“[T]he … burden of showing acquired distinctiveness increases with the level of descriptiveness; a more descriptive term requires more evidence of secondary meaning” (citing Steelbuilding.com, 75 USPQ2d at 1424)
How later courts described this case
- “[T]he … burden of showing acquired distinctiveness increases with the level of descriptiveness; a more descriptive term requires more evidence of secondary meaning” (citing Steelbuilding.com, 75 USPQ2d at 1424)
- “where an applicant seeks registration on the basis of Section 2(f), the mark’s descriptiveness is a nonissue; an applicant’s reliance on Section 2(f) during prosecution presumes that the mark is descriptive”
- Board was within its discretion not to accept applicant’s allegation of five years’ use given the highly descriptive nature of the mark
- “[T]he judicial doctrine now generally known as claim preclusion, [was] earlier known as res judicata and still referred to by that name.”
Written by the judges who cited it.
The opinion
This Opinion is a
Precedent of the TTAB
Mailed: August 1, 2022
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Flame & Wax, Inc.
v.
Laguna Candles, LLC
________
Cancellation No. 92072343
_______
Eric Goodman of Goodman Mooney LLP
for Flame & Wax, Inc.
Amy E. Burke, Esq.
For Laguna Candles, LLC.
_____
Before Zervas, Shaw and Lynch,
Administrative Trademark Judges.
Opinion by Zervas, Administrative Trademark Judge:
On September 23, 2014, Registration No. 4609702 (the “’702 registration”) for the
standard character mark LAGUNA CANDLES issued on the Principal Register to
Laguna Candles, LLC (“Respondent”) for “aromatherapy fragrance candles; candles;
scented candles” in International Class 4. The ’702 registration, which matured from
an application filed on February 25, 2014 under Section 1(a) of the Trademark Act,
Cancellation No. 92072343
15 U.S.C. § 1051(a), claims acquired distinctiveness under Section 2(f) of the
Trademark Act, 15 U.S.C. § 1052(f). The registration claims first use and first use in
commerce of the mark at least as early as October 17, 2003 and contains a disclaimer
of the term “CANDLES.”
Flame & Wax, Inc. (“Petitioner”) filed a Petition to Cancel1 the ’702 registration,
alleging, inter alia, that:
● Petitioner is a well-known manufacturer of luxury
candles and other home fragrance products (¶ 1);
● The parties are competitors in the same field or industry
(¶ 10);
● In an October 2, 2013, decision, the Board sustained
Petitioner’s opposition to registration of Application Serial
No. 85137006 (“the Prior Application”) for the mark
“Laguna Candles” for “Candles and candle fragrances” in
Opposition No. 91200223 (“the Prior Opposition”) on the
grounds of mere descriptiveness, geographic
descriptiveness and genericness (¶¶ 12, 20, 21); and
2
● In the Prior Opposition, the Board found that the
primary significance of LAGUNA CANDLES is “Laguna,”
a term commonly used to refer to Laguna Beach,
California. (¶ 35).
1 1 TTABVUE. Citations in this opinion refer to TTABVUE, the Board’s online docketing
system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the
number preceding TTABVUE corresponds to the docket entry number, and any numbers
following TTABVUE refer to the page(s) of the docket entry where the cited materials appear.
2 The Board’s opinion in the Prior Opposition states that the Prior Opposition is based on a
claim that the mark is primarily geographically descriptive under Section 2(e)(2) of the
Trademark Act of 1946, 15 U.S.C. § 1052(e)(2), but makes no mention of claims of mere
descriptiveness or genericness. 19 TTABVUE 279.
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Cancellation No. 92072343
The Petition to Cancel raises the following claims:3
(i) “[t]he Board’s decision in the [Prior] Opposition Proceeding that the term
‘Laguna Candles’ cannot be registered because it is primarily
geographically descriptive is res judicata” (¶ 33);4
(ii) LAGUNA CANDLES “consists of matter which, when applied to
[Respondent’s] goods, is merely descriptive, primarily geographically
descriptive, and/or generic [“when viewed as a whole, the Subject Mark is
simply a sum of its generic parts, ‘Laguna’ and ‘candles,’” (¶ 38)] in violation
of 15 U.S.C. § 1052(e)” (¶ 34); and
(iii) fraud due to Respondent’s representation that it was entitled to seek and
obtain registration of the LAGUNA CANDLES mark when it filed its
application knowing that the Board already ruled that the LAGUNA
CANDLES mark was not subject to registration because it was primarily
geographically descriptive. (¶¶ 39-41).5
3 Petitioner submitted exhibits with its petition to cancel. With the exception of a registration
or registrations owned by the plaintiff on which it relies for its claims (an exception not
applicable here), exhibits to pleadings are not evidence and will not be considered unless they
are properly introduced in evidence. Trademark Rule 2.122(c), 37 C.F.R. § 2.122(c). We have
not considered the exhibits submitted with the Petition to Cancel.
4 The ESTTA generated filing form for the Petition to Cancel states, “[c]ontinued registration
[is] barred by claim or issue preclusion.” 1 TTABVUE 1. “[T]he ESTTA generated filing form
... is considered part of the plaintiff’s initial pleading.” Schott AG v. Scott, 88 USPQ2d 1862,
1863 n.3 (TTAB 2008); see also PPG Indus. Inc. v. Guardian Indus. Corp., 73 USPQ2d 1926,
1928 (TTAB 2005) (“Since ESTTA’s inception, the Board has viewed the ESTTA filing form
and any attachments thereto as comprising a single document or paper being filed with the
Board.”).
5 1 TTABVUE 7-8.
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Cancellation No. 92072343
In addition, Petitioner’s ESTTA cover sheet accompanying the Petition to Cancel
identifies as a claim “[t]he mark is not inherently distinctive and has not acquired
distinctiveness.”6
At briefing, Petitioner discussed only its claims of res judicata, geographic
descriptiveness and lack of acquired distinctiveness, and fraud. Its other claims are
therefore deemed waived. See Alcatraz Media Inc. v. Chesapeake Marine Tours Inc.,
107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d mem., 565 F. App’x 900 (Fed. Cir.
2014); Swatch AG (Swatch SA) (Swatch Ltd.) v. M.Z. Berger & Co., 108 USPQ2d 1463,
1465 n.3 (TTAB 2013) (opposer’s pleaded claims not argued in its brief deemed
waived), aff’d, 787 F.3d 1368, 114 USPQ2d 1892 (Fed. Cir. 2015).
