ShutEmDown Sports, Inc.v.Carl Dean Lacy

Trademark Trial and Appeal Board

Feb 22, 2012

No. 92049692 (T.T.A.B. Feb. 22, 2012)

Mailed:
February 22, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

ShutEmDown Sports, Inc.
v.
Carl Dean Lacy
_____

Cancellation No. 92049692
_____

Robert Varkonyi of Smith & Hopen, P.A. for ShutEmDown
Sports, Inc.

Carl Dean Lacy, pro se.
______

Before Bergsman, Ritchie and Kuczma, Administrative
Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:

ShutEmDown Sports, Inc. (“petitioner”) filed a petition
for cancellation of Registration No. 3372975 for the mark
“Shut It Down,” in standard character form, registered by
Carl Dean Lacy (“respondent”), for 113 items of clothing and
related goods in Class 25.1
The grounds for cancellation are abandonment of the
registered mark and fraud in the procurement of respondent’s
trademark registration. In support of its claim of
abandonment, petitioner alleges that respondent has not used

1 Issued January 22, 2008.

THIS OPINION IS A
PRECEDENT OF THE TTAB
Cancellation No. 92049692
2
or is no longer using the SHUT IT DOWN mark for the goods
covered in Registration No. 3372975 and has no intent to
resume use of the mark on such goods. The fraud claim
alleges that respondent was not using the mark on the goods
recited in the registration as of the filing date; that
respondent knew the mark was not in use on the goods, both
at the time of filing and when submitting a declaration in
support of a substitute specimen; and that the
misrepresentations of use were material to the U.S. Patent
and Trademark Office’s (“USPTO”) decision to issue the
registration.
Respondent, who appears pro se in this matter, denied
the salient allegations in the petition for cancellation.
Petitioner submitted seven notices of reliance
discussed below.2 On the last day of its trial period,

2 Petitioner’s notices of reliance were filed 11 days prior to the
opening of its trial period, i.e., “testimony period.”
Respondent did not raise any objection to the premature filing of
the notices of reliance. Because the premature filing of the
notices of reliance could have been cured if a prompt objection
was made, any objection as to early filing of the notices of
reliance is deemed to be waived. See, TBMP §§ 707.02(a) and (b)
(3d ed. 2011); Cf. Of Counsel Inc. v. Strictly of Counsel
Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991)(where opposer's
testimony deposition was taken two days prior to opening of
opposer's testimony period, and applicant first raised an
untimeliness objection in its brief on the case, objection held
waived, because the premature taking of the deposition could have
been corrected on seasonable objection).

Cancellation No. 92049692
3
petitioner timely submitted its opening trial brief.3 Prior
to the opening of his trial period, respondent filed an
unsigned, two-page document entitled “Trial Brief of
Registrant.” The Board’s order of January 20, 2011,
notified the parties that the Board would not consider this
“brief” based on respondent’s failure to comply with Board
rules.4 This is not the first time respondent failed to
follow the rules of practice and procedure.5
The order noted that respondent had time remaining in
his trial, i.e., “testimony,” period and that petitioner’s
rebuttal disclosures deadline and rebuttal period remained

3 Pursuant to Rule 2.128, 37 C.F.R. § 2.128, the brief for the
party in the position of plaintiff is due not later than sixty
days after the date set for the close of rebuttal testimony. The
Rule does not set an “opening” date for the filing of the
plaintiff’s brief. While it is not the usual circumstance that
the plaintiff’s brief is filed during its testimony period, the
Rule does not preclude this. Accordingly, petitioner’s brief was
timely filed.

4 The bases for the Board’s order were that respondent’s filing
lacked a certificate of service of a copy thereof on counsel for
petitioner as required by Rule 2.119(a), was not in compliance
with Rules 2.126 and 2.128(b), and requested relief which was
procedurally inappropriate during the trial phase.

5 Respondent was advised of proper Board procedure on at least
eight occasions, including in the orders of July 23, October 15,
December 12, 2008; April 8, July 16, August 17 and December 23,
2009; and August 30, 2010. These orders advised respondent that
strict compliance with the Trademark Rules and the Federal Rules
of Civil Procedure is expected by all parties whether or not
represented by counsel; and specifically noted in several of
these orders that compliance with Rules 2.119 and Rules 2.125-
2.128 was required. The Board also advised respondent that it
was highly advisable to secure the services of an attorney
familiar with Board procedure and provided a telephone number for
general inquiries regarding Board procedure. On several
occasions, the Board warned respondent that the Board might
decline to consider any paper that did not clearly indicate proof
of service required by Rule 2.119.
Cancellation No. 92049692
4
as previously set by the Board. No subsequent evidence or
briefs were submitted by either party.
The Record
By rule, the record includes respondent’s registration
file. Trademark Rule 2.122(b), 37 CFR § 2.122(b). It also
includes the petition for cancellation and respondent’s
answer to the petition. In addition, petitioner introduced
the following evidence:6
1. Notice of reliance on petitioner’s first request
for production of documents and respondent’s written
responses thereto (Exhibit 1);7
2. Notice of reliance on petitioner’s first set of
interrogatories and respondent’s written responses thereto
(Exhibit 2);
3. Notice of reliance on petitioner’s second request
for production of documents and respondent’s written

6 The titles of Petitioner’s Interrogatories and Document
Requests erroneously used the term “Applicant’s” instead of
“Petitioner’s.” Throughout this decision, we will use the term
“petitioner’s” in substitution for the term “applicant’s” when
referring to these documents.

