidavit). 28 Id. Cancellation Nos. 92059488 and 92059493 - 14 - website or direct effort of any kind focused on selling goods in the United States.”29 Attached as exhibits to Mr. Sheridan’s affidavit are copies of Respondent’s responses to Petitioner’s interrogatories that include the following statements: • Respondent “believes the products offered for sale in the U.S. or otherwise provided in U.S. commerce at any time from and including August 12, 2003 through and including August 13, 2008, and bearing Registrant’s Mark were: shoes, clothes, bags, socks, scarves, gloves and basketballs.”30 • Respondent “believes the products offered for sale in the U.S. or otherwise provided in U.S. commerce at any time from and including August 13, 2008 through and including February 7, 2013, and bearing Registrant’s Mark were: shoes, backpacks, bags, and basketballs.”31 • Respondent identified only “New York, New York” as a U.S. entry point for its goods bearing its mark but also responded that it “has no such documents” provided by U.S. Customs or any other government agency relating to the importation or inspection of these goods.32 The “investigative report” that Petitioner relies upon is attached to Mr. Sheridan’s affidavit as “Exhibit 10,” and is a seven page report, with exhibits.33 It was prepared by a third-party investigator, Mr. Cliff Petrovsky of Investigative Network, Inc., at the request of Petitioner. In his affidavit, Mr. Sheridan repeats many of the factual findings listed in the report.34 However, the report is not accompanied by testimony 29 Id. at 4. A printout of the website is attached as Sheridan Reb. Exh. 1. 30 44 TTABVUE 309 (response to Interrog. No. 12). 31 Id. at 310 (response to Interrog. No. 13). 32 Id. at 306 and 355 (Interrog. No. 5). 33 44 TTABVUE 7 (Sheridan Aff. ¶ 11); 45 TTABVUE (Exh. 10) designated “confidential.” 34 Specifically, Mr. Sheridan asserts “The investigator searched all of the traditional sources that demonstrate sales and use of goods in the United States, including Internet searches; periodicals; readily available Anta corporate reports; import and distribution database searches; searches of suppliers; a review of sportswear retailers; and searches of secondary markets and trade magazines. The investigator was unable to locate any importation or Cancellation Nos. 92059488 and 92059493 - 15 - from the person who prepared the report, Mr. Petrovsky, or anyone with personal knowledge underlying the report’s findings who can attest to their accuracy. See Trademark Rule 2.123(k). Because the report has been offered for the truth of the matters asserted therein and there is no supporting testimony from a witness with personal knowledge of the substance of the report, it constitutes inadmissible hearsay. Accordingly, the report and Mr. Sheridan’s averments based on the report (see Note 34) have not been considered. Although the report is not considered due to its hearsay content, many of the exhibits attached to the report are internet printouts and show the website address and the date they were accessed. These materials may not be used to demonstrate the truth of what has been stated in these websites, but they may be used to demonstrate what the documents show on their face. Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB 2010); TBMP § 704.08 (“Internet evidence, similar to printed publications, is only admissible for what it shows on its face, and because it does not fall within the exception to the hearsay rule, will not be considered to prove the truth of any matter stated therein.”). See also Ayoub, Inc. v. ACS Ayoub Carpet Serv., 118 USPQ2d 1392, 1399 n.62 (TTAB 2016); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1467 n.30 (TTAB 2014) (citing Safer, 94 USPQ2d at 1040). Included in this internet evidence are screenshots from distribution information from Anta or for Anta products in the United States. The investigator found no evidence of any continued or directed sales in or to the United States. Instead, the investigator only found third-party online sportswear retailers based outside the United States that sold Anta products and provided shipping to the United States.” Cancellation Nos. 92059488 and 92059493 - 16 - Respondent’s own websites that relate to its international activity.35 There is also a printout of the China Daily news article “Sportswear maker ANTA persists with overseas push” (dated August 7, 2013), discussing Respondent’s attempts since 2001 to expand internationally.36 The printouts from