Respondent filed an answer to the Petition to Cancel in which it denied
Petitioner’s salient allegations and raised laches, estoppel, acquiescence and unclean
hands as affirmative defenses.7 Respondent also alleged that its mark has acquired
secondary meaning “through extensive use, promotion, and recognition in the
marketplace.” (Affirmative Defenses, ¶ 1).8 Because Respondent did not pursue its
affirmative defenses of estoppel, acquiescence and unclean hands in its brief, it
waived these affirmative defenses. See Harry Winston, Inc. v. Bruce Winston Gem
Corp., 111 USPQ2d 1419, 1422 (TTAB 2014) (pleaded affirmative defenses not
pursued in the brief considered waived); Research in Motion Ltd. v. Defining Presence
6 1 TTABVUE 1. Lack of acquired distinctiveness under Section 2(f) of the Trademark Act,
15 U.S.C. § 1052(f), is a valid claim.
7 12 TTABVUE 7.
8 Id.
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Cancellation No. 92072343
Mktg. Grp. Inc., 102 USPQ2d 1187, 1189-90 (TTAB 2012) (affirmative defenses not
pursued at trial considered waived).
The parties have fully briefed the cancellation.
I. The Record
The record in this case consists of the pleadings and the file of the involved
registration. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1). In addition, the
record contains:
A. Evidence submitted by Petitioner:
1. Petitioner’s Notice of Reliance (19 TTABVUE)
submitting:
a. Respondent’s articles of organization (19 TTABVUE
16);
b. Various papers pertaining to Prior Opposition No.
91200223 (19 TTABVUE 18-23, 25-28, 30-209, 226-30,
232-49, 252-61, 264-76, 278-300, and 306-08), including
the declaration of Troy Arnsten, Petitioner’s President
and co-founder, dated April 5, 2013;
c. Respondent’s Responses to Petitioner’s Requests for
Admission in the cancellation proceeding (19
TTABVUE 310-23);
d. Respondent’s Responses to Petitioner’s Requests for
Production in the cancellation proceeding (19
TTABVUE 325-59);
e. Respondent’s documents produced in response to
Petitioner’s Requests for Production of Documents in
the cancellation proceeding (Exh. 16, 19 TTABVUE
361-577);9 and
9 Petitioner’s Notice of Reliance states, “Petitioner submits these documents into evidence
pursuant to Trademark Rules 2.120(k) [37 C.F.R. § 2.120(k)] and TBMP section 704.11 to
prove that Registrant did not produce any evidence in this proceeding that was different than
the evidence it submitted in the Opposition Proceeding and to establish that the Subject Mark
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Cancellation No. 92072343
f. printouts of Petitioner’s webpages (19 TTABVUE 579,
581, 583, 585, 587, 589, 591-94, 596-98, 600 and 602).10
2. Petitioner’s rebuttal Notice of Reliance submitting the
declaration of Eric Goodman, Petitioner’s attorney and
exhibits (27 TTABVUE 4-5, 7-12).11
B. Evidence submitted by Respondent:
1. The Declaration12 of Clarence Hendricks, Respondent’s
Manager and Marketing Director (21 TTABVUE 2-4), and
its Exhibit A (redacted tax forms) (21 TTABVUE 6-17),
Exhibit B (a redacted profit and loss statement for 2020)
(21 TTABVUE 19-21), and Exhibit C (webpages from
several publications) (21 TTABVUE 23-85);
has not acquired secondary meaning.” (19 TTABVUE 10, bracketed material in original). A
party may not make documents produced under Fed. R. Civ. P. 34 by its opponent “of record
by notice of reliance alone, except to the extent that they are admissible by notice of reliance
under 37 C.F.R. § 2.122(e) (as official records; or as printed publications, such as books and
periodicals, available to the general public in libraries or of general circulation among
members of the public or that segment of the public which is relevant under an issue in the
proceeding; or Internet documents); or unless the documents have been authenticated by an
admission or stipulation from the producing party.” TRADEMARK TRIAL AND APPEAL BOARD
MANUAL OF PROCEDURE (“TBMP”) § 704.11 (2022). See discussion, supra, regarding
Petitioner’s objection to Exhibit 16.
10 The webpages are admissible for what they show on their face, see Trademark Rule
2.122(e)(2), 37 C.F.R. § 2.122(e)(2). Petitioner may not rely on them for the truth of any
matter asserted, unless supported by testimony or other evidence. Fed. R. Evid. 801(c);
WeaponX Perf. Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1038 (TTAB
2018); Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1039-40 (TTAB 2010); TBMP
§ 704.08(b) (“The probative value of Internet documents is limited. They can be used to
demonstrate what the documents show on their face. However, documents obtained through
the Internet may not be used to demonstrate the truth of what has been printed.”).
11 The better practice would have been for Petitioner to file and serve separately a copy of the
testimony declaration, instead of attaching it as an exhibit to its Notice of Reliance.
Petitioner’s failure to do so is of no consequence. See WeaponX Perf. Prods., 126 USPQ2d at
1037.
12 The declaration is titled, “Affidavit of Clarence Hendricks,” but does not bear the stamp or
signature of a notary public. It bears the typical attestation clause regarding the penalty of
perjury found in declarations. We refer to it as a declaration.
-6-
Cancellation No. 92072343
2. Unredacted copies of Exhibits A (23 TTABVUE 3-14) and
Exhibit B (23 TTABVUE 16-18) to Mr. Hendricks’
declaration, filed under seal;13 and
3. Respondent’s Notice of Reliance on (a) the same
webpages submitted as Exhibit C to Mr. Hendricks’
declaration (23 TTABVUE 2-3, 8-80);14 and (b) Petitioner’s
Responses to Respondent’s First Set of Interrogatories (23
TTABVUE 82-92).
II. Evidentiary Objections
1. Respondent’s Objection to the Arnsten Declaration.
Trademark Rule 2.122(g), 37 C.F.R. § 2.122(g), sets forth the types of evidence
admissible by notice of reliance – it includes official records (addressed in Trademark
Rule 2.122(e), 37 C.F.R. § 2.122(e)) but not testimony from other proceedings
(addressed in Trademark Rule 2.122(f), 37 C.F.R. § 2.122(f)). “‘[O]fficial records’ …
are records prepared by a public officer which are self-authenticating in nature (and
hence require no extrinsic evidence of authenticity as a condition precedent to
admissibility), such as certified copies of public records.” The Conde Nast Publ’ns Inc.
v. Vogue Travel, Inc., 205 USPQ 579, 580 n.5 (TTAB 1979).
Petitioner, referencing TBMP § 704.07 titled “Official Records,” submitted Mr.
Arnsten’s April 5, 2013 declaration as an official record from the Prior Opposition
13 Because the exhibits were filed under seal, there was no need for Respondent to file a
separate motion (22 TTABVUE) to maintain the exhibits under seal. See TBMP § 703.01(p).
Respondent’s “Motion to File Under Seal and Keep Confidential” (filed July 17, 2021) is moot
and the documents have been maintained by the Board as confidential in accordance with
the Board’s standard protective order.
