W. Clay Mackeyv.Lawson’s Finest Liquids, LLC

Trademark Trial and Appeal Board

Aug 1, 2019

91220846 (T.T.A.B. Aug. 1, 2019)

CME/WF
August 1, 2019

Opposition No. 91220846

W. Clay Mackey

v.
Lawson’s Finest Liquids, LLC

Before Cataldo, Bergsman, and English,
Administrative Trademark Judges.

By the Board:

This case now comes up on: (1) the parties’ cross-motions for partial summary
judgment on the counterclaim of abandonment, filed May 24, 2018, and June 25,
2018,1 and (2) Applicant’s renewed motion for sanctions, filed January 22, 2019. The
motions are fully briefed.

1 Briefing on the parties’ cross-motions was suspended pending a determination of Opposer’s
motion, filed June 27, 2018, for the return or destruction of privileged documents.
In the last sentence of his cross-motion, Opposer asserts that “the Board should grant
partial summary judgment in Opposer Mackey’s favor by finding that the CHINOOK mark
was continuously used with wine[.]” 54 TTABVUE 24. This request will be given no
consideration because Applicant has not counterclaimed to cancel Opposer’s registration for
wine on grounds of abandonment and, even if it had, the Board does not consider embedded
motions.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
Opposition No. 91220846

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I. The Pleadings
Applicant seeks registration of the mark CHINOOKER’D IPA, in standard
characters, for “beer.”2 As grounds for opposition, Opposer alleges likelihood of
confusion and dilution based on prior use and registration of the mark CHINOOK, in
typed form,3 for “table wine and sparkling wine” (Registration No. 1353183)4 and
“beer” (Registration No. 1790596 (the “‘596 Registration”)).5
In its amended answer and counterclaims, filed December 23, 2015, Applicant
denies the salient allegations in the notice of opposition, pleads three “defenses” that
are amplifications of its denials, and counterclaims to cancel the ‘596 Registration on
grounds of genericness, fraud, and abandonment based on nonuse. In his answer to
Applicant’s amended counterclaims, filed January 22, 2016, Opposer denies the
salient allegations in the counterclaims.
II. Applicant’s Motion for Sanctions
Applicant argues for sanctions against Opposer on the ground that Opposer has
failed to produce discovery “relating to the sale of beer under the mark CHINOOK.”6
More specifically, Applicant argues that its first two sets of discovery requests focused
on Opposer’s use (or nonuse) of the mark CHINOOK for beer; that in an April 3, 2017

2 Filed June 4, 2014 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on
Applicant’s claim of first use and first use in commerce as of September 2008; “IPA”
disclaimed.
3 A typed mark is the legal equivalent of a standard character mark. TMEP § 807.03(i) (Oct.
2018).
4 Registered August 6, 1985; second renewal.
5 Registered August 31, 1993; second renewal.
6 67 TTABVUE 6.
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order, the Board ordered Opposer to serve amended responses to Applicant’s first set
of discovery requests; that Opposer “waited more than a year after discovery
responses were compelled by the Board (as to Applicant’s first set of discovery
requests) or were due (as to Applicant’s second set of discovery requests) to provide
responsive documents and information” and that this was after Applicant filed its
motion for summary judgment; and that in arguing the parties’ cross-motions for
summary judgment on the counterclaim of abandonment, Opposer relies on
documents and information related to his use of the mark CHINOOK for beer that he
should have, but did not, produce.7 Applicant requests that the Board sanction
Opposer by: (1) entering judgment against Opposer on his claims in the opposition;
(2) sustaining Applicant’s abandonment counterclaim against the ‘596 Registration;
or (3) striking Opposer’s evidence related to Opposer’s use and efforts to use the mark
CHINOOK for beer, namely, paragraphs 8-37 of Opposer’s declaration (the “Mackey
Declaration”) and Bates numbered documents MACK000556-000557, MACK000559-
563, MACK000599-604, MACK000624-627, MACK000639-655, MACK000657-662,
MACK000684-687, and MACK000692-701 (collectively the “Objected-to Evidence”).8
The law favors determining cases on the merits, when possible. Paolo’s Assocs.
Ltd. P’ship v. Bodo, 21 USPQ2d 1899, 1902 (Comm’r 1990). For the reasons explained
in Section III below, even when we consider the Objected-to Evidence, we reach the
same conclusion on the parties’ cross-motions for summary judgment on the