7 While documents produced in response to document production
requests generally cannot be made of record via a notice of
reliance, 37 C.F.R. § 2.120(j)(3)(ii) and TBMP § 704.11, written
responses to document production requests, such as these,
indicating that no responsive documents exist may be submitted
via a notice of reliance. See L.C. Licensing Inc. v. Berman, 86
USPQ2d 1883, 1886 at n. 5 (TTAB 2008).

Cancellation No. 92049692
5
responses (Exhibit 3);8
4. Notice of reliance on petitioner’s third request
for production of documents and respondent’s written
responses thereto (Exhibit 4);9
5. Notice of reliance on “Official Records
Mississippi Code” consisting of printouts from the
Mississippi Department of State link to the LexisNexis
website for §§ 27-65-43, 27-65-17, 27-65-31 of the
Mississippi Code (Exhibit 5);
6. Notice of reliance on printouts from the USPTO
website consisting of selected portions of the application
file for Serial No. 78837567 which matured into Registration
No. 3372975 (Exhibit 6);10 and

8 As set forth in note 7, the document production requests and
written responses thereto may be submitted via a notice of
reliance. However, a number of the attachments submitted with
this notice of reliance are not proper subject matter for
introduction by notice of reliance (e.g., a letter from the
Internal Revenue Service, invoices, delivery notes and DISCOVER
credit card statements). 37 C.F.R. § 2.120(j)(3)(ii). These
attachments were apparently received by petitioner in response to
its Second Request for Production of Documents to Registrant. It
is well settled that a party that has received documents produced
by another party in response to a request for production of
documents may not make such documents of record by notice of
reliance alone, except to the extent that they are admissible by
notice of reliance under Trademark Rule 2.122(e); 37 C.F.R. §
2.122(e). The foregoing documents do not fall within the
category of printed publications as contemplated under Rule
2.122(e) and, therefore, have not been considered as evidence.

9 For the reasons set forth in note 7, these documents may be
submitted via a notice of reliance.

10 Pursuant to Rule 2.122(b), the record automatically includes
the application file for Registration No. 3372975 which is the
subject of the petition for cancellation, and therefore
submission of these excerpts was unnecessary.
Cancellation No. 92049692
6
7. Notice of reliance on printouts from the USPTO
website consisting of selected portions of petitioner’s
application Serial No. 77308774, namely, its application
filed October 19, 2007, and the Office Action of January 31,
2008 refusing registration of petitioner’s mark under § 2(d)
of the Trademark Act based on a likelihood of confusion with
respondent’s Registration No. 3372975. (Exhibit 7).11
The respondent did not introduce any testimony or
evidence.
Findings of Fact
1. Respondent filed application Serial No. 78837567
to register the mark SHUT IT DOWN under 15 U.S.C. § 1051(a)
on March 15, 2006, for the following 113 items in Class 25:
Anglers' shoes; Apres-ski shoes; Athletic shoes; Ballet
shoes; Balloon pants; Baseball shoes; Beach shoes;
Belts; Bibs not of cloth or paper; Bowling shoes;
Boxing shoes; Camp shirts; Canvas shoes; Capri pants;
Caps; Children's and infants' cloth bibs; Children's
cloth eating bibs; Cleats for attachment to sports
shoes; Cloth bibs; Cloth bibs for adult diners; Cloth
bibs for use by senior citizens or physically- or
mentally-challenged persons; Cloth diapers; Clothing
for wear in judo practices; Clothing for wear in
wrestling games; Clothing, namely, arm warmers;
Clothing, namely, folk costumes; Clothing, namely, knee
warmers; Clothing, namely, wrap-arounds; Corsets;
Cycling shoes; Deck-shoes; Denims; Dress shirts;
Dusters; Football shoes; Foulards; Golf shirts; Golf
shoes; Gymnastic shoes; Handball shoes; Heel pieces
(for shoes); Hockey shoes; Hoods; Infant and toddler
one piece clothing; Infant cloth diapers; Infants'

11 Contrary to the statement in petitioner’s brief at p. 7, the
record only consists of those portions of application Serial No.
77308774 that petitioner submitted via its notice of reliance
(designated as Exhibit 7).