14 There was no need to for Respondent to resubmit the webpages. The Board prefers that
parties not re-submit evidence. See ITC Entm’t. Grp. Ltd. v. Nintendo of Am. Inc., 45 USPQ2d
2021, 2022-23 (TTAB 1998) (submission of duplicative papers is a waste of time and
resources, and is a burden upon the Board to sort through to determine which are
unnecessary duplicates).
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Cancellation No. 92072343
under Rule 2.122(e).15 The submission in the cancellation included an ESTTA cover
sheet from the opposition, which the USPTO creates using information submitted by
the filing party. See TBMP § 309.02(a) (“[T]he ESTTA form (docket) ‘cover sheet’ [is]
created using ESTTA ….”).
Respondent objects to the admissibility of Mr. Arnsten’s declaration, as
improperly introduced in the present proceeding with Petitioner’s Notice of
Reliance.16 Respondent offers two reasons why it believes the declaration is
inadmissible. First, Respondent states that that the declaration is not the type of
evidence admissible under a notice of reliance under Rule 2.122(g); that “testimony
from a prior proceeding is a separate category of evidence addressed in
37 C.F.R. § 2.122(f)”;17 and that Respondent should have filed a motion to admit the
testimony but did not do so.18 Second, Respondent states that the declaration was
untimely under Trademark Rule 2.121(a), 37 C.F.R. § 2.121(a), because Mr. Arnsten
executed it on April 5, 2013, which was not during Petitioner’s testimony period in
the cancellation.19
15 19 TTABVUE 226-30. Mr. Arnsten states inter alia that he has “reviewed Laguna Candles’
historical sales and they do not have any significant market share in the candle or home
fragrance industry. They are essentially unknown in the marketplace.” Arnsten Decl. ¶ 11,
19 TTABVUE 227.
16 31 TTABVUE 17-18.
The prior opposition decision, which Petitioner submitted in the cancellation identifies Mr.
Arnsten’s testimony as rebuttal trial testimony. (19 TTABVUE 280).
17Respondent has not objected to three opposition briefs along with their respective
opposition ESTTA cover sheets, and therefore apparently concedes that filings from the Prior
Opposition can qualify as official records.
18 31 TTABVUE 17-18.
19 Id. at 18.
-8-
Cancellation No. 92072343
Petitioner contends that the declaration is admissible by a notice of reliance
because it is part of the official opposition record and thus is admissible as an official
record of the USPTO; that Respondent’s objection is a procedural objection rather
than a substantive objection and should have been raised promptly so that it could
be cured; and that by waiting until the briefing period, Respondent waived its
objection.20
Petitioner seeks to rely on the declaration as testimony. Rule 2.122(f) addresses
the admission of testimony from a prior proceeding. It provides in relevant part that
by order of the Board, on motion, testimony taken in another proceeding between the
same parties may be used in a proceeding, so far as relevant and material, subject,
however, to the right of any adverse party to recall or demand the recall for
examination or cross-examination of the witness whose prior testimony has been
offered and to rebut the testimony. “The purpose of …[R]ule [2.122(f)] is to offer a
party a means for introducing testimony from a prior proceeding without having to
call a witness to authenticate the testimony, thereby allowing a party a relatively
quick and simple means by which to introduce testimony from another proceeding
into evidence.”21 “[T]he Board has construed the term ‘testimony,’ as used in
Trademark Rule 2.122(f), as meaning only trial testimony, or a discovery deposition
which was used, by agreement of the parties, as trial testimony in the other
20 Petitioner’s reply p. 21, 33 TTABVUE 23.
21 TBMP § 704.13.
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Cancellation No. 92072343
proceeding.” Threshold.TV, Inc. v. Metronome Enters., Inc., 96 USPQ2d 1031, 1035
n.8 (TTAB 2010).
As noted, Rule 2.122(f) conditions admission of testimony from another proceeding
on the right of any adverse party to recall or demand the recall for examination or
cross-examination of the witness whose prior testimony has been offered and to rebut
the testimony. By filing the Arnsten declaration as an official record, Petitioner
sidestepped Rule 2.122(f) and bypassed the Board’s oversight of Respondent’s right
under that rule to recall Mr. Arnsten for examination or cross-examination.
Petitioner’s approach improperly foreclosed Respondent’s opportunity to cross-
examine Mr. Arnsten regarding his statements. Because Petitioner did not comply
with the requirements of Rule 2.122(f), Respondent’s objection to the Arnsten
declaration is a valid one, even if the declaration is an official record under Rule
2.121(e).
Turning next to whether Respondent waived its valid Rule 2.122(f) objection to
Mr. Arnsten’s declaration by not raising the objection promptly after Petitioner
submitted the declaration in the present proceeding, we note:
“As a general rule, [procedural] objections that are curable
must be seasonably raised, or they will be deemed waived.”
Nahshin v. Prod. Source Int’l, LLC, 107 USPQ2d 1257,
1259 (TTAB 2013)[, aff’d, 112 F. Supp. 2d 383 (E.D. Va.
2015)]. See also TRADEMARK TRIAL AND APPEAL BOARD
MANUAL OF PROCEDURE (TBMP) § 707.03(a) (2019)
(“Objections to trial testimony are not waived for failure to
make them during or before the taking of the deposition,
provided that the ground for objection is not one that might
have been obviated or removed if presented at that time.”).
“[O]bjections to ... testimony, on substantive grounds, such
as that the proffered evidence constitutes hearsay or
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Cancellation No. 92072343
improper rebuttal, or is incompetent, irrelevant, or
immaterial, generally are not waived for failure to raise
them promptly, unless the ground for objection is one
which could have been cured if raised promptly.” TBMP
§ 707.04 ….
Moke Am. LLC v. Moke USA, LLC, 2020 USPQ2d 10400, *4 (TTAB 2020), civil action
filed, No. 3:20-cv-00400-DJN-EWH (E.D. Va. June 5, 2020).
We find that Respondent’s Rule 2.122(f) objection is a procedural objection that
could have been cured through the filing of a motion with the Board under Rule
2.122(f), and should have been raised promptly after Petitioner filed Mr. Arnsten’s
declaration. The objection pertains to Petitioner’s failure to follow Board rules
regarding the submission of evidence and does not concern the substance of Mr.
Arnsten’s testimony. Respondent therefore has waived its otherwise valid Rule
2.122(f) objection, and we have considered the Arnsten declaration.
We now turn to Respondent’s second objection, that Mr. Arnsten’s April 5, 2013
declaration was executed outside of Petitioner’s testimony period in the cancellation,
and hence is untimely. Trademark Rule 2.121(a) provides that “[n]o testimony shall
be taken or evidence presented except during the times assigned, unless by
stipulation of the parties approved by the Board, or upon motion granted by the
Board, or by order of the Board.” Rule 2.121(a) addresses testimony in the present
proceeding, not testimony from a prior proceeding. Because we treat the Arnsten
declaration as testimony from a prior proceeding governed by Rule 2.122(f), 22 Rule
22 Mr. Arnsten’s declaration bears the caption “Opposition No. 91200223.” 19 TTABVUE 226.
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Cancellation No. 92072343
2.121(a) is inapplicable, as it concerns testimony in the ordinary course of current
proceedings.
