Modern House Wines LLCv.Hidden Wineries Inc.

Trademark Trial and Appeal Board

Aug 7, 2017

No. 92058885 (T.T.A.B. Aug. 7, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing: June 20, 2017 Mailed: August 7, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Modern House Wines LLC

v.

Hidden Wineries Inc.
_____

Cancellation No. 92058885

_____

Melville Owen, Kathleen E. Letourneau, and Lawrence Townsend of Owen
Wickersham & Erickson, P.C., for Modern House Wines LLC.1

Hidden Wineries Inc. dba Hidden Wineries, pro se.
_____

Before Quinn, Wolfson, and Shaw,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:

Hidden Wineries Inc. dba Hidden Wineries (“Respondent”) owns Registration
No. 3771513, issued April 6, 2010 for the mark THANK YOU (in standard characters)

1 Mr. Owen and Ms. Letourneau appeared on the briefs on behalf of Petitioner and Mr.
Townsend appeared for Petitioner at the oral hearing.
Cancellation No. 92058885
2
for “Red wine; Red wines; Table wines; White wine; Wine; Wines; Wines [ and
liqueurs ]; Wines and sparkling wines” in International Class 33.
Modern House Wines LLC (“Petitioner”) filed a petition to cancel Respondent’s
registration on the ground of abandonment under Trademark Act Section 14,
15 U.S.C. § 1064. Petitioner’s allegation of abandonment, primarily set forth in
Paragraph 9 of the petition to cancel, reads as follows:
On information and belief, based on the results of
Petitioner’s investigation, Petitioner avers that: (A)
Registrant has never made use of the Registered Mark in
interstate commerce in the United States on any of the
goods claimed in its registration; (B) Registrant has not
made use of the Registered Mark in the United States on
any of the goods claimed in its registration over the past
three years; and (C) Registrant has no intent to begin or
resume use of the Registered Mark in the United States on
any of the goods claimed in its registration.2
Petitioner further alleges that Respondent does not currently have an online business
presence (Paragraph 10) and that Respondent’s non-use of its mark “renders the
registration abandoned.” (Paragraph 11).
Respondent, in its answer, denied the salient allegations of the petition to cancel.
I. The Record
The record comprises the pleadings; the file of the involved registration; and the
following evidence, all introduced by way of Petitioner’s notice of reliance:
• Respondent’s Responses to Interrogatory Nos. 1 – 16, and the documents
provided as all or part of the interrogatory answers;

2 1 TTABVUE 5.
Cancellation No. 92058885
3
• Respondent’s Responses to Requests for Admissions Nos. 1 – 15; and
• Excerpts of Internet websites from www.web.archive.org and
www.gotcheers.com.
Respondent neither took testimony nor introduced any other evidence. Both
parties filed briefs. With respect to the briefs, Respondent attached documents to its
brief that were not made of record at trial and to which Petitioner objects. Testimonial
affidavits or declarations,3 including exhibits, attached to a brief that were not made
of record during a party’s testimony period are untimely, and will not be considered.
Trademark Rule 2.123(a)(l) (testimony of witnesses in inter partes cases must be filed
during the proffering party’s testimony period); cf. Trademark Rule 2.122(g) (notice
of reliance must be filed during the testimony period of the party that files the notice);
see also Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 704.05(b)
(June 2017) (Exhibits to Briefs) and authorities cited in that section. Petitioner’s
objection is sustained. We have not considered the declaration of Respondent’s
president and accompanying exhibits, or the three third-party statements of
individuals identified, respectively as a website developer, a Vons/Safeway company
employee, and a “Nevada sales rep.”