Cancellation No. 92049692
7
shoes and boots; Insoles; Jerseys; Jogging pants; Knit
shirts; Leather belts; Leather pants; Leather shoes;
Mantles; Mufflers; Night shirts; Non-disposable cloth
training pants; Nurse pants; Open-necked shirts; Pants;
Parts of clothing, namely, gussets for tights, gussets
for stockings, gussets for bathing suits, gussets for
underwear, gussets for leotards and gussets for
footlets; Perspiration absorbent underwear clothing;
Piquet shirts; Polo shirts; Protective metal members
for shoes and boots; Rubber shoes; Rugby shoes; Running
shoes; Shifts; Shirt fronts; Shirts; Shirts for suits;
Shoe dowels; Shoe inserts for primarily non-orthopedic
purposes; Shoe pegs; Shoe soles; Shoes; Shoes soles for
repair; Short sets; Short-sleeved or long-sleeved t-
shirts; Short-sleeved shirts; Shoulder pads for
clothing; Shoulder wraps; Ski and snowboard shoes and
parts thereof; Ski pants; Skiing shoes; Sleep shirts;
Snow pants; Snowboard pants; Soccer shoes; Sport
shirts; Sports shirts; Sports shirts with short
sleeves; Swaddling clothes; Sweat pants; Sweat shirts;
T-shirts; Tap pants; Tennis shoes; Ties; Toboggan hats,
pants and caps; Tongue or pullstrap for shoes and
boots; Tops; Track and field shoes; Track pants;
Training shoes; Underarm clothing shields; Volleyball
shoes; Waterproof jackets and pants; Wind shirts;
Women's shoes; Work shoes and boots; Wraps

[Answer ¶ 8; Exhibit 6].
2. At the time of filing the original application
underlying the registration sought to be cancelled,
respondent identified use in commerce as the filing basis
and, provided dates of use, a description of the specimen,
and a specimen. [Exhibit 6].
3. The application included a declaration under 18
U.S.C. § 1001 stating, inter alia, that the undersigned,
“being hereby warned that willful false statements and the
like so made are punishable by fine or imprisonment, or
both,” “and that such willful false statements, and the
like, may jeopardize the validity of the application or any
Cancellation No. 92049692
8
resulting registration,” declares “that all statements made
of his/her own knowledge are true; and that all statements
made on information and belief are believed to be true.”
4. Application Serial No. 78837567 identifies
respondent as the applicant. While the signature on the
application utilized the symbols “#*#,” identifying the
signatory as “#*#” and having the title “OWNER,” it is clear
from subsequent filings that respondent utilized the
electronic signature “#*#” to identify himself. [File
history for application Serial No. 78837567].12
5. In his June 17, 2007 submission to the USPTO,
respondent declared that “the mark was in use in commerce on
or in connection with the goods listed in the application as
of the application filing date”...and acknowledged that
“willful false statements may jeopardize the validity of the
application or any resulting registration.” [June 17, 2007
Response to Office Action].
6. In his July 18, 2007 Response to an Office Action,
respondent stated that he was “not represented by either an
authorized attorney or Canadian attorney/agent. . . and that
he is. . .the applicant . . .” [Answer ¶ 9; July 18, 2007
Response to Office Action].

12 The filer of an electronic document may enter “any combination
of letters, numbers, spaces and/or punctuation marks that the
filer has adopted as a signature. The signatory’s name must be
set forth beneath the signature.” TMEP § 611.01(c) (8th ed.
2011).
Cancellation No. 92049692
9
7. The September 12, 2007 Response to an Office
Action contained a handwritten signature of respondent’s
name, Carl Dean Lacy, which was dated September 5, 2007, and
declared that the substitute specimen (submitted with the
Response) was in use in commerce at least as early as the
filing date of the application, that “the facts set forth in
this application are true” and acknowledged that “willful
false statements and the like may jeopardize the validity of
the application or document or any resulting registration.”
[September 12, 2007 Response to Office Action].
8. During discovery, respondent identified “T Shirt,
Jogging Suit, Sox, Baseball Cap, Basketball Short, Jersey,
Towel” as the only products he has offered for sale under
the “SHUT IT DOWN” mark. [Exhibit 2, Response to
Interrogatory No. 2 of Petitioner’s First Set of
Interrogatories to Registrant, dated August 4, 2009].13
9. Respondent stated that he “intends to use or has
used [his SHUT IT DOWN] mark, or any variation thereof,” on:
“T Shirt, Jogging Suit, Sox, Baseball Cap, Basketball Short,
Jersey, Towel.” [Exhibit 2, Response to Interrogatory No.
10 of Petitioner’s First Set of Interrogatories to
Registrant].

13 Respondent’s responses to Petitioner’s Interrogatories were not
verified, but were sent pursuant to Fed. R. Civ. P. 34, Trademark
Rule 2.120 and TBMP § 405.04.