2. Respondent’s Objections to Exhibit 16 to Petitioner’s Notice of
Reliance.
Exhibit 16 consists of product sheets and photographs of Respondent’s LAGUNA
CANDLES products. Petitioner’s Notice of Reliance states:
Petitioner submits as Exhibit 16 the complete set of
documents produced by [Respondent] in response to
Petitioner’s First Request for Production of Documents.
Petitioner submits these documents into evidence
pursuant to Trademark Rules 2.120(k) … and TBMP
section 704.11 to prove that [Respondent] did not produce
any evidence in this proceeding that was different than the
evidence it submitted in the Opposition Proceeding and to
establish that the Subject Mark has not acquired
secondary meaning.23
Respondent objects to Exhibit 16, stating, “a party cannot introduce documents
obtained through discovery by notice of reliance alone,” citing Trademark Rule
2.120(k), 37 C.F.R. § 2.120(k), and TBMP § 704.11.
Trademark Rule § 2.120(k)(3)(ii), 37 C.F.R. § 2.120(k)(3)(ii), provides that “[a]
party that has obtained documents from another party through disclosure or under
Rule 34 of the Federal Rules of Civil Procedure may not make the documents of record
by notice of reliance alone, except to the extent that they are admissible by notice of
reliance under the provisions of § 2.122(e) [regarding printed publications, official
records and internet materials], or the party has obtained an admission or stipulation
23 19 TTABVUE 10.
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Cancellation No. 92072343
from the producing party that authenticates the documents.” See also TBMP
§ 704.11.
Respondent’s objection, however, is a procedural objection. As mentioned above,
“[a]s a general rule, [procedural] objections that are curable must be seasonably
raised, or they will be deemed waived.” Nahshin, 107 USPQ2d at 1259; see also TBMP
§ 707.04. Because Respondent did not assert its objection promptly after Petitioner
submitted Respondent’s produced documents, but asserted the objection for the first
time with its brief, Respondent waived its objection to Exhibit 16.
If Respondent had not waived its objection, Exhibit 16 nonetheless would be
admissible because Mr. Goodman refers to Exhibit 16 in his declaration, thereby
making Exhibit 16 part of his declaration. He states, “[s]ubmitted as Exhibit 16 to
Petitioner’s initial Notice of Reliance are copies of all documents that my firm was
able to download from the link [Respondent’s] counsel sent me on November 21,
2020.”24 Mr. Goodman’s statement identifies and authenticates the documents in
Exhibit 16 as those produced by Respondent’s counsel. Thus, even if Respondent had
not waived its objection, Exhibit 16 was properly introduced through Mr. Goodman’s
declaration.
For the foregoing reasons, Respondent’s objection to Exhibit 16 is overruled.
3. Petitioner’s Objections to the Hendricks Declaration.
In its “Objections to Evidence” filed along with its brief, Petitioner objects to
Exhibit A to the Clarence Hendricks Declaration, which consists of Sharie Hendricks’
24 Goodman Rebuttal Decl. ¶ 9, 27 TTABVUE 5.
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Cancellation No. 92072343
Schedule C “Profit or Loss from Business” tax form for 2011 – 2013 and Respondent’s
tax returns for 2014 – 2019.25 According to Petitioner, it requested this material in
discovery and it was not produced by Respondent.26 Petitioner seeks application of
the estoppel sanction.27
In its brief, Petitioner broadens its objection, stating that “most of the financial
records submitted by [Respondent] with … the Hendricks Affidavit are inadmissible
and should not be considered by the Board because they were not produced in
discovery.”28 Petitioner does not specify whether the term “financial records” includes
Exhibit B, consisting of Respondent’s profit and loss statement for 2020. We give
Petitioner the benefit of any doubt and interpret its objection as being directed to both
Exhibits A and B.
25 Sharie Hendricks operated Respondent’s business as a sole proprietorship and is the
“organizer” of Respondent, a member-managed California limited liability company.
Hendricks Decl., ¶ 3, 21 TTABVUE 2.
26 Petitioner cites to Petitioner’s Req. for Production No. 6 and 7, which respectively seek
(i) ”[c]opies of YOUR financial statements (including, without limitation, YOUR income and
expense statements, profit and loss statements, sales journals, accounts receivable reports,
and balance sheets ) from the date YOU were formed to the present”; and (ii) “[c]opies of the
financial statements (including, without limitation, your income and expense statements,
profit and loss statements, sales journals, accounts receivable reports, and balance sheets)
for the PRIOR APPLICANT from October 2003 to the present.” 19 TTABVUE 330-32.
27 Under the estoppel sanction, a party that fails to provide information during discovery
may, upon motion or objection by its adversary, be precluded from using that information or
witness at trial, “unless the failure was substantially justified or is harmless.”
Fed. R. Civ. P. 37(c)(1). See, e.g., Panda Travel, Inc. v. Resort Option Enters., Inc., 94 USPQ2d
1789, 1792-93 (TTAB 2009) (documents not produced until after the start of trial stricken);
see also TBMP § 527.01(e) (“Estoppel Sanction”) and cases cited therein.
28 30 TTABVUE 20. Petitioner cites to Petitioner’s Req. for Production No. 6 and 7
(19 TTABVUE 330-32) and to Exh. 16 to Petitioner’s Notice of Reliance (19 TTABVUE 361-
577) which Petitioner represents is the entirety of Respondent’s document production.
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Cancellation No. 92072343
We need not rule, however, on Petitioner’s objections to Exhibits A and B,
including its relevancy objection to both exhibits, because we need not rely on the
limited information contained within the exhibits to decide this case. See Waltco
Truck Equip. Co., Inc. v. Maxon Indus., Inc., 218 USPQ 450, 453 n.2 (TTAB 1983)
(“While we need not rule on the propriety of either petitioner’s or respondent’s
objections to certain evidence and testimony, the testimony and evidence made of
record without objection by either party is sufficient to persuade us to grant the
petition for cancellation.”). Mr. Hendricks provided adequate financial information
regarding Respondent’s business in his declaration, to which Petitioner has not
objected.29
Petitioner also raised a lack of foundation objection to various statements in the
Hendricks declaration. Such objections are untimely because they are substantive in
nature and were raised for the first time in Petitioner’s brief, not promptly after its
submission. Int’l Dairy Foods Ass’n v. Interprofession du Gruyère, & Syndicat
Interprofessionnel du Gruyère, 2020 USPQ2d 10892, at *3-7 (TTAB 2020) (when
raised for the first time with main brief, objection on the basis of lack of foundation
was untimely and waived), aff’d, ___ F. Supp. 3d ___, 2021 WL 6286234 (E.D. Va.