3 Effective January 14, 2017, Trademark Rule 2.123(a)(1), 37 CFR 2.123(a)(1) was amended
to allow parties to submit the testimony of witnesses in inter partes cases in the form of an
affidavit or a declaration “pursuant to §2.20 and in conformance with the Federal Rules of
Evidence, filed during the proffering party’s testimony period….”. However, at the time
Respondent submitted the documents attached to its brief, testimony of witnesses could be
submitted in the form of an affidavit only upon written agreement of the parties. Since the
parties did not stipulate to testimony being filed in this form, even if Respondent had timely
submitted the documents attached to its brief, they would not have been considered.
Cancellation No. 92058885
4
At the outset we note Respondent’s decision to proceed pro se and its remarks (by
way of Madonna White, Respondent’s Chief Executive Officer), that Petitioner
suppressed evidence, “misused the intent of the law” and improperly used “tactics”
designed to prevent Respondent from presenting testimony.4 Although we appreciate
the good faith attempt of Respondent to take the depositions of several witnesses,
Respondent’s notices did not comply with Rules 26 and 30 of the Federal Rules of
Civil Procedure and Trademark Rule 2.123(c), relating to procedures for taking
testimony depositions. Specifically, Respondent’s first notice to take depositions,
dated June 12, 2105, failed to name the intended witnesses and was quashed on this
basis.5 Respondent’s second notice, dated June 22, 2015, identified eight individuals
from whom Respondent sought testimony. Five of these had not been disclosed in
Respondent’s pretrial disclosures. The Board, in an order dated October 10, 2015,
granted Petitioner’s motion to quash the notices directed to these five witnesses on
this basis. In considering factor four6 in the 5-factor test used to decide if
Respondent’s non-disclosure of intended witnesses was excusable, the Board agreed

4 Respondent’s Brief, 37 TTABVUE 2, 4.
5 Board order dated June 25, 2015, recapping June 17, 2017 telephone conference, 23
TTABVUE.
6 Factor four is the significance of the testimony that would be excluded if the motion to quash
were granted. As the Board explained: “In determining whether Respondent’s failure to
timely disclose the five witnesses is substantially justified or harmless, the Board is guided
by the following five-factor test: ‘1) the surprise to the party against whom the evidence would
be offered; 2) the ability of that party to cure the surprise; 3) the extent to which allowing the
testimony would disrupt the trial; 4) importance of the evidence; and 5) the nondisclosing
party's explanation for its failure to disclose the evidence.’ Great Seats Inc. v. Great Seats
Ltd., 100 USPQ2d 1323, 1327 (TTAB 2011) (quoting Southern States Rack & Fixture, Inc. v.
Sherwin-Williams Co., 318 F.3d 592, 597 (4th Cir. 2003)).” 28 TTABVUE 5.
Cancellation No. 92058885
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that “the testimony of the five witnesses may be important to Respondent’s defense
of the pleaded abandonment and nonuse claims,” but noted that “Respondent has
three other witnesses – Sara Estrada, John Samarjian, and Ken Shea – who were
named in its original pretrial disclosures and whose testimony depositions were also
noticed in the June 22, 2015 notice of deposition.”7 The Board did not grant
Petitioner’s motion to quash with respect to these three remaining witnesses and
extended Respondent’s trial period by 10 days. The trial period ran without any
additional depositions being noticed. Respondent’s subsequent motion to re-open its
testimony period was denied. Thus Respondent, by its own actions, has shaped the
record by not taking testimony or filing evidence of its purported use of the THANK
YOU mark during its extended trial period. On this record, we find that there has
been no undue suppression of evidence.
II. Standing
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015). The plaintiff
must show that it has a real interest in the proceeding beyond that of a mere
intermeddler, and that it has a reasonable basis for its belief of damage resulting
from registration of the subject mark. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024,
213 USPQ 185, 188 (CCPA 1982). The purpose of the standing requirement, which is

7 28 TTABVUE 6.
Cancellation No. 92058885
6
directed solely to the interest of the plaintiff, is to prevent litigation when there is no
real controversy between the parties. Lipton Indus., Inc., 213 USPQ at 189.
Petitioner alleges that it has standing because its applications Serial Nos.
85957031 and 85957013 to register the marks MERCI and THANK YOU MODERN
HOUSE WINES and design for “wine” were refused registration under Section 2(d)
on the basis of Respondent’s registration sought to be cancelled in this proceeding.8
A petitioner can establish its standing by pleading and making of record a copy of the
application file of an application that it has filed and which has been refused
registration based on a likelihood of confusion with the registration, owned by
respondent, that is the subject of the cancellation proceeding. See, e.g., ShutEmDown
Sports, Inc. v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012 (petitioner introduced
evidence of its pending application which has been refused registration); cf. Life Zone
Inc. v Middleman Group, Inc., 87 USPQ2d 1953, 1959 (TTAB 2008) (opposer’s
standing demonstrated by showing pending trademark application suspended
pending resolution of subject application). In the case at hand, although Petitioner
pleaded ownership of two applications, one for the mark MERCI and the other for the
mark THANK YOU MODERN HOUSE WINES and design, Petitioner did not submit
copies of the applications (or at least the pertinent Office Actions therein) under its
notice of reliance or introduce them during the taking of testimony. Unlike the file of
the registration sought to be cancelled, Petitioner’s pleaded applications and their file
histories are not automatically of record. See Trademark Trial and Appeal Board

