IP Law Daily, TRADEMARK—TTAB: Limousine company abandoned its ARMBRUSTER/STAGEWAY mark through nonuse, (Jun 26, 2017)

By Peter Reap, J.D., LL.M.

Executive Coach Builders (the opposer) abandoned its ARMBRUSTER/STAGEWAY trademark for customized limousines by 1996 and did not resume use of the mark before trademark applicant SPV Coach Company’s constructive priority date of December 4, 2012, the Trademark Trial and Appeal Board has decided in a precedential opinion. Therefore, the opposer was unable to prevail on its opposition to the applicant’s application to register the mark ARMBRUSTER STAGEWAY, which, differs from the opposer’s mark by the use of a space, rather than a forward slash, between the two words, and the opposition was dismissed. The testimony as to the opposer’s use of its mark on cars provided by the opposer’s president David Backare was indefinite and internally inconsistent. Viewed as a whole, the evidence showed that the opposer did not use its mark on vehicles in the ordinary course of trade after 1993 and its use of the mark other than on vehicles did not constitute bona fide use of that mark by the opposer in the ordinary course of trade for either goods or services (Executive Coach Builders, Inc. v. SPV Coach Company, Inc., June 21, 2017, Hightower, S.).

The applicant sought to register the mark ARMBRUSTER STAGEWAY (in standard characters) on the Principal Register for "vehicles, namely, customized limousines" in International Class 12. The opposer opposed registration under Section 2(d) of the Trademark Act, asserting priority and a likelihood of confusion with its pleaded common-law mark ARMBRUSTER/STAGEWAY. The applicant, in turn, asserted as an affirmative defense that the opposer "has abandoned its ARMBRUSTER/STAGEWAY mark and is without valid rights upon which it may state a claim upon which relief can be granted." The parties are both secondary manufacturers of the types of specialty vehicles at issue in this case, stretch limousines and hearses, for the VIP and funeral markets, the Board noted.

The opposer’s president, David Bakare, testified that the opposer’s mark was presented on the exterior of its finished cars with a badge, emblem, or sticker, for example, on the rear quarter panel or back fender. However, Bakare’s testimony was indefinite and internally inconsistent; unsupported by documentary evidence; and contradicted by the documentary evidence that was of record, as well as by the clear and consistent testimony of eight other trial witnesses, according to the Board. Overall, Bakare’s testimony was consistent with a subjective desire to reserve a right in the ARMBRUSTER/STAGEWAY mark, the Board noted. In contrast, eight other trial witnesses gave clear, consistent testimony contradicting Mr. Bakare’s recollection of use of the ARMBRUSTER/STAGEWAY mark on cars by the opposer. Viewed as a whole, a preponderance of the evidence supported the conclusion that the ARMBRUSTER/STAGEWAY mark was not used on vehicles in the ordinary course of trade after the opposer purchased the company in 1993.

In addition to use on cars themselves, the opposer asserted that it used the ARMBRUSTER/STAGEWAY mark in other ways in connection with custom vehicle manufacturing and sales services. However, there was no evidence that the opposer used the ARMBRUSTER/STAGEWAY mark in advertising any goods or services since 1996 except for an appearance on one trade show banner between the late 2000s and 2011. The opposer did not argue that it took orders for ARMBRUSTER/STAGEWAY cars in association with that banner.

Further, considering the opposer’s use of the domain names <www.armbrusterstageway.com> and <armbrusterstagewaylimousines.com>, these names per se merely indicate Internet addresses where the opposer’s websites offering vehicles under the EXECUTIVE COACH mark could be found. Here, the domain names did not separately identify the opposer’s goods or retail sales services. Finally, the appearance of the ARMBRUSTER/STAGEWAY mark on interior signs, plaques, and memorabilia displayed inside Opposer’s plant, all apparently dating to 1997 or earlier, merely reflected the historical use of that mark on cars. Viewed individually and together, what the opposer identified as its trademark and service mark use of ARMBRUSTER/STAGEWAY other than on vehicles did not constitute bona fide use of that mark by the opposer in the ordinary course of trade for either goods or services.

Based on the evidence, therefore, the applicant established a prima facie case that the opposer abandoned the ARMBRUSTER/STAGEWAY mark through nonuse by at least 1996, that is, through nonuse for three consecutive years after the opposer apparently purchased the mark. There was a rebuttable presumption that the opposer abandoned the mark without intent to resume use, the Board determined. Thus, the burden of production (i.e., going forward) shifted to the opposer to produce evidence that it intended to resume use.

Here, there was no evidence that the opposer developed an intent to resume commercial use of the ARMBRUSTER/STAGEWAY mark in the reasonably foreseeable future within the three-year period of nonuse from 1993 to 1996, the Board held. This included the opposer’s ongoing display of interior signs and memorabilia, which neither constituted a plan to resume use nor demonstrated activities that would support a showing of an intent to resume use within the reasonably foreseeable future. Therefore, the opposer abandoned the ARMBRUSTER/STAGEWAY mark by 1996 and did not resume use of the mark before the applicant’s constructive priority date of December 4, 2012. The Board did not need to reach the issue of likelihood of confusion because without proof of its priority, the opposer could not prevail.

The case is Opposition No. 91212312.

Attorneys: Richard L. Schnake (Neale & Newman, LLP) for Executive Coach Builders, Inc. Rebeccah Gan (Wenderoth, Lind & Ponack, LLP) for SPV Coach Co., Inc.

Companies: SPV Coach Co., Inc.; Executive Coach Builders, Inc.

Cases: Trademark USPTO