IP Law Daily, TRADEMARK—TTAB: Cancellation of THRIFTY trademark registration denied, (Aug 18, 2025)

By Carolin Dennis, B.Sc., LL.B., LL.M.

Petitioner did not submit sufficient evidence to prove abandonment either by nonuse or by naked licensing, and the continuing use of the THRIFTY mark in connection with gas station services offered at 11 stations was more than token use.

In a nonprecedential decision, the Trademark Trial and Appeal Board (TTAB) denied a petition to cancel Thrifty Oil Co.’s trademark THRIFTY on the grounds of abandonment. The TTAB found that petitioner Bubble Down, LLC failed to carry its burden of proving its abandonment claim, or for adding a claim of fraud in in connection with its registration (Bubble Down, LLC v. Thrifty Oil Co., No. 92077451 (T.T.A.B. Aug. 1, 2025)).

Background. Thrifty Oil Co. (Thrifty Oil) owns a Principal Register registration for the mark THRIFTY, in standard characters, originally for “gasoline service station services and car washing services,” in International Class 37. Bubble Down, LLC (Bubble Down) offers car wash services at a range of price points, each denominated by a different mark. Bubble Down owns Principal Register registrations for the marks denoting the three wash packages—BESTEST, BESTY, and NIFTY. It filed applications to register THRIFTY WASH on the Principal Register in standard characters and in composite form, for “automobile cleaning and car washing” in Class 37. However, the applications were suspended pending potential refusals under Section 2(d) of the Trademark Act based on a likelihood of confusion with Thrifty Oil’s involved THRIFTY mark. Bubble Down then petitioned to cancel Thrifty Oil’s registration on the ground of abandonment. Bubble Down contended that Thrifty Oil never provided the car wash services.

Abandonment. After confirming the Bubble Down’s entitlement to a statutory cause of action on the grounds of its pleaded suspended application for the mark THRIFTY WASH, which was denied due to the likelihood of confusion with the mark THRIFTY, the TTAB clarified the Trademark Act's provisions on trademark abandonment. The TTAB stated that a trademark is presumed abandoned after three years of non-use, and once non-use is established, the Thrifty Oil must demonstrate actual use or intent to resume use. Thus, there are two elements to a claim for abandonment: nonuse; and intent not to resume use. The TTAB noted that Bubble Down ultimately bears the burden of proving abandonment by a preponderance of evidence.

Here, rather than proving a prima facie case, Bubble Down attempted to shift the burden of proof to Thrifty Oil. Bubble Down pointed to Thrifty Oil’s interrogatory answers identifying 13 gasoline service stations offering Thrifty Oil’s services under the THRIFTY mark. Bubble Down noted that two of the 13 gas stations were rebranded as ARCO, and mentioned a 1997 Los Angeles Times article that reported, “‘in recent years, Thrifty has been slowly shedding its locations to outside firms’ according to a spokesman.” Thrifty Oil testified that it had reduced the number of gas stations it operates, but never ceased use of its THRIFTY Mark in connection with gas station services.

The TTAB also noted that Bubble Down speculated about Thrifty Oil’s use of its THRIFTY mark, but failed to adduce evidence sufficient to carry Bubble Down’s burden of proving a prima facie case of abandonment. Having failed to prove a prima facie case of abandonment based on nonuse, Bubble Down cannot shift the burden of proof to Thrifty Oil.

As a fallback position, Bubble Down contended that Thrifty Oil has engaged in naked licensing of its THRIFTY mark, and argued “Registrant allows third parties to use the THRIFTY mark with gas station services without exercising sufficient control over the quality of those services.” But Bubble Down’s shift in position appeared to tacitly concede that 11 gas stations remain in operation under Thrifty Oil’s THRIFTY mark, albeit operated by one or more licensees.

Again, Bubble Down attempted to discharge the burden of proving naked licensing by alluding to Thrifty Oil’s discovery responses, and to the declaration of Thrifty Oil’s counsel. The TTAB noted that the discovery responses of record do not suffice to carry Bubble Down’s burden of proof. Thrifty Oil may not know its licensees sales and expense information, but controlling the nature and quality of the licensees services “does not require control over all of the related company’s affairs.” However, without further discovery and proof, The TTAB was left to guess at who Thrifty Oil’s licensee(s) might be, how much quality control, if any, Thrifty Oil exercises, and whether there has been any inconsistency in the quality of gas station services offered under the THRIFTY brand. The absence of proof is not proof of the absence of adequate control over the nature and quality of the THRIFTY gas stations’ services. Thus, The TTAB concluded that Bubble Down has not carried its burden of proving abandonment, either by nonuse or by naked licensing.

Fraud. The TTAB noted that the Petition for Cancellation, filed in June 2021, was based on the sole ground of abandonment. In March 2024, Thrifty Oil moved to amend its Registration to delete “and car washing services,” leaving only “gasoline service station services” in its recitation of services. Four months later, the TTAB approved and entered the amendment, noting that “Thrifty Oil’s consent to entry of judgment with respect to ‘car washing services’ on the ground of abandonment, to which Bubble Down agreed, is accepted.” However, Bubble Down’s main brief, filed in December 2024, added the unpleaded claim that Thrifty Oil committed fraud in the procurement and maintenance of the Registration because, in the course of discovery, “Registrant admitted that it never used the THRIFTY mark for ‘car washing services’ despite contrary statements made to the PTO in the underlying application and post-registration maintenance filings.” Thrifty Oil noted that Bubble Down added this claim without amending its pleadings to allege fraud. Then, in February 2025, Bubble Down filed a motion to amend its pleadings to assert the new fraud claim.

The TTAB found that Bubble Down’s motion to amend its pleadings was too little, too late. Too little because the discovery responses on which Bubble Down bases its new claim are insufficient to prove fraud. Too late because Bubble Down could have brought the claim much earlier in the course of this proceeding.

Accordingly, the petition for cancellation was denied.

The Case is Cancellation No. 92077451.

Judge: Heasley, D.

Attorneys: Woodrow H. Pollack (Shutts & Bowen LLP) for Bubble Down, LLC. Thomas A. Dirksen (Thomas A. Dirksen, Attorney at Law) for Thrifty Oil Co.

Companies: Bubble Down, LLC; Thrifty Oil Co.

Cases: Trademark USPTO