7 Id. at 7 and 15.
8 Id. at 5, 7 and 15.
Opposition No. 91220846

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counterclaim of abandonment: Applicant is entitled to judgment. Accordingly,
Applicant’s motion is moot to the extent Applicant requests that the Board exclude
the Objected-to Evidence and enter judgment for Applicant on its abandonment
counterclaim.
Applicant’s motion is denied without prejudice to the extent Applicant seeks
judgment on Opposer’s claims in the opposition. Judgment as a sanction is a harsh
remedy that generally is reserved for when a party repeatedly fails to comply with
Board orders and no lesser sanction would be effective. Benedict v. Superbakery Inc.,
665 F.3d 1263, 101 USPQ2d 1089, 1093 (Fed. Cir. 2011) aff’g 96 USPQ2d 1134 (TTAB
2010). Such circumstances are not present here.
III. The Parties’ Cross-Motions for Partial Summary Judgment
The parties’ have cross-moved for summary judgment on Applicant’s counterclaim
of abandonment based on nonuse. Additionally, Applicant seeks summary judgment
on abandonment through naked licensing. Applicant has not pleaded abandonment
based on naked licensing and Opposer has objected to Applicant seeking summary
judgment on this unpleaded counterclaim. Accordingly, Applicant’s motion will be
given no consideration to the extent it is based on abandonment through naked
licensing. See Fed. R. Civ. P. 56(a); Paramount Pictures Corp. v. White, 31 USPQ2d
1768, 1772 (TTAB 1994) (“[A] party may not obtain summary judgment on an issue
which has not been pleaded” if its adversary has objected on this basis), aff’d mem.,
108 F.3d 1392 (Fed. Cir. 1997); TBMP § 528.07(a) (2019).
Opposition No. 91220846

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A. Summary Judgment Standard
Summary judgment is appropriate only where there are no genuine disputes as to
any material facts, thus allowing the case to be resolved as a matter of law. Fed. R.
Civ. P. 56(a). The party seeking summary judgment bears the initial burden of
demonstrating the absence of any genuine dispute of material fact, and that he is
entitled to a judgment under applicable law. See Celotex Corp. v. Catrett, 477 U.S.
317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting, 833 F.2d 1560, 4 USPQ2d
1793, 1796 (Fed. Cir. 1987). A factual dispute is genuine if, on the evidence of record,
a reasonable fact finder could resolve the matter in favor of the non-moving party.
See Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d
1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22
USPQ2d 1542, 1544 (Fed. Cir. 1992). Evidence on summary judgment 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. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766,
25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472. The
Board may not resolve genuine disputes as to material facts; it may only ascertain
whether genuine disputes as to material facts exist. See Llyod’s Food Prods., 25
USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1544.
B. Standing
Standing is a threshold issue that a plaintiff must prove in every inter partes case.
See Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982). There is no genuine dispute that Applicant’s standing is inherent in its
Opposition No. 91220846

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position as defendant in the opposition proceeding. See, e.g., Harry Winston, Inc. v.
Bruce Winston Gem Corp., 111 USPQ2d 1419, 1428 (TTAB 2014) (“Applicant has
standing based upon opposers’ assertion of their marks and registrations against
applicant in their notice of opposition.”); TBMP § 313.03.
C. Abandonment Through Nonuse
A mark is abandoned “[w]hen its use has been discontinued with the intent not to
resume such use.” 15 U.S.C. § 1127. For purposes of abandonment, “use” of a mark
means “use in commerce,” which is defined as:
the bona fide use of a mark in the ordinary course of trade, and not made
merely to reserve a right in a mark…. A mark shall be deemed in use in
commerce – (1) on goods when – (a) it is placed in any manner on the
goods or their containers or the displays associated therewith or on the
tags or labels affixed thereto, or if the nature of the goods makes such
placement impracticable, then on documents associated with the goods
or their sale, and (b) the goods are sold or transported in commerce[.] ”

15 U.S.C. § 1127.
Evidence of nonuse of a mark in commerce for three consecutive years constitutes
a prima facie showing of abandonment and shifts the burden to the party contesting
the abandonment to show either evidence sufficient to disprove the underlying facts
showing three years nonuse, or evidence of an intent to resume during the period of
nonuse. Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998);
Imperial Tobacco Ltd. v. Philip Morris Inc., 14 USPQ2d 1390, 1393 (Fed. Cir. 1990)
(“In effect, the presumption eliminates the challenger’s burden to establish the intent
element of abandonment as an initial part of its case.”); Cerveceria Centroamericana
S.A. v. Cerveceria India Inc., 13 USPQ2d 1307, 1311-12 (Fed. Cir. 1989); Stromgren
Opposition No. 91220846