Dec. 15, 2021), appeal docketed, No. 22-1041 (4th Cir. Jan. 11, 2022). Petitioner thus
has waived its objection.
29 Mr. Hendricks identified the number of candles Respondent sold and Ms. Hendricks’ and
Respondent’s gross receipts for various time periods. Hendricks Decl. ¶¶ 6-8, 21 TTABVUE
3-4.
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Cancellation No. 92072343
With regard to Petitioner’s remaining evidentiary objections to the Hendricks
declaration, “[t]o the extent an objection has not been specifically addressed above,
we have considered the evidence, keeping in mind the objections, and have accorded
the testimony and evidence whatever probative value they merit.” Panda Travel, 94
USPQ2d at 1793; see also Grote Indus., Inc. v. Truck-Lite Co., LLC, 126 USPQ2d
1197, 1200 (TTAB 2018) judgment rev’d and vacated by consent decree, No. 1:18-cv-
00599 (W.D.N.Y. June 8, 2022) (“We also remind the parties that our proceedings are
tried before judges not likely to be easily confused or prejudiced. Objections to trial
testimony on bases more relevant to jury trials are particularly unnecessary in this
forum.”) (citing U.S. Playing Card Co. v. Harbro LLC, 81 USPQ2d 1537, 1540 (TTAB
2006)); RxD Media, LLC v. IP Application Dev. LLC, 125 USPQ2d 1801, 1804 (TTAB
2018), aff’d, 377 F. Supp. 3d 588 (E.D. Va. 2019), aff’d, 986 F.3d 361, 2021 USPQ2d
81 (4th Cir. 2021); Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1478
(TTAB 2017) (quoting Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121
USPQ2d 1477, 1479 (TTAB 2017)). We have kept Petitioner’s objections in mind in
considering and determining the probative value of Respondent’s evidence.
4. Respondent’s Objection to the Goodman Declaration.30
Petitioner relies on the Goodman declaration in objecting to the financial
documents in Exhibits A and B to the Hendricks Declaration discussed above.
30 27 TTABVUE 4-12.
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Cancellation No. 92072343
According to Petitioner, Respondent never produced the financial documents even
though Petitioner requested such documents.31
Respondent objects to the Goodman declaration as irrelevant because the
declaration offers Petitioner’s counsel’s testimony regarding discovery issues.32
Exhibit 27 to the declaration consists of email exchanges between counsel.
Because we do not consider Exhibits A and B to the Hendricks declaration in
resolving the issues presented in this proceeding, we need not rule on Respondent’s
relevancy objection to the Goodman declaration.
III. Entitlement to a Statutory Cause of Action
“Even though [Respondent] in [its] brief do[es] not contest [Petitioner’s]
entitlement to invoke the statutory causes of action of … a cancellation, such is an
element of the plaintiff’s case in every inter partes proceeding.” Chutter, Inc. v. Great
Mgmt. Grp., LLC, 2021 USPQ2d 1001, *10 (TTAB 2021), appeal docketed, No. 22-
1212 (Fed. Cir. 2021); see also Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020
USPQ2d 11277 (Fed. Cir. 2020), cert. denied, 141 S. Ct. 2671 (2021); Australian
Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d
10837 (Fed. Cir. 2020), cert. denied, 142 U.S. 82 (2021); Empresa Cubana Del Tabaco
v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). To
establish entitlement to a statutory cause of action, a plaintiff must demonstrate:
(i) an interest falling within the zone of interests protected by the statute, and (ii) a
31 30 TTABVUE 22.
32 31 TTABVUE 19-20.
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Cancellation No. 92072343
reasonable belief in damage proximately caused by the registration of the mark.
Spanishtown Enters., Inc. v. Transcend Res., Inc., 2020 USPQ2d 11388, at *1 (TTAB
2020) (citing Corcamore, 2020 USPQ2d 11277, at *4). See also Empresa Cubana,
111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed.
Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185,
189 (TTAB 1982).33
Respondent admitted that Petitioner sells candles bearing the term “LAGUNA,”34
but denied that the parties are competitors.35 Respondent, however, submitted
Petitioner’s response to one of Respondent’s interrogatories, stating:
Petitioner is a well-known manufacturer of luxury candles
and other home fragrance products under the mark
VOLUSPA. … Petitioner’s products are sold throughout
the country. In early 2010, Petitioner commenced sales of
its Maison Laguna line of candles. Petitioner and
Registrant are competitors in the same field or industry.36
33 The Board no longer analyzes the requirements of Sections 13 and 14 of the Trademark
Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Corcamore, 2020 USPQ2d 11277,
at *6-7 (“standing” is more appropriately referred to as entitlement to bring a statutory cause
of action). Despite the change in nomenclature, our prior decisions and those of the Court of
Appeals for the Federal Circuit interpreting Sections 13 and 14 remain applicable. See
Spanishtown Enters., 2020 USPQ2d 11388, at *2.
34 Respondent’s Response to Petitioner’s Interrog. No. 2, 19 TTABVUE 311.
35 Answer, ¶ 10, 12 TTABVUE 5.
36 Petitioner’s Response to Respondent’s Interrog. No. 1, 23 TTABVUE 85. Petitioner’s
interrogatory responses are signed by Petitioner’s attorney. While not the better practice,
interrogatory answers which have been verified by a party’s attorney are permissible under
Fed. R. Civ. P. 33(a). See Allstate Insurance Co. v. Healthy America Inc., 9 USPQ2d 1663,
TTAB 1988); TBMP § 405.04(c) (“The term ‘agent’ includes an attorney, who may answer
even though he has no personal knowledge of the facts stated in the answers; the attorney’s
answers, like an officer’s or partner’s answers, must contain the information available to the
party served. However, an attorney who answers interrogatories on behalf of a corporation,
partnership, association, or governmental agency may thereafter be exposed to additional
discovery and possibly even disqualification.”).
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Cancellation No. 92072343
Despite Respondent’s denial, we find in light of the admission and interrogatory
response that the parties are competitors and that Petitioner is entitled to pursue a
statutory cause of action in connection in light of this evidence.37 See Books on Tape,
Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301, 1302 (Fed. Cir. 1987)
(competitor has standing); Alcatraz Media, 107 USPQ2d at 1760 (finding standing
based on petitioner being a competitor and using a similar term).
IV. Lack of Acquired Distinctiveness
Where, as here, a mark is registered under Section 2(f), Respondent’s mark’s lack
of inherent distinctiveness is a nonissue; Respondent’s reliance on Section 2(f)
presumes that the mark is primarily geographically descriptive and not inherently
distinctive. See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352,
92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (“where an applicant seeks registration on
the basis of Section 2(f), the mark’s descriptiveness is a nonissue; an applicant’s
reliance on Section 2(f) during prosecution presumes that the mark is descriptive”).