8 Petition to Cancel, 1 TTABVUE 4.
Cancellation No. 92058885
7
Manual of Procedure (TBMP) § 704.03(b)(2) (June 2017). Nor does the Board take
judicial notice of applications or registrations; they must be proven by competent
evidence. See, e.g., In re Jonathan Drew Inc., 97 USPQ2d 1640, 1644 n.11 (TTAB
2011) (stating that “the Board’s well-established practice is not to take judicial notice
of registrations that reside in the USPTO”); Beech Aircraft Corp. v. Lightning Aircraft
Co., 1 USPQ2d 1290, 1293 (TTAB 1986).
Petitioner argues that Respondent’s admissions establish that Petitioner’s
pleaded applications were provisionally refused because of Respondent’s THANK
YOU registration. Respondent does admit in its Answer to Petitioner’s allegations
Nos. 3 and 4 that Petitioner filed the applications,9 but Respondent specifically denies
Petitioner’s allegation No. 5, which reads:
Petitioner received office actions dated September 21 and
22, 2013 refusing registration of its MERCI and THANK
YOU marks based on Section 2(d) confusing similarity with
Registrant’s registration for THANK YOU (Registration
No. 3,771,513).
Respondent answered:
Answering paragraph 5 of the Petition for Cancellation, (a)
Registrant does not have sufficient knowledge of the dates
listed or information to form a belief as to allegations
therein and accordingly denies the allegations.
Respondent also states in response to Petitioner’s Interrogatory No. 1 that
Petitioner filed the two trademark applications, but Respondent’s statements are not
admissions that the applications have been refused registration because of

9 4 TTABVUE 3.
Cancellation No. 92058885
8
Respondent’s prior existing registration.10 Respondent’s response also includes the
statement: “(h) Hidden Wineries observes TSDR,” followed by a copy of a screenshot
of a portion of a TSDR page showing that a suspension letter was mailed in the
MERCI application.11 There is insufficient information from which to determine the
reason for the suspension. Petitioner has not proven its standing on the basis of its
pending trademark applications.
Petitioner further argues that it has standing based on its common law use of the
mark MERCI for wine. But in accord with an agreement of the parties (not made of
record) designed “to limit the scope of their discovery to issues pertaining to
Registrant’s use of THANK YOU in commerce,”12 Petitioner intentionally did not file
any evidence to prove that it has common law rights in the mark. The agreement did
not render Petitioner unable to prove its standing via a showing of its use of the mark
in commerce, however, and regardless of the parties’ agreement not to engage in
discovery on the topic, Petitioner must prove common law use of its mark in order to

10 In response to Interrogatory No. 1, Respondent states:
“(f) Registrant admits the Petitioner filed an application for the trademark MERCI in
International Class 33 on June 11, 2013; Serial No. 85-957031.
(g) Registrant admits the Petitioner filed an intent to use application for the trademark
THANK YOU MODERN HOUSE WINES in International Class 033, US 047 049 on June
11, 2013; Serial No. 85-95701.”
17 TTABVUE 11-12.
11 Id.
12 Petitioner’s brief, 36 TTABVUE 18, n. 3 reads: “Petitioner also has standing based on its
common law rights in a confusingly similar mark, namely, MERCI for wine. However, the
parties agreed to limit the scope of their discovery to issues pertaining to Registrant’s use of
THANK YOU in commerce. See Trial Dates Reset, Dkt. No. 6, p. 5. Therefore, Petitioner has
not filed any evidence regarding Petitioner’s common law rights.”
Cancellation No. 92058885
9
rely on its allegation of use. This Petitioner has not done.13 Petitioner has not proven
its standing on the basis of its alleged common law use of the MERCI mark.
However, Respondent makes the following admissions as part of its response to
Interrogatory No. 1:
(a) Registrant admits the allegations that Modern House
Wines LLC has news articles and website(s) for wine sales
in association with Swanson Vineyards.
(e) The Registrant points to conflicting messages regarding
wine-name sales: See Figures B and C, where the
Petitioner indicates only three wines are currently
available for sale at this time: With Love, Here’s to You, and
Expensive. Currently “Merci” nor “Thank You Modern
House Wines” are not appear [sic] to be in actual use for
sales at this time.14
(k) Registrant admits the registered mark THANK YOU
will prohibit the Petitioner[’]s use of marks that could be
misleading, confusing or non-unique to marks previously
registered and therefore protected by the laws of the
United States Trademark and Patent Office (USPTO). See
Figures [sic] D. 15

