Vans Inc V Branded Llc

Key Facts

Issues

• The Board must determine whether Respondent abandoned the OLD SCHOOL trademark through nonuse for more than three consecutive years, as nonuse for 3 consecutive years constitutes prima facie evidence of abandonment under 15 U.S.C. § 1127. The petitioner seeks cancellation of Registrations Nos. 1915132 and 1387606 on grounds of abandonment based on nonuse with no intent to resume use.
• The Board must assess whether Respondent discontinued use of the OLD SCHOOL mark with intent not to resume, as abandonment requires both nonuse and intent not to resume under trademark law. Respondent argues it had intent to license or sell the mark, but the Board must evaluate whether this constitutes a bona fide intent to resume use or merely trafficking in trademarks.
• The Board must decide whether to admit Scott Kuhlman's discovery deposition into evidence under Trademark Rule 2.120(k)(2), given exceptional circumstances and the interests of justice. The petitioner argues the deposition is essential to assess Kuhlman's credibility regarding his testimony about OLD SCHOOL mark use, while the Board must determine if the circumstances warrant admission.
• The Board must evaluate whether Respondent's opposition filings and other enforcement activities demonstrate a bona fide intent to resume use of the OLD SCHOOL mark, as enforcement efforts can rebut the presumption of abandonment. The Board examines whether oppositions filed before or after the petition, and the lack of cease-and-desist actions, support Respondent's intent to resume use.

Holdings

Remedies

Legal Principles

• Abandonment is determined by a preponderance of the evidence. The use of a mark must be bona fide use made in the ordinary course of trade, not merely to reserve a right in a mark. Testimony must be clear, consistent, convincing, and uncontradicted, ideally supported by corroborating documentary evidence.
• Trademark Rule 2.120(k)(2) governs admission of third-party witness discovery depositions. Discovery depositions may be admitted only by stipulation or Board order showing exceptional circumstances. Discovery depositions may be used for impeachment purposes during testimony period.
• In trademark abandonment cases, the plaintiff must first establish 3 consecutive years of nonuse. Once established, the burden shifts to the respondent to rebut by showing use or intent to resume. The respondent's intent to sell a trademark separate from ongoing business does not establish intent to resume use.
• Under 15 U.S.C. § 1127, nonuse for 3 consecutive years constitutes prima facie evidence of trademark abandonment. The burden of production shifts to the respondent to produce evidence of use or intent to resume use, while the burden of persuasion remains with the plaintiff to prove abandonment by preponderance of the evidence.

Precedent Name

• Cerveceria India Inc. v. Cerveceria Centroamerica, S.A.
• Imperial Tobacco Ltd. v. Philip Morris Inc.
• Clorox Co. v. Chem. Bank
• Azalea Health Innovations, Inc. v. Rural Health Care, Inc.
• Rivard v. Linville

Cited Statute

• Federal Code
• Trademark Act

Judge Name

• Larkin
• Bergsman
• English

Passage Text

• We find that Petitioner has shown by a preponderance of the evidence that Respondent failed to use its OLD SCHOOL mark after Respondent acquired the mark in the Harold's bankruptcy liquidation auction in 2008 and intended not to resume use. Therefore, Respondent abandoned the mark in the two registrations involved in these proceedings.
• We deny Petitioner's motion to admit into evidence Scott Kuhlman's discovery deposition and sustain Respondent's objection to admission of his discovery deposition in toto. However, we will consider the Kuhlman discovery deposition for the limited purpose of impeachment.
• The proper inquiry is whether [the putative mark owner] intended to resume meaningful commercial use of the mark, not whether it intended to abandon the mark. Trademark rights flow from use, not from intent to protect rights. Were the rule otherwise, a party could hold trademarks that it never intended to use but did not want to allow others to use. The Lanham Act does not permit such warehousing of trademarks.