Cancellation No. 92049692
10
10. Respondent stated that he first used his mark on
“T Shirt, Jogging Suit, Sox, Baseball Cap, Basketball Short,
Jersey, Towel” on February 3, 2006, and the mark is still
used in commerce. [Exhibit 2, Response to Interrogatory No.
11 of Petitioner’s First Set of Interrogatories to
Registrant].
11. Only 4 of the 7 items on which respondent claims
to have used his mark are recited in Registration No.
3372975, namely, T-shirts, caps, jogging suits14 and jerseys
(hereafter referred to as “goods allegedly in use”).
12. Respondent also stated that he has used his mark
on towels, sox and basketball shorts. These items are not
listed in his Registration. [Exhibit 2, Response to
Interrogatory No. 2 of Petitioner’s First Set of
Interrogatories to Registrant].
13. Respondent has not used his mark on the remaining
goods recited in Registration No. 3372975 (hereafter
referred to as “goods admitted not in use”), namely:
Anglers' shoes; Apres-ski shoes; Athletic shoes; Ballet
shoes; Balloon pants; Baseball shoes; Beach shoes;
Belts; Bibs not of cloth or paper; Bowling shoes;
Boxing shoes; Camp shirts; Canvas shoes; Capri pants;
Children's and infants' cloth bibs; Children's cloth
eating bibs; Cleats for attachment to sports shoes;
Cloth bibs; Cloth bibs for adult diners; Cloth bibs for
use by senior citizens or physically- or mentally-
challenged persons; Cloth diapers; Clothing for wear in

14 While “jogging pants” and “baseball caps” are recited in
respondent’s registration, we deem “jogging suits” and “jogging
pants,” and “caps” and “baseball caps,” to be equivalent goods
for purposes of this cancellation proceeding.
Cancellation No. 92049692
11
judo practices; Clothing for wear in wrestling games;
Clothing, namely, arm warmers; Clothing, namely, folk
costumes; Clothing, namely, knee warmers; Clothing,
namely, wrap-arounds; Corsets; Cycling shoes; Deck-
shoes; Denims; Dress shirts; Dusters; Football shoes;
Foulards; Golf shirts; Golf shoes; Gymnastic shoes;
Handball shoes; Heel pieces (for shoes); Hockey shoes;
Hoods; Infant and toddler one piece clothing; Infant
cloth diapers; Infants' shoes and boots; Insoles; Knit
shirts; Leather belts; Leather pants; Leather shoes;
Mantles; Mufflers; Night shirts; Non-disposable cloth
training pants; Nurse pants; Open-necked shirts; Pants;
Parts of clothing, namely, gussets for tights, gussets
for stockings, gussets for bathing suits, gussets for
underwear, gussets for leotards and gussets for
footlets; Perspiration absorbent underwear clothing;
Piquet shirts; Polo shirts; Protective metal members
for shoes and boots; Rubber shoes; Rugby shoes; Running
shoes; Shifts; Shirt fronts; Shirts; Shirts for suits;
Shoe dowels; Shoe inserts for primarily non-orthopedic
purposes; Shoe pegs; Shoe soles; Shoes; Shoes soles for
repair; Short sets; Short-sleeved or long-sleeved t-
shirts; Short-sleeved shirts; Shoulder pads for
clothing; Shoulder wraps; Ski and snowboard shoes and
parts thereof; Ski pants; Skiing shoes; Sleep shirts;
Snow pants; Snowboard pants; Soccer shoes; Sport
shirts; Sports shirts; Sports shirts with short
sleeves; Swaddling clothes; Sweat pants; Sweat shirts;
Tap pants; Tennis shoes; Ties; Toboggan hats, pants and
caps; Tongue or pullstrap for shoes and boots; Tops;
Track and field shoes; Track pants; Training shoes;
Underarm clothing shields; Volleyball shoes; Waterproof
jackets and pants; Wind shirts; Women's shoes; Work
shoes and boots; Wraps.

14. Respondent stated that he has spent “$200+”
annually to promote sales using the SHUT IT DOWN mark.
[Exhibit 2, Response to Interrogatory No. 8 of Petitioner’s
First Set of Interrogatories to Registrant].
15. Respondent states that since he began use of the
SHUT IT DOWN mark, his annual sales under the mark are
“$100+.” [Exhibit 2, Response to Interrogatory No. 9 of
Petitioner’s First Set of Interrogatories to Registrant].
Cancellation No. 92049692
12
16. Respondent stated that his operating expenses over
the last five years are approximately $1,000 [Exhibit 2,
Response to Interrogatory No. 29 of Petitioner’s First Set
of Interrogatories to Registrant], but respondent kept no
documents relating to such expenses. [Exhibit 1, Response
to Request Nos. 4 and 11 to Petitioner’s First Request for
Production of Documents to Registrant].
17. Respondent stated that 100% of his goods are sold
by respondent to consumers in the state of Mississippi via
word of mouth, but there are no documents to support this
response. [Exhibit 2, Response to Interrogatory Nos. 15 and
16 of Petitioner’s First Set of Interrogatories to
Registrant].
18. Respondent, Carl Dean Lacy, is the person most
knowledgeable about respondent’s use of the SHUT IT DOWN
mark, promotional activities using the mark, and
expenditures to promote goods using the SHUT IT DOWN mark.
[Exhibit 2, Response to Interrogatory Nos. 19-21 of
Petitioner’s First Set of Interrogatories to Registrant].
19. No one has purchased goods from respondent in the
last five years. [Exhibit 2, Response to Interrogatory No.
27 of Petitioner’s First Set of Interrogatories to
Registrant].15