Section 2(f) allows for the registration of mark which has become distinctive of an
applicant’s goods in commerce. It states:
[N]othing in this chapter shall prevent the registration of
a mark used by the applicant which has become distinctive
of the applicant’s goods in commerce. The [USPTO]
Director may accept as prima facie evidence that the mark
has become distinctive, as used on or in connection with the
applicant’s goods in commerce, proof of substantially
37 Mr. Arntsen’s declaration states that on October 1, 2010, Petitioner received a cease and
desist letter from “a Laguna Beach proprietor doing business as ‘Laguna Candles …,” and
submitted the letter as Exhibit A. Arnsten Decl. ¶ 7, 19 TTABVUE 21. Because of the age of
the cease and desist letter, it has limited persuasive value in establishing Petitioner’s
entitlement to a statutory cause of action.
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Cancellation No. 92072343
exclusive and continuous use thereof as a mark by the
applicant in commerce for the five years before the date on
which the claim of distinctiveness is made.
“To show that a mark has acquired distinctiveness, an applicant must
demonstrate that the relevant public understands the primary significance of the
mark as identifying the source of a product or service rather than the product or
service itself.” In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed.
Cir. 2005); see also Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1729 (Fed. Cir. 2012).
“In a cancellation proceeding, acquired distinctiveness may be determined at the
time of registration or trial.” Grote Indus., 126 USPQ2d at 1211; see also Louis
Altmann and Malla Pollack, CALLMANN ON UNFAIR COMPETITION, TRADEMARKS AND
MONOPOLIES § 26:80 (4th ed. 2021) (“In 2018, the TTAB clarified that the mark is
cancelled if it either was without distinctiveness when registered or is shown to lack
distinctiveness at the time of trial.”). The Board has explained:
In most cases, the time period of primary concern is the
time when the registration issued. If a petitioner can
establish that at … [the] time [when the registration
issued], the registered mark was merely descriptive, then
it is incumbent upon the registrant to establish that prior
to the issuance of the registration, the registered mark had
acquired a secondary meaning in the sense that its primary
significance was that of a source indicator of goods
emanating from registrant. Thus, … the petitioner would
… prevail if it is established that as of the time of
registration, the mark was merely descriptive and was
devoid of secondary meaning.
… [I]t is permissible for [a] petitioner to … plead that the
registered mark currently is merely descriptive and that
the mark currently lacks a secondary meaning. If the
petitioner were to so plead and were to establish that the
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Cancellation No. 92072343
registered mark is currently inherently merely descriptive,
then the burden would be on the registrant to show that
the mark currently has a secondary meaning in the sense
that it functions primarily as a source indicator of goods
emanating from the registrant.
In sum, if it is established either that as of the time of
registration, the registered mark was merely descriptive
and lacked a secondary meaning, or that as of the present
time [at trial], the mark is merely descriptive and lacks a
secondary meaning, the cancellation petition would be
granted. Of course, in the majority of cases, it is unlikely
that a petitioner who is unable to make out a case of mere
descriptiveness based on matters as they stood at the time
of registration would be able to make out a case based on
matters as they presently stand. This is because as the
registrant makes more use of its mark with the passage of
time, it is likely that secondary meaning will only increase,
not decrease. (citations omitted).
Neapco Inc. v. Dana Corp., 12 USPQ2d 1746, 1747 (TTAB 1989).
We look to the Petition to Cancel, its ESTTA cover sheet38 and Petitioner’s trial
brief to determine the time when Petitioner alleges Respondent failed to establish
acquired distinctiveness. See id. (summary judgment motion and petition to cancel
used present tense in stating that the registered mark is merely descriptive). The
Petition to Cancel uses the present tense, alleging that the ’702 registration “should
be cancelled because the Subject Mark consists of matter which, when applied to
[Respondent’s] goods, is … primarily geographically descriptive ….” The ESTTA cover
sheet submitted with the Petition to Cancel also uses the present tense, identifying
as a ground for cancellation, “[t]he mark is primarily geographically descriptive” and
“[t]he mark is not inherently distinctive and has not acquired distinctiveness.”
38 See Schott AG v. Scott, 88 USPQ2d at 1863 n.3 (“[T]he ESTTA generated filing form ... is
considered part of the plaintiff’s initial pleading.”).
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Cancellation No. 92072343
Petitioner’s brief states “[t]here cannot be any dispute in this case that the Subject
Mark is primarily geographically descriptive”39 and refers to Mr. Hendrick’s
declaration and Respondent’s trial submissions to establish acquired
distinctiveness.40 Petitioner does not address Respondent’s Section 2(f) declaration,
submitted when Respondent filed its underlying application, in its briefs. We
therefore construe Petitioner’s claim as alleging that Respondent’s mark is primarily
geographically descriptive and lacks secondary meaning at the time of trial. See
Grote Indus., 126 USPQ2d at 1211 (“[I]t is permissible for the petitioner to … plead
that the registered mark currently is merely descriptive and that the mark currently
lacks a secondary meaning” (citing Neapco, 12 USPQ2d at 1747)).
The Federal Circuit has provided the following guidance in such situations:
The party seeking to cancel registration of a mark always
bears the burden of persuasion, that is, the ultimate
burden of proving invalidity of the registration by a
preponderance of the evidence.
Initially, the party seeking cancellation also bears the
“burden to establish a prima facie case” that the
registration is invalid. Yamaha [Int’l Corp. v. Hoshino
Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1007 n.9
(Fed. Cir. 1988)]. In a Section 2(f) case, the party seeking
cancellation bears the initial burden to “establish a prima
facie case of no acquired distinctiveness.” Id. at 1576. To
satisfy this initial burden, the party seeking cancellation
must “present sufficient evidence or argument on which
the board could reasonably conclude” that the party has
overcome the record evidence of acquired distinctiveness --
which includes everything submitted by the applicant
during prosecution. Id. at 1576-77. The burden of
producing additional evidence or argument in defense of
39 30 TTABVUE 15.
40 Id. at 20.
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Cancellation No. 92072343
registration only shifts to the registrant if and when the
party seeking cancellation establishes a prima facie
showing of invalidity. The Board must then decide whether
the party seeking cancellation has satisfied its ultimate
burden of persuasion, based on all the evidence made of
record during prosecution and any additional evidence
introduced in the cancellation proceeding.
Cold War Museum, 92 USPQ2d at 1630; see also Grote Indus., 126 USPQ2d at 1211
(“If the petitioner were to … plead and were to establish that the registered mark is
currently inherently merely descriptive, then the burden would be on the registrant
to show that the mark currently has a secondary meaning in the sense that it
functions primarily as a source indicator of goods emanating from the registrant.”