13 Petitioner’s assertions in its brief that it has standing are not recognized as evidence. See,
e.g., In re Teledyne Indus., Inc., 696 F.2d 968, 971, 217 USPQ 9, 11 (Fed. Cir. 1982) (in absence
of evidence in the record, mere argument of counsel cannot rebut prima facie case of
functionality); In re Simulations Publ’ns, Inc., 521 F.2d 797, 187 USPQ 147, 148 (CCPA 1975)
(“Statements in a brief cannot take the place of evidence.”); Saul Zaentz Co. v. Bumb, 95
USPQ2d 1723, 1725 n.7 (TTAB 2010) (assertions in brief not evidence unless supported by
evidence introduced at trial or except as admission against interest); TBMP § 704.06(b).
14 Figure B repeats text apparently found on Petitioner’s website that indicates Petitioner
“currently produces three labels – With Love, Expensive and Here’s to You, all available at
Target stores nationwide.” 17 TTABVUE 13. Figure C is a screenshot also apparently from
Petitioner’s website, showing a picture of three bottles of “Modern House Wines.” Id.
15 17 TTABVUE 13.
Cancellation No. 92058885
10

The “Status” of the application, as set forth in this screenshot, reads: “An Office action
suspending further action on the application has been sent (issued) to the applicant.
To view all documents in this file, click on the Trademark Document Retrieval link
at the top of this page.” No further pages have been included.
In essence, Respondent admits that the parties are direct competitors, both being
in the wine business. Petitioner has thus shown that it would suffer injury to a
commercial interest in reputation or sales in the event Respondent’s registration is
not cancelled. This is sufficient to establish Petitioner’s standing. See, e.g., Baroness
Small Estates Inc. v. Am. Wine Trade Inc., 104 USPQ2d 1224, 1225 (TTAB 2012)
(Petitioner’s registrations for wine established it as being in the wine business and
thus directly competitive with respondent); Stuart Spector Designs Ltd v. Fender
Musical Instruments Corp., 94 USPQ2d 1549, 1553 (TTAB 2009) (parties were either
competitors (guitar manufacturers and/or sellers) or retailers of the goods in the
applications at issue); Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 USPQ2d
1660, 1662 (TTAB 2009) (finding applicant’s statements sufficient as other evidence
to establish opposer’s standing even though opposer did not submit status and title
Cancellation No. 92058885
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copies of its pleaded registrations nor an affidavit or declaration in support of its
allegations of use).
III. Abandonment
With respect to the pleaded ground for cancellation, a mark is considered to be
abandoned as a result of nonuse under Section 1127 of the Trademark Act, 15 U.S.C.
§ 1127:
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.
For a mark to be “used” on goods, the goods must be “sold or transported in
commerce.” Id. The term “commerce” is defined as “all commerce which may lawfully
be regulated by Congress.” Id.
Introduction of evidence of nonuse of the mark in commerce for three consecutive
years constitutes a prima facie showing of abandonment, whereby intent not to
resume use is inferred, and shifts the burden to the party contesting the
abandonment to show either evidence sufficient to disprove the underlying facts
showing three years of nonuse, or evidence of an intent to resume use to overcome
the presumed fact of no intent to resume use. Rivard v. Linville, 133 F.3d 1446, 45
USPQ2d 1374 (Fed. Cir. 1998); see also Imperial Tobacco Ltd. v. Philip Morris Inc.,
899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990); Cerveceria Centroamericana S.A. v.
Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989); Exec. Coach
Builders, Inc. v. SPV Coach Co., 123 USPQ2d 1175, 1180 (TTAB 2017) (“Introduction
Cancellation No. 92058885
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of evidence of nonuse of a mark for three consecutive years constitutes a prima facie
showing of abandonment and triggers a rebuttable presumption that a mark was
abandoned without intent to resume use.”). The ultimate burden of persuasion
remains with the party claiming abandonment to prove abandonment by a
preponderance of the evidence. Online Careline Inc. v. Am. Online Inc., 229 F.3d 1080,
56 USPQ2d 1471, 1476 (Fed. Cir. 2000); West Florida Seafood Inc. v. Jet Rests. Inc.,
31 F.3d 1122, 31 USPQ2d 1660, 1665-6 (Fed. Cir. 1994).
The record before us bearing on the question of Respondent’s use of its THANK
YOU mark consists solely of Respondent’s responses to discovery requests
propounded by Petitioner. Although these responses assert Respondent’s use of its
mark on red, white and sparkling wine since October 1, 2009, no invoices or bills of
sale are provided. Moreover, in describing its purported use of the mark, Respondent
speaks in terms that suggest that while it may have actively promoted its wines, it
has not made any actual sales. For example, in its response to Interrogatory No. 6,
Respondent states: “Hidden Wineries Inc. continuously promotes/has-promoted sales,
has/had sales calls and schedules/has held sales meetings to retailers for wine-sales
across the U.S. with the MARK ‘Thank You.’”16 Likewise, in response to Interrogatory
No. 3, Respondent states that it conducts “wine sales calls, meetings and promotions,”
but not that it has sold wines bearing the mark; in the same response Respondent
presented a list of stores at which it made “sales and sales calls and sales meetings,”