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Supports Inc. v. Bike Athletic Co., 43 USPQ2d 1100, 1111 (TTAB 1997). Conclusory
testimony is not sufficient to demonstrate an intent to resume use of a mark. Imperial
Tobacco, 14 USPQ2d at 1394. Rather, a party defending against a claim of
abandonment must proffer evidence of specific activities demonstrating an intent to
resume use. Id. at 1394-95. Once a registered mark is abandoned, that abandonment
cannot be “reversed by subsequent re-adoption of a mark.” Parfums Nautee Ltd. v.
Am. Int’l Indus., 22 USPQ2d 1306, 1310 (TTAB 1992) (quoting First Nat’l Bank of
Omaha v. Autoteller Sys. Servs. Corp., 9 USPQ2d 1740, 1743 (TTAB 1988) (emphasis
in original).
On January 31, 1992, Opposer granted a license to Montana Beverages (d/b/a
Kessler Brewing Co.) to produce, bottle, label, ship and sell CHINOOK beer to
“customers and potential customers designated by [Opposer].”9 Under the agreement,
Montana Beverages was to “receive all sums in payment for the beer from purchasers
and credit the same to the account of [Opposer]” less its expenses for producing,
bottling, packaging and warehousing the products.10 In June 1992, Montana
Beverages produced ten cases of beer under the CHINOOK mark.11 In July 1992, the
Washington State Liquor Control Board issued a purchase order for ten cases of
CHINOOK beer and the beer was received by State Liquor Agency 554 in Prosser,
Washington.12 There is no testimony or other evidence (e.g. invoices, bills of lading,

9 54 TTABVUE 28, Mackey Declaration, ¶ 7, and 54 TTABVUE 35-37.
10 Id. at ¶ 8.
11 Id. at ¶ 11.
12 Id. at 186; 68 TTABVUE 16, Second Mackey Declaration, ¶ 13.
Opposition No. 91220846

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records showing payments to Opposer under the license agreement) showing
subsequent sales or shipments of CHINOOK beer until August 1, 2000 when Redhook
Brewing Company, pursuant to a license agreement with Opposer, sold CHINOOK
ale to Maletis Beverages.13
When a registration issues under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a), as did the ‘596 Registration, the period of nonuse includes any pre-
registration nonuse subsequent to the declaration of use, which for the ‘596
Registration was the September 3, 1992 filing date of the underlying use-based
application. ShutEmDown Sports, Inc. v. Lacy, 103 USPQ2d 1036, 1042 (TTAB 2012)
(measuring three-year period of nonuse from filing date of underlying use-based
application). Applicant has established a prima facie case that Opposer discontinued
use of the mark CHINOOK for beer for at least three consecutive years from the
September 3, 1992 filing date of the use-based application underlying the ‘596
Registration (the Nonuse Period).
Accordingly, the burden shifts to Opposer to demonstrate that there is a genuine
dispute of material fact as to whether he used, or had an intent to resume use of, the

The first Mackey Declaration suggested that Opposer purchased ten cases of CHINOOK
beer from the Washington State Liquor Control Board for purposes of sampling and
approving the beer product produced by Montana Beverages. 54 TTABVUE 29, Mackey
Declaration, ¶¶ 11 and 13. Opposer attached a second declaration to his reply brief in which
he avers that “[t]o clarify my previous declaration regarding the ten cases of beer Montana
Beverages produced under the CHINOOK mark in 1992, these cases were not delivered to
me. The Washington State Liquor Control Board Purchasing Division sent a Purchase Order
to Montana Beverages for ten cases of CHINOOK beer.” The “special order” invoice supports
this averment because it lists State Liquor Agency 554 as the recipient of the ten cases of
CHINOOK beer.
13 54 TTABVUE at 30, Mackey Declaration, ¶ 21; 54 TTABVUE 39-44 and 251.
Opposition No. 91220846

9
CHINOOK mark for beer during the Nonuse Period. Opposer has not met this
burden. There is no evidence that Opposer (or his licensee) sold or shipped CHINOOK
beer during the Nonuse Period. As to an intent to resume use, Opposer’s averment
that “[a]t no time was there any intent to abandon the CHINOOK mark” is “little
more than a denial in a pleading, which is patently insufficient to preclude summary
judgment….” Imperial Tobacco, 14 USPQ2d at 1394. The only other evidence
regarding whether Opposer had an intent to resume use of the mark during the
Nonuse Period is the license agreement with Montana Beverages.14 The mere
existence of the license agreement without any testimony or evidence demonstrating
that steps were being taken to sell or ship beer pursuant to the license agreement is
not enough to raise a genuine dispute of material fact to rebut the presumption of
abandonment. Imperial Tobacco, 14 USPQ2d at 1394-95 (requiring specific activities
demonstrating an intent to resume use). Accordingly, there is no genuine dispute of
material fact that Opposer abandoned the CHINOOK mark for beer.15