Respondent’s websites and the China Daily article do not contain any references to Respondent’s presence in the U.S. market. On their face, these materials indicate that Respondent does not hold itself out, at least in these materials, to be a player in U.S. market and was not portrayed as being involved in the U.S. market despite the 2013 article discussing Respondent’s “overseas push.” In response to Petitioner’s allegations of Respondent’s nonuse of the involved mark, Respondent argues that since the initial registration date in 2003 it has “invested significant time and expense in building the goodwill associated with the ANTA Marks in the United States, as evidenced by the substantial publicity, articles, distribution documents, endorsements, sales contracts, and actual sales that Anta has had over the years for its goods under the ANTA Marks.”37 In support, Respondent relies on the affidavits, with exhibits, of its employees and various documents it submitted under notice of reliance. Specifically, Respondent points to: (1) the previously-discussed and objected-to “photographs showing Anta selling footwear, athletic apparel, and related goods bearing the ANTA Marks to customers 35 See, e.g., 45 TTABVUE 28 (“[W]e have cooperated with overseas distributors to expand our presence in Southeast Asia, Eastern Europe and the Middle East markets, which help us fuel our long-term growth.”) 36 Id. at 162. 37 52 TTABVUE 19-20. Cancellation Nos. 92059488 and 92059493 - 17 - at the Westfield Anita Shopping Mall in California in 2010”;38 (2) “a signed sales contract of ANTA-branded footwear and apparel products from Anta to Gifafi Industries LLC, on April 27, 2015”;39 (3) the previously-discussed and objected-to SportStaff distribution plan document; (4) a “design contract with Pensole Footwear Design Academy ‘to design and develop ANTA brand basketball shoes specifically for the US market’ in 2013”;40 and (5) website printouts “containing articles about Anta’s use of the ANTA Marks in the United States.”41 Of the evidence submitted by Respondent, the only documents or materials that purportedly show Respondent’s use of its mark in commerce prior to May 29, 2012 are the photographs that Respondent’s witnesses testified show use of the mark “on a limited basis” for single day in 2010. However, testimony from Respondent’s witnesses concerning the photographs is vague and equivocal. For example, affiant Wenting states:42 18. I am also aware of Anta’s use of the foregoing marks in U.S. commerce. For example, I am aware that Anta offered on a limited basis goods branded with the foregoing marks to U.S. consumers at the Westfield Santa Anita Shopping Mall (formerly Santa Anita Fashion Park), 400 South Baldwin Avenue, No. 231, Arcadia, California 91007 (“Mall”). Attached hereto as Exhibit 1 are true and correct copies of photographs of U.S. consumers shopping for Anta’s goods at the Mall on August 13, 2010. 19. As Exhibit 1 shows, those goods included basketballs and various types of bags. 38 Id. at 23; referencing Wenting Aff. Ex. 1 (34 TTABVUE 47-68). 39 Id.; referencing Jianyang Aff. Ex. 3 (34 TTABVUE 198-213). 40 Id. at 24. 41 Id. at 24-25. 42 34 TTABVUE 45. Cancellation Nos. 92059488 and 92059493 - 18 - These photographs include:43 . 43 Id. at 48-68 (Wenting Aff. Exhib.1). Cancellation Nos. 92059488 and 92059493 - 19 - Respondent’s other employees, in their affidavits, also proclaimed to know of the “limited basis” offering at the California mall, but offer the same or less information regarding that event.44 None of the affiants state specifically that they were present at the mall location or that they have personal knowledge of the event. Many important details regarding the event are missing. First and foremost, the affiants do not state if any sales took place that day. The affiants do not indicate whether the goods shown in the photographs were only on display that day or if this was more than just a single day event.45 Furthermore, there is no corroborating documentation—receipts or any other sales records, retailer or distributor invoices, transportation or shipment receipts for delivery of the goods to the mall. The affiants’ apparent lack of personal knowledge, combined with the lack of details in their statements and no corroborating evidence, certainly decreases the reliability and importance of their description of the 2010 “limited offering” mall event. Respondent, in its brief, identifies three articles from 2010 that discuss an endorsement deal with NBA basketball star Kevin Garnett and argues these show “use of the ANTA Marks in the United States.”46 However, none of the articles mention Respondent’s presence in the U.S. market; rather, the articles imply the endorsement was aimed for promotion of Respondent’s products in its home China 44 See, e.g., Jianyang Aff. at 34 TTABVUE 171, and Huifeng Aff. at 34 TTABVUE 319. 