15 As of the August 4, 2009, date of respondent’s Response to
Petitioner’s First Set of Interrogatories to Registrant.

Cancellation No. 92049692
13
20. Respondent does not have a bank account; has no
tax returns; did not keep copies of sales receipts, invoices
and/or bills of service for goods using the mark for the
last three years; has no sales documents used in selling or
distributing goods; has no copies of any advertisements or
promotional materials or other media advertising.16
[Exhibit 1, Response to Request Nos. 1-4, 8-10 of
Petitioner’s First Request for Production of Documents to
Registrant].
21. Respondent has no documents which relate to his
first use of the SHUT IT DOWN mark. [Exhibit 1, Response to
Request No. 6 of Petitioner’s First Request for Production
of Documents to Registrant].
22. Respondent stated that he has intended to use,
used or disseminated a hang tag bearing the mark. [Exhibit
2, Response to Interrogatory No. 14 of Petitioner’s First
Set of Interrogatories to Registrant].
23. On October 19, 2007, Petitioner filed application
Serial No. 77308774 to register the mark SHUT EM DOWN in
standard characters for athletic wear, namely, basketball
attire. In the Office action of July 31, 2008, registration
of petitioner’s mark was refused under § 2(d) of the
Trademark Act on the basis that its mark, when used on or in

16 As of the August 4, 2009 date of respondent’s Response to
Petitioner’s First Document Request.

Cancellation No. 92049692
14
connection with its goods, so resembles respondent’s mark
shown in Registration No. 3372975 as to be likely to cause
confusion, or to cause mistake or to deceive. [Exhibit 7].
24. Petitioner filed the subject Cancellation
proceeding on July 22, 2008.
A. Standing
Standing is a threshold issue that must be proved in
every inter partes case. See Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982) (“The facts regarding standing. . . must be
affirmatively proved. Accordingly, [plaintiff] is not
entitled to standing solely because of the allegations in
its [pleading].”). To establish standing in a cancellation
proceeding, petitioner must show both “a real interest” in
the proceedings as well as a “reasonable” basis for its
belief of damage. See Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023, 1025 (Fed. Cir. 1999).
Through a notice of reliance, petitioner introduced
evidence of its pending application which has been refused
registration based on a likelihood of confusion with the
mark in respondent’s registration. This is sufficient to
show that petitioner has a real interest in this proceeding
and, therefore, has standing. Lipton, 213 USPQ at 189
(“Thus, to have standing in this case, it would be
sufficient that [plaintiff] prove that it filed an
Cancellation No. 92049692
15
application and that a rejection was made because of
[defendant’s] registration”); Fiat Group Automobiles S.p.A.
v. ISM Inc., 94 USPQ2d 1111, 1112 (TTAB 2010), citing Life
Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1959
(TTAB 2008), (“The filing of opposer’s application and the
Office’s action taken in regard to that application provides
opposer with a basis for pleading its standing. . .”).
B. Whether respondent abandoned its rights in the SHUT IT
DOWN trademark?

Under the subtitle “Abandonment,” petitioner alleges on
information and belief that respondent is no longer using
and has discontinued use of the SHUT IT DOWN mark, has no
intention to resume use of the mark, and that petitioner
will be damaged by the continued registration of
respondent’s mark. (Petition for Cancellation, ¶¶ 4-7).
Abandonment is one of the statutory grounds for
cancellation of a trademark registration, § 14(3) of the
Trademark Act, 15 U.S.C. § 1064(3). A mark is deemed to be
“abandoned,” if the following occurs:
When its use has been discontinued with
intent not to resume such use. Intent
not to resume use 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.

Cancellation No. 92049692
16
There are two elements to an abandonment claim that a
plaintiff must prove: nonuse of the mark and intent not to
resume use. Because registrations are presumed valid under
15 U.S.C. § 1057, the party seeking cancellation based on
abandonment bears the burden of proving a prima facie case.
Quality Candy Shoppes/Buddy Squirrel of Wisconsin Inc. v.
Grande Foods, 90 USPQ2d 1389, 1393 (TTAB 2007) citing On-
Line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56
USPQ2d 1471, 1476 (Fed. Cir. 2000). If plaintiff can show
three consecutive years of nonuse, it has established a
prima facie showing of abandonment, creating a rebuttable
presumption that the registrant has abandoned the mark
without intent to resume use. The burden of production,
i.e., going forward, then shifts to the registrant to
produce evidence that it has either used the mark, or
intended to resume use. The burden of persuasion remains
with the plaintiff to prove abandonment by a preponderance
of the evidence. See On-line Careline, 56 USPQ2d at 1476
and Cerveceria Centroamericana S.A. v. Cerveceria India
Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1310 (Fed. Cir. 1989).
With respect to the vast majority of the goods recited
in Registration No. 3372975, i.e., the “goods admitted not
in use,” respondent has admitted that he has not used the
Cancellation No. 92049692
17
mark on these 109 items and has no intention to do so.17
This is sufficient to prove abandonment as to those goods.
See Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d
1575, 14 USPQ2d 1390, 1395 (Fed. Cir. 1990)(abandonment
found where mark had never been used); and The Procter &
Gamble Co. v. Sentry Chemical Co., 22 USPQ2d 1589, 1592,
(TTAB 1992)(abandonment may be established by proving that a
registrant is not using or has never used its mark on
certain goods)(emphasis added).
The statutory benefits of respondent’s registration
under 15 U.S.C. § 1057 are not enough to bridge the critical
period of nonuse. The presumption of validity of a
registration under 15 U.S.C. § 1057(b) entitles respondent
to rely on the filing date of his application to claim use
of his mark, and sets the critical period for petitioner to
make a prima facie showing of abandonment as the three-year
period commencing March 15, 2006.18 The more than three
year lapse of time, from respondent’s March 15, 2006
application filing date to the August 4, 2009 date of his
admission that he has never used the mark for the bulk of