14 Opposer terminated the license agreement with Montana Beverages on December 20, 1998.
54 TTABVUE 226.
Opposer avers that he “had ongoing discussions with other breweries about producing beer
under the CHINOOK mark, but without any fruitful outcomes.” Id. at 29, Mackey
Declaration, ¶ 16. The only time frame Opposer provides for these discussions is 1998 and
1999 when he: (1) “attempted to negotiate a potential license agreement with Big Rock
Brewery to produce beer under the CHINOOK mark in Canada,” but the “negotiations were
unsuccessful”; and (2) “began negotiations with Redhook Ale Brewery.” Id. at ¶¶ 17 and 18.
The discussions with Big Rock Brewery are not pertinent because they concerned possible
use of the mark in Canada, not the United States. Further, the negotiations with both Big
Rock Brewery and Redhook occurred after the Nonuse Period and so do not show an intent
to resume use during the Nonuse Period.
15 Opposer asserts that he used the CHINOOK mark for beer from 1999 to 2006 and again
from 2013 to the present. 54 TTABVUE 21. Because abandonment of a registered mark
cannot be reversed by subsequent re-adoption of a mark, any re-adoption of the CHINOOK
mark for beer by Opposer is necessarily a new use that is not pertinent to Applicant’s
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Applicant’s motion for partial summary judgment on its counterclaim of
abandonment is therefore granted, Opposer’s cross-motion for partial summary
judgment on the counterclaim of abandonment is denied, Applicant’s abandonment
counterclaim is sustained, and the ‘596 Registration will be cancelled in due course.16
In consequence thereof, Applicant’s counterclaims for genericness and fraud are
dismissed without prejudice.
IV. Proceedings Resumed
Proceedings are resumed with respect to Opposer’s likelihood of confusion and
dilution claims.
The Board will not consider any further motions for summary judgment. The
parties are required to seek the Board’s verbal approval prior to filing any other types
of unconsented pre-trial motions.17
Discovery, disclosure, trial, and briefing deadlines are reset as follows:
Discovery Closes for Applicant/Counterclaim Plaintiff18

8/25/2019
Pretrial Disclosures Due for Opposer/Counterclaim Defendant
(Party in Position of Plaintiff in Original Claim)
10/9/2019

counterclaim of abandonment but may be pertinent to Opposer’s allegations of prior common
law rights in the mark CHINOOK for beer.
16 The evidence submitted in connection with the parties’ cross-motions for partial summary
judgment is of record only for consideration of those motions. To be considered at final
hearing, any such evidence must be properly introduced during the appropriate trial period.
See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1465 n.2 (TTAB
1993); Pet Inc. v. Bassetti, 219 USPQ 911, 913 n.4 (TTAB 1983); Am. Meat Inst. v. Horace W.
Longacre, Inc., 211 USPQ 712, 716 n.2 (TTAB 1981).
17 A party seeking permission to file an unconsented motion should contact both opposing
counsel and the assigned Interlocutory Attorney to schedule a mutually agreeable time for
the parties and the Board to participate to discuss by telephone the basis for any proposed
motion.
18 Discovery has closed for Opposer/Counterclaim Defendant.
Opposition No. 91220846

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30-Day Trial Period Ends for Opposer/Counterclaim Defendant
(Party in Position of Plaintiff in Original Claim)
11/23/2019
Pretrial Disclosures Due for Applicant/Counterclaim Plaintiff
(Party in Position of Defendant in Original Claim)
12/8/2019
30-Day Trial Period Ends for Applicant/Counterclaim Plaintiff
(Party in Position of Defendant in Original Claim)
1/22/2020
Pretrial Disclosures Due for Rebuttal for Opposer/Counterclaim
Defendant
(Party in Position of Plaintiff in Original Claim)
2/6/2020
30-Day Trial Period Ends for Rebuttal for Opposer/Counter-
claim Defendant
(Party in Position of Plaintiff in Original Claim)
3/22/2020
Pretrial Disclosures Due for Rebuttal for Applicant/Counter-
claim Plaintiff
(Party in Position of Plaintiff in Counterclaim)
4/6/2020
15-Day Trial Period Ends for Rebuttal for Applicant/Counter-
claim Plaintiff
(Party in Position of Plaintiff in Counterclaim)
5/6/2020
Opening Brief Due for Opposer/Counterclaim Defendant
(Party in Position of Plaintiff in Original Claim)
7/5/2020
Combined Brief for Applicant as Defendant in Original Claim
and Opening Brief as Counterclaim Plaintiff Due
8/4/2020
Combined Rebuttal Brief for Opposer as Plaintiff in Original
Claim and Brief as Counterclaim Defendant in Counterclaim
Due
9/3/2020
Rebuttal Brief for Applicant/Counterclaim Plaintiff Due 9/18/2020
Request for Oral Hearing (optional) Due 9/28/2020

Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
manner and timing of taking testimony, matters in evidence, and the procedures for
submitting and serving testimony and other evidence, including affidavits,
declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
Opposition No. 91220846

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submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
final hearing will be scheduled only upon the timely submission of a separate notice
as allowed by Trademark Rule 2.129(a).