IP Law Daily, TRADEMARK—TTAB: ‘LEARN-JOURNEY’ mark for stationery products succumbs to cancellation challenge, (Sep 12, 2024)

By Saurabh Kashyap, B.A., LL.B., LL.M.

Respondent did not respond to discovery, resulting in deemed admissions of non-use and abandonment.

In a precedential decision, the Trademark Trial and Appeal Board (TTAB) granted a summary judgment motion to cancel the registration of the standard character mark LEARN-JOURNEY for stationery products. Due to the respondent's deemed admissions on critical facts, the Board found that the mark had not been used in commerce since its registration and that there was no intent to resume use, leading to its conclusion that the mark had ben abandoned (The Learning Journey International, L.L.C. v. Yongfu, No. 92082654 (T.T.A.B. Sept. 6, 2024)).

Background. The petitioner, The Learning Journey International, L.L.C., is a U.S. company that makes and sells educational toys and products for children. It owns two registrations for THE LEARNING JOURNEY mark- one in typeset format and the other a design mark.

The contested trademark, LEARN-JOURNEY, was owned by Hua Yongfu (an individual) and registered under International Class 16 on the Principal Register. It covered stationery items such as blackboards, paper goods, chalk, office supplies, greeting cards, notebooks, and children's painting sets. The application for this mark was filed on June 14, 2019, and the mark was officially registered on December 31, 2019.

The petitioner filed this cancellation petition citing abandonment under Section 14(3) of the Trademark Act, non-use under Section 1(a), and fraud. Additionally, the petitioner argued that the mark LEARN-JOURNEY was likely to cause confusion with its THE LEARNING JOURNEY marks. The petitioner contended that the respondent had not used the LEARN-JOURNEY mark in commerce since its registration and had no intent to resume such use. It filed the instant summary judgment motion based on the respondent’s failure to respond to its discovery requests, including requests for admission.

Entitlement. The petitioner successfully established its entitlement to a statutory cause of action by referencing its own registered trademarks in the same or similar categories of goods.

Deemed admissions and effects. Respondent’s failure to respond led to deemed admissions on several crucial points, including that the mark had not been used in commerce for at least three consecutive years. The Board, citing Giersch v. Scripps Networks, Inc., 85 USPQ2d 1306 (TTAB 2007), reaffirmed that such deemed admissions are binding and can form the basis for summary judgment. Respondent did not seek to withdraw or amend these admissions, nor did it provide an adequate explanation for its failure to respond, thereby leaving no room for disputing the facts established by the petitioner.

Abandonment. The Board pointed out that under Section 45 of the Trademark Act, a mark is considered abandoned if its use has been discontinued with no intent to resume. A prima facie case for abandonment is established when there is evidence of non-use for three consecutive years. By virtue of the deemed admissions, the respondent conceded that the mark had not been used on any of the goods listed in the registration since its inception, thereby meeting the statutory threshold for abandonment.

Additionally, the respondent admitted that it had no intent to resume using the mark. These admissions and the lack of evidence to the contrary led the Board to conclude that the respondent had abandoned the mark. The Board referred to Lewis Silkin LLP v. Firebrand LLC, 129 USPQ2d 1015 (TTAB 2018), and Double Coin Holdings Ltd. v. Tru Development, 2019 USPQ2d 377409 (TTAB 2019), both of which underscored the principle that continuous non-use coupled with an intent not to resume use establishes abandonment.

Conclusion. Finally, the TTAB found that the petitioner had demonstrated abandonment of the contested mark by the respondent trademark owner and, therefore, ordered the cancellation of the registration. The Board did not address the remaining claims of likelihood of confusion, fraud, or non-use, deeming the abandonment issue dispositive.

The Case is Cancellation No. 92082654.

Judge: Elgin, J.

Attorneys: Mario Vasta (Fennemore Craig, PC) for The Learning Journey International, L.L.C. Maria G. Worley (Start.law, P.C.) for Hua Yongfu.

Companies: The Learning Journey International, L.L.C

Cases: Trademark USPTO