17 By omitting such goods in his responses to Interrogatory No. 2
(goods ever offered for sale under the mark) and No. 10 (goods on
which respondent intends to use or has used the mark), respondent
has effectively admitted nonuse of the mark on all products other
than the seven products he identified in his responses, only four
of which are recited in his registration.
18 Respondent based his application for registration on 15 U.S.C.
§ 1051(a), claiming a date of first use of January 1, 2006, and a
date of first use in commerce of February 3, 2006 for each item.
Cancellation No. 92049692
18
the identified goods19 is sufficient for a prima facie
showing of abandonment as to the goods not in use. Cf.
P.A.B. Produits et Appareils de Beaute v. Satinine Societa
In Nome Collettivo di S.A. e.M. Usellini, 570 F.2d 328, 196
USPQ 801, 804 (CCPA 1978)(no inference of abandonment when
registrant’s last date of use is less than two years prior
to the date when registrant answered petitioner’s
interrogatory).20
This prima facie showing of abandonment shifts the
burden to respondent, who must show he used the mark or had
an intent to resume use of the mark. Imperial Tobacco, 14
USPQ2d at 1393 (presumption eliminates plaintiff’s burden to
establish the intent element of abandonment as an initial
part of its case). Not only has respondent failed to
provide any evidence that excuses his nonuse of the mark or
shows his intention to resume use of the mark on such goods,
respondent has admitted that he has no intention to use his
mark on these 109 items. No proof could be more persuasive
than respondent’s admission of nonuse. See Lipton, 213 USPQ
at 191. In view of respondent’s failure to rebut the
presumption of abandonment with respect to the “goods

19 Or more accurately, that he has used the mark for only four of
the items identified in the application/registration.

20 Effective January 1, 1996, 15 U.S.C. § 1127 was amended to
provide that “three consecutive years” rather than “two
consecutive years” of nonuse constitutes prima facie evidence of
abandonment.
Cancellation No. 92049692
19
admitted not in use,” petitioner has established abandonment
by a preponderance of the evidence with respect to the 109
“goods admitted not in use.”
We now turn to the four items respondent has identified
as those items on which he has used or is using the mark,
i.e., “goods allegedly in use.” The evidence submitted by
petitioner shows that no one has purchased goods from
respondent in the five years preceding respondent’s service
of responses to petitioner’s discovery requests;21
respondent has no sales receipts or other sales documents,
no invoices and/or bills of service for goods showing use of
the mark for the more than three years between the filing
date of his application and the service of responses to
petitioner’s discovery requests; no promotional materials;
and no documents relating to his first use of the SHUT IT
DOWN mark.
The foregoing establishes petitioner’s prima facie case
of abandonment based on nonuse of the mark for the four
“goods allegedly in use” for the more than three year period
between respondent’s filing date and date of his responses
to petitioner’s discovery requests. Accordingly, the burden
of going forward and rebutting petitioner’s prima facie

21 Petitioner’s discovery requests inquired about use during a
five year period. The three year period of nonuse that is
critical to our finding of abandonment falls within this longer
five year period covered by the discovery requests.

Cancellation No. 92049692
20
showing shifted to respondent. Based on the record before
us, respondent did not meet his burden.
Respondent introduced no testimony or evidence during
his testimony period. However, on September 14, 2010, prior
to the opening of petitioner’s testimony period, respondent
filed an original cash register receipt and his response to
petitioner’s third request for the production of documents
with the Board. The filing of these documents with the
Board was inappropriate. See 37 C.F.R. § 2.120(j)(8).
Because the cash register receipt was not offered into
evidence in compliance with the Trademark Rules of Practice,
it cannot be considered as evidence supporting respondent’s
case. See Trademark Rule 2.123(l), 37 CFR § 2.123(l)
(evidence not obtained and filed in compliance with these
sections will not be considered). Even if a copy of this
particular receipt had been properly introduced by either
party, the receipt would have no probative value.22
Similarly, the sample hangtag produced by respondent in
response to petitioner’s second document request was not
properly introduced by either party and, even had it been
properly introduced, would have limited probative value. In

22 The receipt consists of a string of transactions dated 07-23-
2010, two years after the cancellation petition was filed. It
does not bear the name of any person or establishment, or
identify the subject matter of the transactions. Accordingly, it
would not be probative evidence even if it had been properly
offered during respondent’s testimony period.

