IP Law Daily, TRADEMARK—TTAB: Declaration of intent to resume use insufficient to overcome abandonment claim, (Oct 9, 2024)

By Jonathan Anderson

Continued use of the marks at other establishments may have been for residual goodwill, and renewal of the marks did not evidence continued use of the marks in commerce.

A trademark registrant failed to produce adequate evidence of intent to resume use of marks subject to an abandonment claim, the Trademark Trial and Appeal Board has held. The Board said a proclamation of intent to resume use by the registrant, who was the respondent in the case, bears little weight. Continued use of the marks at other establishments may have been for residual goodwill, which the Board said does not negate a finding of abandonment based on nonuse. Further, renewal of the marks did not evidence continued use of the marks in commerce. The Board deemed the marks abandoned and said they would be cancelled (Rascal House, Inc. v. Jerry’s Famous Deli, Inc., No. 92075125 (T.T.A.B. Sept. 30, 2024)).

Background. Respondent, Jerry’s Famous Deli, Inc., owns registrations on the principal register for WOLFIE COHEN’S RASCAL HOUSE and RASCAL HOUSE, both in typed drawing form for “restaurant and carry-out restaurant services” in International Class 42. Respondent also owns registration on the principal register for WOLFIE COHEN’S RASCAL HOUSE RESTAURANT and design (RESTAURANT disclaimed) for “restaurant services and take-out food services” also in International Class 42. Petitioner, Rascal House, Inc., sought to cancel each of Respondent’s RASCAL HOUSE registrations under Trademark Act Section 14, 15 U.S.C. § 1064, on the ground of abandonment. Respondent denied the allegations and moved for summary judgment.

The Board denied respondent’s motion for summary judgment but suggested the parties pursue Accelerated Case Resolution (ACR), which the parties agreed to do. The case was bifurcated into two stages.

Applicable standard. Under Section 45 of the Trademark Act, a mark is considered abandoned “[w]hen its use has been discontinued with intent not to resume such use.” Intent may be inferred from the circumstances. Nonuse for three consecutive years is “prima facie evidence of abandonment.” The term “use” is defined as “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. The first ACR stage addressed discontinuation of use.

First stage. On Sept. 30, 2023, the Board found that respondent discontinued use of the marks for purposes of an abandonment claim. The Board concluded that respondent discontinued use of the marks in 2008, when it closed two RASCAL HOUSE restaurants. Respondent continued to display RASCAL HOUSE marks on menus and signage at other restaurants in California and at supermarkets in Florida until the last of these establishments closed in 2020-2021 because of the COVID-19 pandemic. However, the Board said these purported uses did not constitute use in commerce of the marks in association with their identified services within the meaning of Section 45 of the Trademark Act, 15 U.S.C. § 1127. This decision limited respondent’s position on non-abandonment to whether it intended to resume use of its marks, which the Board considered in the second stage.

Second stage. In its most recent ruling, the Board found that respondent discontinued its use of the three marks at issue in 2008 without intent to resume their use. Because the Board found nonuse for more than three consecutive years, petitioner established a prima facie case of abandonment and eliminated its burden to establish the intent element as an initial part of the case, creating a rebuttable presumption that respondent abandoned the mark without intent to resume use.

The Board concluded that respondent failed to produce sufficient evidence of intent to resume use. Respondent submitted a declaration of its intent to resume use of the marks, but a proclamation of intent to resume use bears little weight, the Board said. Respondent reiterated that had continued to use the marks on menus and signage at other establishments, but the Board said these uses might have been intended for residual goodwill, which does not negate a finding of abandonment based on nonuse. Respondent pointed out that it renewed the marks twice since 2008, but the Board said the renewals were predicated on respondent’s specimens, which did not evidence continued use of the marks in commerce. The Board thus found that respondent abandoned the three marks within the meaning of Section 45 of the Trademark Act, 15 U.S.C. § 1127. The Board said the three registrations would be cancelled in due course.

The Case is Cancellation Nos. 92075125, 92075180, and 92075185.

Judge: Heasley, D.

Attorneys: John M. Skeriotis (Thomson & Bennett LLC) for Rascal House, Inc. David K. Friedland (Friedland Vining P.A.) for Jerry’s Famous Deli, Inc.

Companies: Rascal House, Inc.; Jerry’s Famous Deli, Inc.

Cases: Trademark USPTO