Smart Choice Foods Sales, Ltd.v.Nature’s Way Products, Inc.

Trademark Trial and Appeal Board

Mar 29, 2006

No. 92044270 (T.T.A.B. Mar. 29, 2006)

Goodman

Mailed: March 29, 2006

Cancellation No. 92044270

SMART CHOICE FOOD SALES, LTD.

v.

NATURE'S WAY PRODUCTS, INC.

Before Quinn, Hohein and Rogers, Administrative Trademark
Judges.

By the Board:

Smart Choice Food Sales, Ltd. seeks to cancel the
registration owned by Nature’s Way Products, Inc. for the
mark THE GOLD STANDARD for “vitamins and nutritional dietary
supplements” in International Class 51 on the ground that
respondent has abandoned the mark by having failed to use
the mark in commerce “for a period in excess of three years”
with no intent “to resume use of the mark in connection with
such goods.”2
Respondent, in its answer, has denied the essential
allegations of the petition to cancel and pleaded certain
affirmative defenses.

1 Reg. No. 1,500,164, issued on August 16, 1988 on the Principal
Register, which claims a date of first use in commerce of January
25, 1988; Section 8 and 15 affidavit acknowledged March 29, 1995.
2 The petition to cancel was filed on February 7, 2005.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Cancellation No. 92044270
2
This case now comes up for consideration of
petitioner's motion, filed July 29, 2005, for summary
judgment on the ground of abandonment. The motion is fully
briefed.
In support of its motion, petitioner contends that
since the commencement of the proceeding, respondent has
failed to produce a single piece of evidence that the
registered mark THE GOLD STANDARD was ever used in commerce;
that there is not a single fact in the record showing use by
respondent or rebutting the showing of abandonment; that
abandonment can be presumed from respondent’s failure to
provide evidence of sales, usage or affixation of the
involved mark to any of its products in response to
petitioner’s discovery requests, which were largely directed
to the central issue of abandonment; that respondent’s
failure to provide substantive answers to petitioner’s
interrogatories and its production of only four documents in
response to petitioner’s document requests supports a
showing of abandonment; and that the four documents produced
by respondent do not address the abandonment issue nor do
they show that THE GOLD STANDARD was ever used as a mark.3

3 With regard to the four documents produced, petitioner argues
that respondent has failed to show when or whether these
documents were actually used in advertising the products (2005
advertisement – B-2) or affixed to the goods (2005 document - B-1
and 1994 label - B-3); and that the document dated 2002 is not
evidence of any actual or ongoing usage or even resumption
following nonusage nor can an intent to resume use be inferred
from the document.
Cancellation No. 92044270
3
As evidence to support its position, petitioner has
provided the declaration of Robert Seader, president of
petitioner, who avers that he undertook a factual
investigation of the abandonment of respondent’s THE GOLD
STANDARD mark; that he examined respondent’s products in
stores, reviewed respondent’s websites, product literature,
and advertisements through Internet searches and found no
usage of THE GOLD STANDARD mark; and that he called
respondent to inquire about THE GOLD STANDARD products and
“was informed that no such name existed.” Petitioner has
also submitted the four documents produced by respondent in
response to petitioner’s document discovery requests as
prima facie evidence of abandonment.
In response, respondent argues that petitioner’s
president’s investigation into respondent’s use is
unreliable and irrelevant and does not establish abandonment
as matter of law; that the documents produced by respondent
in discovery create questions of fact; that use of the
subject mark in commerce and in a printed publication as
recently as 2005 “affirmatively evidence intent to utilize
the mark”; and that petitioner has failed to demonstrate an
absence of issues of material fact as to respondent’s intent
to abandon the mark.
In support of its response, respondent has provided the
declaration of Robyn Phillips, respondent’s counsel. In her
Cancellation No. 92044270
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declaration, respondent’s counsel avers that petitioner has
not produced documentary evidence with regard to its factual
investigation into respondent’s alleged abandonment of THE
GOLD STANDARD mark (i.e., the phone call and Internet
search); and that the documents produced by respondent
establish that it uses the mark “as a secondary mark in
connection with goods.”
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. Fed. R. Civ. P. 56(c). The party moving for
summary judgment has the initial burden of demonstrating the
absence of any genuine issue of material fact and that it is
entitled to judgment as a matter of law. See Celotex Corp.
v. Catrett, 477 U.S. 317 (1986) and Sweats Fashions Inc., v.
Pannil Knitting Co., Inc., 833 F.2d 1560, 4 USPQ2d 1793
(Fed. Cir. 1987). The evidence must be viewed in a light
most favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant's favor. See
Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993).
Turning to the merits of petitioner's motion, we find
that there is no genuine issue of material fact that
respondent ceased using THE GOLD STANDARD mark sometime
after 1994 for a period of no less than three consecutive
Cancellation No. 92044270
5
years. We agree with petitioner that the discovery
responses made of record are sufficient to establish a prima
facie case of abandonment.4
Irrespective of events in 2005 when, evidently,
respondent may have made some use of the mark, we find that,
by that time, respondent had abandoned its right to THE GOLD
STANDARD mark through nonuse. Simply put, the record is
devoid of any evidence to show that the registered mark was
used in the ordinary course of trade on any of the goods
listed in the involved registration. Despite petitioner's
various discovery requests therefor, respondent furnished no
evidence showing that there was never a three-year period
prior to 2005 in which it had failed to make any sales or
other use of THE GOLD STANDARD mark, whether such use be on
receipts, tags, labels, advertisements or otherwise.
Instead, the only documentation provided by respondent
showing possible use of THE GOLD STANDARD mark for a date
prior to 2005 is a label with a 1994 copyright notice. The
total lack of corroborating evidence of sales and use of
such goods under the mark clearly establishes a prima facie
case of abandonment of respondent's THE GOLD STANDARD mark.