Cancellation No. 92049692
21
inter partes proceedings, a hangtag by itself, without any
testimony describing how it was used, merely demonstrates
that the hangtag existed at some point in time; it does not
prove that the mark was actually placed on goods or that
goods bearing the hangtag were offered for sale in commerce.
See, Top Tobacco, L.P. v. North Atlantic Operating Co.,
Inc., 101 USPQ2d 1163 (TTAB 2011)(product packaging found to
be self-authenticating under Fed. R. Evid. 902(7), however
packaging has limited probative value without further
evidence of its use in commerce).
Respondent did not provide a shred of evidence to
corroborate his alleged use of the mark in commerce on the
four “goods allegedly in use” items. His uncorroborated
interrogatory responses that he used the mark or that he
intends to use it on these items are insufficient to rebut
the presumption of abandonment resulting from the lack of
any advertising, sales, or customers for the five years
prior to respondent’s responses to petitioner’s discovery
requests, for any items listed in respondent’s registration.
A party’s response to an interrogatory is not without
evidentiary value, but generally is 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), and
Beecham Inc. v. Helene Curtis Industries, Inc., 189 USPQ 647
Cancellation No. 92049692
22
(TTAB 1976). The trier of fact has discretion to decide
what weight to give to an interrogatory response. Fidelity
& Deposit Co. of Maryland v. Hudson United Bank, 653 F.2d
766, 777 (3d Cir. 1981).
The only invoices that were provided by respondent, but
not properly introduced into the record, were dated in
April, September, November, and December 2009, long after
the petition for cancellation was filed in July 2008.
Notably, none of these documents bear a date that falls
within the critical three-year period of nonuse measured
from respondent’s filing date, i.e., from March 2006 to
March 2009. More importantly, the SHUT IT DOWN mark is
nowhere to be found on the invoices; and these invoices do
not represent sales by respondent as they are invoices
issued by third parties “to” respondent.23
While it is petitioner’s burden to prove nonuse of the
mark, respondent’s failure to produce any evidence
corroborating his responses to petitioner’s discovery
requests seeking such evidence leaves us little choice but
to conclude that respondent has not used his mark in
commerce on the “goods allegedly in use” for the more than
three-year period from his March 2006 application filing

23 As set forth in note 8 supra, and pursuant to TBMP § 704.11,
the Board can not consider these documents in support of either
party.
Cancellation No. 92049692
23
date through his August 2009 response date24 and had no
intention to do so. Therefore, we find that respondent has
also abandoned his rights to the SHUT IT DOWN mark with
respect to the four “goods allegedly in use.”
In view of the foregoing, we find that respondent
failed to rebut the prima facie case of abandonment
established by petitioner. Respondent has not made use of
the mark on the items identified in his registration for a
period of time lasting in excess of three years, has not
shown an intent to resume use of the mark and has therefore
abandoned use of the mark for all of the goods in
Registration No. 3372975. Accordingly, pursuant to 15
U.S.C. §§ 1064 and 1127, Registration No. 3372975 shall be
cancelled in its entirety on the ground of abandonment.
C. Whether respondent fraudulently obtained his
registration due to nonuse of mark at time of filing?

For completeness, we turn to the fraud claim based on
petitioner’s allegation that respondent had not made use of
the mark either at the time of filing his application or
when he submitted a substitute specimen attesting to use of
the mark.

24 August 4, 2009, is the date that respondent submitted responses
to petitioner’s first set of discovery requests. Respondent
subsequently provided undated responses to petitioner’s second
and third sets of discovery requests.
Cancellation No. 92049692
24
The relevant standard for proving fraud set forth in
In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed.Cir.
2009), requires a showing of the following four elements:
(1) applicant/registrant made a false representation
to the USPTO;
(2) the false representation is material to the
registrability of a mark;
(3) applicant/registrant had knowledge of the falsity
of the representation; and
(4) applicant/registrant made the representation with
intent to deceive the USPTO.
Id., 91 USPQ2d at 1941.
Petitioner’s fraud claim alleges the following upon
information and belief:25 (1) respondent is not now using
and never has used the SHUT IT DOWN mark on or in connection
with each item recited in the underlying application; (2)
respondent falsely alleged in his declarations in support of
his application and substitute specimen that the mark was in
use on all of the recited goods; (3) respondent knew at the
time he submitted his declarations that the recitation of
use of the mark for the goods in his application was false;