45 We do not sustain Petitioner’s objection to the photographs, and the related affiants’ testimony. However, for reasons stated in this decision and those offered by Petitioner in objecting to the testimony and exhibits, the evidence has little probative value and does not establish bona fide use in commerce. 46 52 TTABVUE 25; 34 TTABVUE 72-86 (copies of articles). Cancellation Nos. 92059488 and 92059493 - 20 - market. One article quotes the CEO of ANTA Sports Products Ding Shizhong, “the joining of Kevin Garnett will no doubt help support the sustainability of the basketball industry in China, enhance our brand image, and bolster our leadership and competitiveness in the basketball market.”47 Another article actually indicates that, as of 2010, Respondent’s shoes were not available in the U.S. (“While there’s still no word if and when Anta will be releasing shoes in the US, are you feeling the latest Scola [Luis Scola, NBA player] kick?”).48 The remaining evidence that Respondent relies upon involves activity post-May 2012. Specifically, Respondent’s sales contract with Gifafi Industries LLC was executed in 2015;49 the SportStaff, Inc. document is from 2013;50 and the Pensole Footwear Design Academy contract is also from 2013.51 Finally, we address the following admission made by Respondent:52 REQUEST FOR ADMISSION NO. 1: Admit that, within the three years prior to the date of filing the Petition for Cancellation, Registrant has not sold any products to customers in the U.S., bearing Registrant’s Mark. RESPONSE: Admitted. Since the petitions for cancellation were filed on June 30, 2014, Respondent is admitting that it did not sell any products for the period June 30, 2011 to June 30, 47 34 TTABVUE 73. 48 Id. at 80. 49 34 TTABVUE 200. 50 34 TTABVUE 11; Shixian Aff. Exhib. 1. 51 34 TTABVUE 7. 52 Admission discussed supra, see also Notes 14 and 15. Cancellation Nos. 92059488 and 92059493 - 21 - 2014. Respondent counters that this admission should not be “misconstrued” and that:53 [A] mark is “used” on goods when it is placed on a container, display, tag, or label and “sold or transported in commerce.” Lanham Act § 45, 15 USC § 1127 (emphasis added). Anta has produced substantial overlapping and sufficiently contemporaneous evidence to show that it continued using the ANTA Marks during this period at the very least through transport of products bearing the ANTA Marks. Contrary to Respondent’s assertions, there is no evidence of record showing Respondent’s goods were being transported in commerce as of May 29, 2012. Indeed, evidence submitted by Respondent indicates that Respondent was still in the process of attempting to enter the North American market as late as August 2014. In correspondence between Respondent and SportStaff, Inc., a representative of the latter company writes in an email dated August 19, 2014:54 Attached please find our initial thinking regarding ANTA distribution in North America. We have made a number of assumptions in order to construct the plan. I suspect as we engage in meaningful dialogue concerning resources available from ANTA World Headquarters to assist the ANTA brand distribution in North America the plan will become more refined. Ultimately, upon review of the entire record and consideration of the parties’ arguments, we find that the preponderance of the evidence shows that Respondent had not made bona fide use of its registered mark in commerce as of May 29, 2012. Respondent’s admission that it had not sold any products to customers in the U.S. from between June 30, 2011 to June 30, 2014, Mr. Sheridan’s testimony about the 53 52 TTABVUE 27-28. In support of its statement, Respondent offers the citation “See Section III [C][3], supra.” –however, there is no corresponding section in Respondent’s brief. 