(citing Neapco 12 USPQ2d at 1747)).
Before determining whether Petitioner has satisfied its “‘burden to establish a
prima facie case’ that the registration is invalid,” Cold War Museum, 92 USPQ2d at
1630, we consider the degree of geographic descriptiveness of the registered mark,
because it “is helpful in laying a foundation for our discussion of acquired
distinctiveness.” Spiritline Cruises LLC v. Tour Mgmt. Servs., Inc., 2020 USPQ2d
48324, *5 (TTAB 2020); see also Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358,
127 USPQ2d 1041, 1047 (Fed. Cir. 2018) (“[T]he … burden of showing acquired
distinctiveness increases with the level of descriptiveness; a more descriptive term
requires more evidence of secondary meaning” (citing Steelbuilding.com, 75 USPQ2d
at 1424)); id. at 1048 (“[T]he Board must make an express finding regarding the
degree of the mark’s descriptiveness on the scale ranging from generic to merely
descriptive, and it must explain how its assessment of the evidentiary record reflects
that finding.”); In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262,
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Cancellation No. 92072343
1265-66 (Fed. Cir. 2015) (Board was within its discretion not to accept applicant’s
allegation of five years’ use given the highly descriptive nature of the mark); In re
Boston Beer Co., 198 F.3d 1370, 1373 (Fed. Cir. 1999) (“[T]he greater the degree of
descriptiveness the term has, the heavier the burden to prove it has attained
secondary meaning.” (quoting In re Bongrain Int’l (Am.) Corp., 894 F.2d 1316, 13
USPQ2d 1727, 1727 n.4 (Fed. Cir. 1990)).
In cases of geographic descriptiveness, this inquiry can involve evidence that the
place named in the mark is very well known, and that third parties in the same
industry use the geographic place name in connection with their goods. Spiritline
Cruises, 2020 USPQ2d 48324, at *6.41 Petitioner submitted the following from the
prior opposition record:
● definitions of “laguna” in English and foreign language
dictionaries;42
● a definition of “laguna” from Wikipedia;43
● Wikipedia entries for “Laguna” in the Philippines,
“Laguna, Santa Catarina” in Brazil, “Laguna City” in Hong
Kong, “Laguna, Imperial County, California” (identified as
“a former settlement in Imperial County, California”) and
“Laguna Army Airfield”;44
41 “A mark is primarily geographically descriptive if: (1) the primary significance of the mark
is the name of a place that is generally known; (2) the goods or services originate in the place
identified in the mark; and (3) the relevant purchasers would associate the identified services
with the place named, i.e., the public would believe that the services come from the place
named.” Spiritline Cruises, 2020 USPQ2d 48324, at *15 (citing In re Nantucket, Inc., 677 F.2d
95, 213 USPQ 889, 891 (CCPA 1982)).
42 19 TTABVUE 34-36.
43 Id. at 37-41.
44 Id. at 42-61.
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Cancellation No. 92072343
● webpages from the California towns of Laguna Miguel,
Laguna Hills and Laguna Woods;45
● Wikipedia pages for Orange County, California;46 and
● a list of companies in Laguna Beach, California.47
Petitioner also submitted Respondent’s interrogatory answers, pleadings and
briefs in the Prior Opposition, and Respondent’s responses to requests for admissions,
document requests and documents produced by Respondent in the cancellation.48
This material, as well as Respondent’s evidence and Petitioner’s rebuttal evidence,
has little bearing on the degree of geographic descriptiveness of the term LAGUNA.
There are no third-party uses, or newspaper or magazine articles referring to third-
party uses, i.e., the type of evidence the Board found helpful in concluding that the
geographic terms in Spiritline Cruises and Alcatraz Media were highly
geographically descriptive. Even the Orange County Wikipedia webpages do not
contain much information about Laguna Beach – the Orange County Wikipedia
webpage states that Anaheim is the main tourist hub in Orange County.49
Respondent’s webpages mention that Respondent is in Laguna Beach,50 and Mr.
Arnsten states in his declaration that the town of Laguna Beach is often referred to
as “Laguna.”51 That alone or in combination with the other evidence does not
45 Id. at 62-68.
46 Id. at 70-85.
47 Id. at 86-105.
48 Id. at 210-76, 310-59.
49 Id. at 42-61.
50 Id. at 600-602.
51 Arnsten Decl. at ¶ 10, 19 TTABVUE 227.
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Cancellation No. 92072343
persuade us that “laguna” is highly geographically descriptive. Based on the evidence
before us, and considering that the term CANDLES is a generic term for Respondent’s
goods which Respondent uses in its identification of goods, we find that the degree of
geographic descriptiveness of the term LAGUNA CANDLES is modest.
Having identified the degree of geographic descriptiveness of the term LAGUNA
CANDLES, we turn to the evidence pertaining to acquired distinctiveness. “[T]he
considerations to be assessed in determining whether a mark has acquired secondary
meaning can be described by the following six factors: (1) association of the
trade[mark] with a particular source by actual purchasers (typically measured by
customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner
of advertising; (4) amount of sales and number of customers; (5) intentional copying;
and (6) unsolicited media coverage of the product embodying the mark.” Converse,
Inc. v. Int’l Trade Comm’n, 907 F.3d 1361, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018).
Although all six factors are to be weighed together in determining the existence of
secondary meaning, no single factor is determinative. In re Virtual Indep. Paralegals,
LLC, 2019 USPQ2d 111512, at *11 (TTAB 2019) (“On this list, no single fact is
determinative.” (citing In re Tires, Tires, Tires Inc., 94 USPQ2d 1153, 1157 (TTAB
2009)).
“Acquired distinctiveness may be shown by direct or circumstantial evidence.
Direct evidence of acquired distinctiveness includes actual testimony, declarations or
surveys of consumers as to their state of mind (e.g., factor 1). Circumstantial
evidence, on the other hand, is evidence from which consumer association might be
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Cancellation No. 92072343
inferred, such as years of use, extensive sales and advertising, and any similar
evidence showing wide exposure of the mark to consumers (e.g., factors 2 through 6).”
Milwaukee Elec. Tool Corp. v. Freud Am., Inc., 2019 USPQ2d 460354, at *24 (TTAB
2019) (citing In re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1283 (TTAB 2000)),
vacated-in-part, affirmed-in-part by consent judgment, No. 1:20-cv-00902-RGA (D.
Del. Apr. 12, 2022).