25 Subsequent to issuance of the Federal Circuit’s decision in In
re Bose, the Board has found pleadings of fraud based on
information and belief to be insufficient when the pleading does
not otherwise set forth a clear basis for the claim of fraud. In
this case, the petition for cancellation was filed prior to the
Bose decision and its sufficiency was not challenged by
respondent.
Cancellation No. 92049692
25
(4) the USPTO issued the subject registration pursuant to
the declarations that these statements were true, which was
material to the grant of the registration; (5) that
respondent procured the registration by false means and/or
by knowingly making false and/or fraudulent declarations or
representations to the USPTO including false allegations in
a declaration that respondent used the mark in connection
with the recited goods when respondent did not use the mark
on all recited goods at the time of the application.
Because we find that respondent’s allegation of use of his
mark in commerce for the identified goods, at the time of
filing of his application was false, we hold that the
application was void ab initio, and we need not decide the
fraud claim.
Respondent admitted to nonuse of the mark on 109 of the
113 items listed in his application both at the time of
filing of the application and at the time of filing of a
substitute specimen of use. See, supra, finding of fact No.
19. Respondent clearly made a false representation that the
mark was in use on each of those 109 items on which he now
admits the mark was never used.
Additionally, as addressed above, there is no evidence
to corroborate respondent’s interrogatory responses that he
used the mark in commerce in connection with the four
remaining “goods allegedly in use,” namely, T-shirts, caps,
Cancellation No. 92049692
26
jogging suits and jerseys. In fact, nonuse is established
by the other interrogatory responses coupled with
respondent’s acknowledgment of the lack of documents such as
sales records, bank records, tax returns, sales receipts,
invoices, bills of service, advertising and promotional
materials. Therefore, respondent’s representations to the
USPTO that the mark was in use on these four products were
also false.
Accordingly, petitioner has made a prima facie case that
registrant did not use his mark at the time he filed the
underlying application based on use in commerce under § 1(a)
of the Trademark Act, 15 U.S.C. § 1051(a). Respondent has
not taken any action to contradict the accuracy or probative
value of petitioner’s showing.
The law is clear that an application can be held void
if the plaintiff pleads and proves either fraud or nonuse of
a mark for all identified goods or services prior to the
application filing date. Grand Canyon West Ranch LLC v.
Hualapai Tribe, 78 USPQ2d 1696, 1697 (TTAB 2006). Cf. Wet
Seal Inc. v. FD Management Inc., 82 USPQ2d 1629 (TTAB 2007)
(“an application will not be deemed void for lack of a bona
fide intention to use absent proof of fraud, or proof of a
lack of bona fide intention to use the mark on all the goods
identified in the application”).
Cancellation No. 92049692
27
Here, we acknowledge that the petition for cancellation
did not include a separate claim alleging that respondent’s
nonuse of the mark at the time of filing rendered the
application void ab initio. Nonetheless, paragraphs 11 and
13 of the petition for cancellation clearly put respondent
on notice that petitioner had alleged nonuse by respondent,
in particular, “on all recited goods at the time of the
application” (¶ 13). Such separate pleading of a nonuse
claim, while preferable, is not, however, critical, and the
Board has found applications to be void ab initio even when
nonuse was not pleaded as a separate claim or issue. See
CPC International Inc. v. Skippy Inc., 3 USPQ2d 1456, 1460
(TTAB 1987) (though panel found evidence of fraudulent
intent lacking, it nonetheless concluded “there is no doubt
whatsoever that the marks were not in use on the indicated
services as of the filing dates of the applications and . .
. the specimens of record do not demonstrate any such use on
or prior to the filing dates. Accordingly, both
applications are void ab initio.”) and Laboratories du Dr.
N.G. Payot Establissement v. Southwestern Classics
Collection Ltd., 3 USPQ2d 1600, 1603-04 (TTAB 1987)
(unpleaded issue of nonuse of the mark sought to be
registered was tried by implied consent of the parties where
[defendant] had fair notice of the issue and was neither
unfairly surprised nor prejudiced by consideration of the
Cancellation No. 92049692
28
issue which was the subject of discovery requests and
responses, and testimony deposition of defendant’s
president).
In this case, there is no doubt that the issue of
nonuse by respondent at the time of filing was clearly set
out in the petition for cancellation and tried by the
parties.26 Based on our finding that the record supports
the conclusion that respondent’s mark was not in use at the
time of filing of his application, we hold the application
void ab initio. We need not discuss the remaining elements
of the fraud claim or render a decision on it, as we have
already determined that the registration must be cancelled
in its entirety both on the abandonment claim and because of
the application’s voidness.
Decision: The application resulting in Registration
No. 3372975 was void ab initio based on nonuse of the mark
at the time of filing. The petition for cancellation is

26 Petitioner’s Interrogatory No. 11 requested that registrant
state the date on which the mark was first used and identify
documents supporting the date on which the mark was first used
for each of the identified goods on which registrant intends to
use or has used his mark. See Exhibit 1. Registrant responded
“None” to petitioner’s Document Request No. 6 requesting
registrant to produce all documents which relate to the first use
of registrant’s mark. See Exhibit 2. Document Request No. 4 in
petitioner’s Second Request for Documents requested that
registrant produce copies of documents used to determine that the
mark was first used in commerce on the February 3, 2006 date he
identified, for each of the 7 products which registrant stated he
used or intended to use his mark, namely, t-shirts, jogging
suits, socks, baseball caps, basketball shorts, jerseys and
towels. See Exhibit 3.

Cancellation No. 92049692
29
granted on the grounds of abandonment and on the basis that
the application was void ab initio. Registration No.
3372975 shall be cancelled in its entirety.