54 34 TTABVUE 124 (Shixian Exhibit 4). Cancellation Nos. 92059488 and 92059493 - 22 - absence of Respondent in the marketplace, in conjunction with no evidence of any of goods being transported in commerce during this time, are particularly persuasive in establishing a prima facie case of nonuse of the mark as of May 29, 2012. As to the testimony of Respondent’s employees regarding the purported offering of some of its goods on a “limited basis” at a mall in 2010, and the accompanying photographs, this is not evidence of bona fide use in commerce. As discussed above, without more detailed information or corroborating evidence, we cannot conclude that the purported activity at the mall in 2010 necessarily constituted “commerce which may lawfully be regulated by Congress.” Christian Faith Fellowship Church, 120 USPQ2d at 1646 (internal citations omitted). In making this determination, we keep an open mind as to what may constitute use in commerce depending on the particular facts and the relevant industry practice. See Automedx, Inc. v. Artivent Corp., 95 USPQ2d 1976, 1981 (TTAB 2010) (observing that “[u]se in commerce should be interpreted with flexibility to account for different industry practices.”). Here, however, it has not been demonstrated that the 2010 “limited basis” mall activity falls within what can be classified as use in the ordinary course of trade for the goods. In view of our finding of nonuse of the registered mark as of May 29, 2012, the latest possible date Respondent could file a statement of use, the resulting registrations, Registration Nos. 4183530; 4142898; and 4142897, are void ab initio and shall be cancelled on this basis.55 55 In view of the decision to grant the petition to cancel on the ground of nonuse, we do not reach the fraud or abandonment claims for cancellation. Cancellation Nos. 92059488 and 92059493 - 23 - VI. Abandonment – Registration No. 2750817 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 Trademark Act, 15 U.S.C. § 1127, a mark is considered abandoned when “its use has been discontinued with intent not to resume such use.” The provided definition, in part, of abandonment is: A mark shall be deemed to be “abandoned”: (1) 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 registrations are presumed valid under the law, the party seeking their cancellation bears the burden of proving a prima facie case of abandonment 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); Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989); Exec. Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d 1175, 1180-81 (TTAB 2016). If the petitioner presents a prima facie case of abandonment, the burden of production, i.e., going forward, then shifts to the trademark holder to rebut the prima facie showing with evidence. Cerveceria India Inc., 13 USPQ2d at 1311. 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). Thus, any inference of abandonment Cancellation Nos. 92059488 and 92059493 - 24 - must be based on proven fact. Section 45 of the Trademark Act. See also Cerveceria India Inc., 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.”) (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, 332- 33, 196 USPQ 801, 804-05 (CCPA 1978)); Stetson v. Howard D. Wolf & Assoc’s, 955 F.2d 847, 21 USPQ2d 1783, 1785 (2d Cir. 1992) (A party claiming that a mark has been abandoned must show “non-use of the mark by the legal owner and no intent by that person or entity to resume use.”). Proof of nonuse for three consecutive years, however, constitutes prima facie evidence of abandonment, because it supports an inference of lack of intent to resume use. Section 45 of the Trademark Act; see also On-line Careline Inc. v. Am. Online Inc., 56 USPQ2d at 1476 (“The party seeking cancellation establishes a prima facie case of abandonment by showing proof of nonuse for three consecutive years.”); Emergency One, Inc. v. Am. FireEagle, Ltd., 228 F.3d 531, 56 USPQ2d 1343, 1346 (4th Cir. 2000) (“Proof of three consecutive years of non-use thus creates a presumption—a mandatory inference of intent not to resume use.”). Here, we find that a prima facie case of abandonment has been established. Specifically, we find that Respondent did not make bona fide use of its mark in commerce for at least five years immediately following the registration date of Reg. No. 2750817, on August 12, 2003. In making this finding, we rely mainly on the Cancellation Nos. 92059488 and 92059493 - 25 - statements of Respondent’s own witnesses who averred that, as of May 27, 2008, Respondent was still in the process of planning its entry into the U.S. market. For example, Respondent’s witness Lai Shixian states:56 16. As shown by the filing in 2000 of the U.S. trademark application, Serial No. 76076957, that resulted in the ‘817 Registration, Anta has long had a plan to enter the U.S. market. 