IP Law Daily, TRADEMARK—TTAB: Unilever founders in bid to cancel NEW YORK FAIR AND LOVELY mark, (Feb 15, 2017)

By Mark Engstrom, J.D.

Unilever failed to show that Technopharma’s registration for the trademark NEW YORK FAIR AND LOVELY should be cancelled, in whole or in part, on the ground that Technopharma had abandoned the mark for some or all of the identified goods (skin soaps, skin cleansers, and cosmetics in International Class 3 and medicated skin creams and lotions in International Class 5), the Trademark Trial and Appeal Board has ruled. Technopharma’s documented use of the mark was scant, but Unilever’s allegations of abandonment were insufficiently developed at trial (Unilever PLC v. Technopharma Limited, January 20, 2017, Masiello, A.).

Unilever argued that the Board should limit Technopharma’s trademark registration—by deleting some or all of the identified goods—because continued use of the mark was not established under Section 8 of the Trademark Act (15 U.S.C. §1058), which required mark holders to file affidavits of continued use. Because the purported inadequacy of Technopharma’s Section 8 affidavit was not a proper ground for cancellation, according to the Board, the only plausible construction of Unilever’s assertion, in the context of a viable ground for cancellation, was that Technopharma had ceased to continuously use its mark, and thus had abandoned it.

Unilever based its abandonment allegations on the paucity of the documentation that supported the sales of relevant Technopharma products. Unilever strongly suggested that Technopharma had not engaged in "good faith commercial operations" under the mark, but the Board concluded that Unilever failed to prove abandonment by a preponderance of the evidence.

In the Board’s view, the actual cessation of Techopharma’s use of the NEW YORK FAIR AND LOVELY mark was an issue that was insufficiently developed at trial. The Board acknowledged that the documentation that supported Technopharma’s relevant sales was "indeed scant," but noted that the burden of demonstrating abandonment was placed on petitioners in cancellation actions.

In this case, the record evidence was consistent with "modest ongoing commercial activity" under the mark, according to the Board. Even if use of the mark on some or all of the goods was not continuous, the evidence of record did not support an intention to forego the resumption of use. In seeking to show that Technopharma had ceased to use its mark, Unilever did not offer any probative evidence from a source other than Technopharma. It did not, for example, proffer evidence from third parties that possessed knowledge of the market for the relevant goods, from retailers or distributors in the field, or from commercial investigators.

Ultimately, the Board concluded that Unilever failed to show that Technopharma had: (1) ceased to use the NEW YORK FAIR AND LOVELY mark and (2) intended to "not resume" such use. Moreover, the intention to forego resumption of use applied to every category of goods that Technopharma had identified in its trademark registration. For that reason, the Board refused to delete any of the identified goods from the registration.

The case is Cancellation No. 92056654.

Attorneys: Jonathan D. Reichman and William M. Merone (Kenyon & Kenyon LLP) for Unilever PLC. David M. Rogero (David M. Rogero, P.A.) for Technopharma Limited.

Companies: Unilever PLC; Technopharma Limited

Cases: Trademark USPTO