4 Section 45 of the Trademark Act, 15 U.S.C. Section 1127,
provides that a mark is abandoned when "its use has been
discontinued with intent not to resume use.... Nonuse for three
consecutive years shall be prima facie evidence of abandonment."

Cancellation No. 92044270
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We also find that there is no genuine issue that the
2005 uses of the mark, if they were used in connection with
the goods at all, represent a new and separate use of the
mark. These uses cannot serve to cure the prior abandonment
inasmuch as abandonment of a mark cannot be reversed by
subsequent re-adoption of a mark. Parfums Nautee Ltd. v.
American International Industries, 22 USPQ2d 1306, 1310
(TTAB 1992).
Accordingly, we find that as a matter of law,
petitioner has established a prima facie case of abandonment
of the mark.
Such a prima facie case of abandonment eliminates
petitioner's burden of establishing the intent element of
abandonment as an initial part of the case and creates a
rebuttable presumption that respondent abandoned its mark
without an intent to resume use. See Rivard v. Linville,
133 F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998); and
Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575,
14 USPQ2d 1390, 1393 (Fed. Cir. 1990). The presumption
shifts the burden to respondent to produce evidence that it
intended to resume use of the mark. See Rivard v. Linville,
supra; and Cerveceria Centroamericana S.A. v. Cerveceria
India, Inc., supra.
Thus, in the case of a motion for summary judgment,
when the moving party supports its position by evidence
sufficient to indicate that there is no genuine issue of
Cancellation No. 92044270
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material fact, and that the moving party is entitled to
judgment as a matter of law, the burden shifts to the
nonmoving party to demonstrate the existence of specific,
genuinely-disputed facts that must be resolved at trial. In
this case, the question is whether respondent, like any
other registrant who has not made use for at least three
years, has put forth sufficient evidence to at least raise a
genuine issue of material fact of intent to resume use.
Imperial Tobacco Ltd. v. Philip Morris Inc., supra.
After reviewing the evidence in a light most favorable
to respondent, we conclude that respondent has not raised a
genuine issue of fact to rebut the presumption that
respondent abandoned its mark without an intent to resume
use. Respondent has provided no documentary evidence
showing specific actions taken to plan for resumption of use
but has only offered unsupported statements5 in its
responsive brief regarding its continuing intent. The
declaration from its counsel does not go to respondent’s
intent to resume use and only asserts that THE GOLD STANDARD
is a secondary trademark.6 We also find little value in the
2002 “survey” document which was produced in discovery
inasmuch as “an affirmative desire by the registrant not to
relinquish a mark is not determinative of the intent element

5 The unsupported statements are made by respondent's attorney.
6 We note that respondent's attorney could not submit averments
as to respondent’s use or its intent to resume use.
Cancellation No. 92044270
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of abandonment under the Lanham Act.” Imperial Tobacco, 45
USPQ2d at 1394. See also, Rivard v. Linville, 45 USPQ2d at
1376 (“registrant’s bare proclamations of its intent to
resume use ... are entitled to little, if any, weight”).
Further, we cannot agree with respondent that the 2005
documents produced in discovery are evidence of a continuing
intent to use the mark. As stated above, the 2005 uses are
clearly new use of the mark after abandonment.
In view of the foregoing, we conclude that respondent
has not raised a genuine issue of material fact to overcome
the presumption of no intent to resume use of the mark,
after years of nonuse of the mark. Thus, and provided that
the matter below is resolved in its favor, petitioner
appears to be entitled to summary judgment in its favor on
the issue of abandonment.
One further matter remains, however. Specifically, in
order to prevail herein, petitioner must establish not only
a valid ground for cancellation but must prove its standing
to bring the petiton to cancel as well. Medinol Ltd. v.
Neuro Vasx Inc., 67 USPQ2d 1205, 1210 (TTAB 2003). However,
petitioner has not submitted any evidence on this point.
In view thereof, petitioner is allowed until THIRTY
DAYS from the mailing date of this order in which to submit
a showing that there is no genuine issue of fact as to its

Cancellation No. 92044270
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standing. Paramount Pictures Corp. v. White, 31 USPQ2d
1768, 1775-76 (TTAB 1994). If petitioner's showing is
sufficient to establish petitioner's standing, the motion
for summary judgment on the issue of abandonment will be
granted, and the petition for cancellation will be granted.
If petitioner's showing is not sufficient on the issue of
standing, proceedings will resume on the issue of
petitioner’s standing to bring this proceeding.
Proceedings herein remain otherwise SUSPENDED pending
petitioner's response.