17. In furtherance of that plan to enter the U.S. market, Anta also filed, on May 27, 2008, the three U.S. trademark applications, Serial Nos. 77484133, 77484147, and 77484157, that resulted in Registration Nos. 4142897, 4142898, and 4183530, respectively. 18. All of the foregoing applications were filed on the basis of Anta’s good- faith, bona fide intent to use the marks in U.S. commerce. Indeed, Jianyang indicates that the reasoning for the acquisition of Reg. No. 2750817 and the filing of the latter applications was based on foreign trademark law and an understanding of U.S. trademark law:57 11. I am aware that in the PRC and many other civil-law countries a trademark registration is required for a trademark owner to assert any rights in its mark. 12. My understanding is that, to ensure it would have U.S. trademark rights at the proper time, Anta chose to register the foregoing marks in the United States early in the process of Anta’s entering the U.S. market. We have considered Respondent’s response to one of Petitioner’s interrogatories wherein Respondent stated that it “believes the products offered for sale in the U.S. or otherwise provided in U.S. commerce at any time from and including August 12, 2003 through and including August 13, 2008, and bearing Registrant’s Mark were: 56 34 TTABVUE 5. These averments are repeated by almost verbatim in the affidavit of Zhuang Jianyang. Id. at 169. 57 Id. at 170. Cancellation Nos. 92059488 and 92059493 - 26 - shoes, clothes, bags, socks, scarves, gloves and basketballs,”58 however, a party's response to an interrogatory is generally viewed as “self-serving.” General Electric Co. v. Graham Magnetics Inc., 197 USPQ 690, 692 n.5 (TTAB 1977) (citing Grace & Co. v. City of Los Angeles, 278 F.2d 771, 776 (9th Cir. 1960)); Beecham Inc. v. Helene Curtis Industries, Inc., 189 USPQ 647 (TTAB 1976) (ordinarily a party may not rely upon his own answers to his adversary’s interrogatories since said answers would be self-serving in character). The response is not without evidentiary value, but as the trier of fact, we have discretion to decide what weight to give to give this response. ShutEmDown Sports Inc., 102 UPSQ2d at 1043. Here, there is no corroborating evidence to support Respondent’s stated belief. To be sure, none of the four affidavits signed by Respondent’s employees—one of whom has been employed by Respondent since at least as early as 2003—contains a statement that Respondent was using its mark on any of those goods in that time period. The record is also void of any documentation, advertisement, etc. to help show that Respondent was using its mark in commerce in that same time period. Having found that the statutory presumption of abandonment has been shown, we have no hesitation in further finding that Respondent has not rebutted the presumption, including by showing that it had an intent to resume use of its mark at any point during the period of nonuse. In order to establish intent to resume use, a respondent must put forth evidence with respect to either specific activities undertaken during the period of nonuse or special circumstances which excuse 58 44 TTABVUE 309 (response to Interrog. No. 12). Cancellation Nos. 92059488 and 92059493 - 27 - nonuse. See Cerveceria India 10 USPQ2d 1064. Respondent made no argument, nor submitted evidence, with regard to its nonuse of the mark from 2003 to 2008, or why such nonuse occurred, to show that Respondent had an intent to resume use. Rather, as late as 2013 or 2014, it appears that Respondent was still in the process of reaching a deal for entry into the U.S. market.59 In light of the failure to rebut the statutory presumption of abandonment, established by more than three consecutive years of nonuse of Respondent’s mark, between 2003 and 2008, we find that the mark has been abandoned with respect to the goods in Reg. No. 2750817 and the registration shall be cancelled on this basis.60 Decision: As to Cancellation No. 92059493, the petition for cancellation of Registration Nos. 4183530; 4142898; and 4142897 is granted on the ground of nonuse of the mark in commerce. The registrations will be cancelled. With respect to Cancellation No. 92059488, the petition for cancellation of Registration No. 2750817 is granted on the ground of abandonment. The registration will be cancelled. 59 See Wenting Exh. 4 (email correspondence between Respondent and U.S. distributor, SportStaff, Inc.). 60 In view of the decision to grant the petition to cancel on the ground of abandonment, we do not reach the fraud claim for cancellation.