16 17 TTABVUE 20.
Cancellation No. 92058885
13
without clarifying whether the list referred to any stores to which it made sales, or
only stores to which it made calls or held meetings.
Also of record is Respondent’s answer to Interrogatory No. 8, which asks for all
“Certificates of Label Approval” secured for wines bearing Respondent’s mark.
Respondent identified four such labels, each having been approved in December 2014,
more than three years from the registration date (April 6, 2010) of Respondent’s
registration. These answers suggest that Respondent did not sell wine bearing its
mark, if at all, until after December 2014.
Although there are no bills of sale or invoices of record, there are documents
purporting to show Respondent’s use of its mark.17 The documents, provided by
Respondent as part of its discovery responses, primarily comprise letters from web
designers or retail store representatives who purportedly attest to Respondent’s sale
of wines since 2009, but conspicuously are silent with respect to actual dates of any
sales of THANK YOU brand wines. Significantly, none of the documents are
authenticated and all of the statements contained therein purporting to show that
Respondent has used the mark THANK YOU in commerce are hearsay. Accordingly,
the statements are not considered for the truth of the matter.
Petitioner also submitted copies of pages from Respondent’s website. None of the
pages from hiddenwineries.com show use of the mark. Several pages are identified as
being printed from the website “gotcheers.com,” a website apparently operated by

17 17 TTABVUE 29-41.
Cancellation No. 92058885
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Respondent.18 One of these pages invites the user to choose an occasion for which he
or she wants to send a wine gift, and one of the choices is “Thank You.”19 However,
the pages all bear an access date of April 29, 2015 and do not give any indication of
being accessible prior to that date. The web pages are thus of no help to Respondent.
We must base our decision on the trial record before us, and the record does not
support a finding that Respondent has used the mark THANK YOU for the goods
identified in the registration in interstate commerce. In view thereof, the application
that matured into Respondent’s registration is void ab initio inasmuch as it was
based on Respondent’s allegation of use prior to the filing date pursuant to
Trademark Act Section 1(a). Moreover, such record constitutes a prima facie showing
of abandonment. The burden thus shifts to Respondent to show evidence of actual use
prior to the filing date or an intent to resume use thereafter, to disprove the presumed
fact of no intent to resume use. As noted earlier, Respondent did not take testimony
or offer any other evidence at trial. The evidence submitted by Petitioner (i.e.,
Respondent’s discovery responses), as discussed above, tends to show lack of use or is
otherwise inadmissible as hearsay. Accordingly, we find that the circumstances
surrounding Respondent’s nonuse warrant a finding that Respondent did not use its
mark prior to the filing date of the application that matured into its THANK YOU
registration and that its subsequent nonuse for three years was accompanied by the

18 17 TTABVUE 71-6.
19 17 TTABVUE 73.
Cancellation No. 92058885
15
absence of any intent to resume (or commence) use of the mark in connection with
the listed goods.
Based on the trial record before us, we conclude that the application that matured
into Reg. No. 3771513 is void ab initio and the registration voidable; moreover
Respondent has abandoned the registered mark.
Decision: The petition for cancellation is granted. Registration No. 3771513 will
be cancelled in due course.