IP Law Daily, TRADEMARK—TTAB: ‘TEEN EARTH’ mark for beauty pageants cancelled, (Apr 17, 2024)

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

The Board concluded that the mark had been abandoned without an intent to resume use.

In a non-precedential decision, the Trademark Trial and Appeal Board (TTAB) granted Carousel Productions, Inc.’s petition to cancel the registration for the trademark TEEN EARTH held by an individual. The Board determined that the mark had been abandoned by the registrant, citing three years of nonuse and an intent not to resume use as the primary reasons for the cancellation (Carousel Productions, Inc. v. Stafford, April 4, 2024, Adlin, M.).

Background. The petitioner, Carousel Productions, is a Philippines-based company that operates the MISS EARTH and MISS PHILIPPINES EARTH beauty pageants, holding trademarks for MISS EARTH since 2001 and MISS EARTH USA since 2018.

The respondent, Michael R. Stafford, was assigned the TEEN EARTH mark for similar pageant services in International Class 41 by Evan Skow and Kristina Tenerowitz, both former associates of the petitioner, who initially registered the contested mark.

Carousel Productions filed the cancellation petition alleging that abandonment of the registered mark by Stafford, prior use of its marks, and that Stafford's mark could cause confusion and falsely suggest a connection with the petitioner’s MISS EARTH brand.

Abandonment. In addressing the claim of abandonment based on nonuse and intent, the Board evaluated the required statutory elements as per Section 45 of the Lanham Act. For a mark to be deemed abandoned, nonuse must be coupled with an intent not to resume such use. The petitioner argued that there was no documented use of the TEEN EARTH mark by Stafford or any associated parties for over three consecutive years. Carousel contended that nonuse and an overt indication of discontinuance fulfill the criteria for abandonment. On the other hand, Stafford maintained a general denial but failed to provide substantial evidence or legal argument that demonstrated any intent to resume use of the mark, effectively not substantively contesting the claim of nonuse.

The Board analyzed the evidence presented by Carousel Productions, which primarily consisted of testimonial declarations stating the absence of any public or commercial use of the TEEN EARTH mark in the requisite timeframe. The petitioner presented a detailed account from its executives and licensees, including searches performed to find any instance of the mark’s use within the U.S., which returned no results. In response, Stafford provided minimal evidence that failed to illustrate any significant use of the mark. The Board referenced ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1042 (TTAB 2012), noting that a three-year period of nonuse creates a prima facie case of abandonment, which shifts the burden to the registrant to demonstrate use or intent to use the mark.

Citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476 (Fed. Cir. 2000), the Board noted that because registrations are presumed valid under the law, a party seeking to cancel a registration on the ground of abandonment bears the burden of proof to establish its case by a preponderance of the evidence. Carousel Productions was required to, and did, establish a prima facie case of abandonment by demonstrating nonuse for a period exceeding three years. The Board outlined that once a prima facie case is established, the burden shifts to the registrant to provide evidence contradicting or otherwise addressing the presumption of abandonment. Stafford’s failure to provide convincing evidence or any substantial refutation allowed the Board to conclude that the presumption of abandonment was not overcome.

Ownership. The issues surrounding the ownership and control of the TEEN EARTH mark were pivotal in the Board’s decision. Carousel Productions highlighted that the mark was registered by Stafford after its alleged abandonment and original use by parties not affiliated with him, indicating a potential flaw in the chain of ownership and control over the mark’s use. Carousel also pointed out inconsistencies in the transfer and claimed use of the mark, suggesting that these did not meet the legal standards for maintaining a registration. The Board cited Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1394 (Fed. Cir. 1990) to emphasize that mere declarations of intent without actual control and use of the mark are insufficient to counter claims of abandonment. Thus, the TTAB concluded that the registration lacked continuity of genuine control and use.

Misaligned testimonies. Finally, the Board analyzed the impact of misaligned testimonies. Stafford's inconsistent statements regarding the use of the TEEN EARTH mark, particularly around the timeline of events and activities alleged to constitute use, were scrutinized. Carousel Productions effectively used these inconsistencies to challenge the credibility of the registrant's claims. The Board, referencing Exec. Coach Builders, Inc. v. SPV Coach Co., Inc., 123 USPQ2d 1175, 1184 (TTAB 2017), noted that inconsistent and uncorroborated testimonies weaken the defense against abandonment claims. The absence of reliable, consistent evidence from Stafford led the Board to discount his testimony significantly, concluding that his claims did not adequately address the abandonment issues raised by Carousel.

The Board, therefore, granted the cancellation on the grounds of abandonment and did not reach the petitioner's claims of likelihood of confusion.

The Case is Cancellation No. 92076712.

Attorneys: Paul A. McLean (Greenberg Traurig, LLP) for Carousel Productions, Inc. Rexford Brabson (T-Rex Law, PC) for Michael R. Stafford.

Companies: Carousel Productions, Inc.

Cases: Trademark USPTO