The evidence Respondent filed with its application that matured into the involved
registration consisted of only the Section 2(f) declaration of substantially exclusive
and continuous use for five years.52 “[P]etitioner may carry its initial burden of
showing prima facie invalidity by introducing evidence at trial that the mark is so
highly [geographically] descriptive that a mere declaration of five years continuous
and substantially exclusive use is insufficient to establish acquired distinctiveness,
so that actual evidence of acquired distinctiveness in the form of sales and advertising
information and the like is necessary.” Alcatraz Media, 107 USPQ2d at 1765. In view
of the deficiencies explained above, Petitioner has not met its burden. Additionally,
while some of Petitioner’s evidence is the same evidence that the Board relied on in
the prior proceeding to find that Respondent’s mark had not acquired distinctiveness,
its probative value is reduced because of its age. Much of it – including the statement
in Mr. Arnsten’s declaration that he has “reviewed Laguna Candles’ historical sales
52 “The fact that respondent’s mark was registered pursuant to Section 2(f) based solely on a
declaration of use does not preclude petitioner from introducing evidence that the mark is so
highly descriptive as to require actual evidence of acquired distinctiveness in order to satisfy
its initial burden of proof.” Alcatraz Media, 107 USP0Q2d at 1765.
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Cancellation No. 92072343
and they do not have any significant market share in the candle or home fragrance
industry [and] [t]hey are essentially unknown in the marketplace”53 – is from 2013,
which was nearly ten years before trial. Petitioner has not supplemented that
evidence to any significant extent. We find, therefore, that Petitioner has not
overcome its initial burden of showing prima facie that a declaration of five years
continuous and substantially exclusive use is insufficient to establish acquired
distinctiveness.
Even if we were to find that Petitioner’s evidence satisfied its initial burden of
showing prima facie that Respondent’s declaration of five years continuous and
substantially exclusive use is insufficient to establish acquired distinctiveness,
Petitioner’s evidence does not overcome Respondent’s collective evidence of acquired
distinctiveness in the prosecution and trial record. Respondent has introduced
evidence in addition to its Section 2(f) declaration that its sales and gross income have
increased. Mr. Hendricks testified that “[s]pecifically, from December 6, 2001 through
November 21, 2011, our business sold approximately 15,000 candles for
approximately $384,000 (or approximately 1,500 candles per year for $38,400 per
year)” (¶ 6), and that “[e]ach year from 2012 to the present, our annual sales of
candles with the Mark has exceeded 15,000 units (the total amount sold from 2001 to
2011) [and] I estimate that our business sold 18,765 units in 2012; 24,875 units in
2013; and 30,270 units in 2014. From 2015 to the present, I estimate that our
53 ¶ 11 Arnsten Decl., 19 TTABVUE 227.
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Cancellation No. 92072343
business has sold an additional 324,318 units.” (¶ 8).54 In addition, Respondent has
received press coverage referencing the LAGUNA CANDLES mark. Such press
coverage has been in the online editions of the Los Angeles Times Daily Pilot, New
York Magazine, Allure, Cosmopolitan, Elle and Women’s Health.55 This evidence is
sufficient to establish acquired distinctiveness for a mark which is modestly
geographically descriptive.
Because Petitioner has not met its burden of persuasion, that is, “the ultimate
burden of proving invalidity of the registration by a preponderance of the evidence,”
Cold War Museum, 92 USPQ2d 1620, Petitioner’s claim of geographic descriptiveness
with a lack of acquired distinctiveness at the time of trial is denied.
V. Res Judicata
As noted, Petitioner claimed that the ’702 registration should be cancelled because
“[t]he Board’s decision in the [Prior] Opposition Proceeding that the term ‘Laguna
Candles’ cannot be registered because it is primarily geographically descriptive is res
judicata.”56
The Supreme Court has commented on the doctrine of res judicata:
The preclusive effect of a judgment is defined by claim
preclusion and issue preclusion, which are collectively
referred to as “res judicata.” Under the doctrine of claim
preclusion, a final judgment forecloses “successive
litigation of the very same claim, whether or not
relitigation of the claim raises the same issues as the
earlier suit.” New Hampshire v. Maine, 532 U.S. 742, 748,
54 Hendricks Decl., 21 TTABVUE 3-4.
55 Id. at 21-25, 57-72, 81-81, 82, 83, 84.
56 Petition to Cancel ¶ 33, 1 TTABVUE 7.
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Cancellation No. 92072343
121 S. Ct. 1808, 149 L. Ed. 2d 968 (2001). Issue preclusion,
in contrast, bars “successive litigation of an issue of fact or
law actually litigated and resolved in a valid court
determination essential to the prior judgment,” even if the
issue recurs in the context of a different claim. Id., at 748-
749, 121 S. Ct. 1808, 149 L. Ed. 2d 968. By “preclud[ing]
parties from contesting matters that they have had a full
and fair opportunity to litigate,” these two doctrines protect
against “the expense and vexation attending multiple
lawsuits, conserv[e] judicial resources, and foste[r] reliance
on judicial action by minimizing the possibility of
inconsistent decisions.” Montana v. United States, 440 U.S.
147, 153-154, 99 S. Ct. 970, 59 L. Ed. 2d 210 (1979).
Taylor v. Sturgell, 553 U.S. 880, 892 (2008).
Because Petitioner refers to claim preclusion, cites to In re Bose Corp., 476 F.3d
1331, 81 USPQ2d 1748, 1752 (Fed. Cir. 2007), which addresses only claim preclusion,
and does not argue issue preclusion, Petitioner has waived any assertion of issue
preclusion, and we limit our discussion to claim preclusion. Cf. Senju Pharm. Co. v.
Apotex Inc., 746 F.3d 1344, 110 USPQ2d 1261, 1263 (Fed. Cir. 2014) (“[T]he judicial
doctrine now generally known as claim preclusion, [was] earlier known as res judicata
and still referred to by that name.”); Chutter, Inc. v. Great Concepts, LLC, 119
USPQ2d 1865, 1868 (TTAB 2016) (“Res judicata is the earlier name for the judicial
doctrine now generally known as claim preclusion.” (citing Urock Network, LLC v.
Sulpasso, 115 USPQ2d 1409, 1410 n.4 (TTAB 2015)).
A. Background
As mentioned, Respondent filed its application that matured into the ’702
registration on February 25, 2014 under Section 1(a) of the Trademark Act, claiming
first use and first use in commerce of the mark on October 17, 2003 in connection
with “aromatherapy fragrance candles; candles; scented candles.” The application
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Cancellation No. 92072343
includes a claim of acquired distinctiveness under Section 2(f) of the Trademark Act
based on substantially exclusive and continuous use of the mark in commerce for five
years.
Petitioner did not introduce any filings made in the Prior Application into the
cancellation record.57 Instead, Petitioner submitted Respondent’s admissions, made
in the current proceeding, concerning the Prior Application:58
On September 23, 2010, an applicant named “Laguna
Candles” filed an application to register the trademark
“Laguna Candles” for “candles and candle fragrances” in
International Class 004. (Response to Req. No. 10).
The Prior Application was assigned Application Serial No.
85137006. (Response to Req. No. 11).
The Prior Application claimed a date of first use of “as early
as October 17, 2003” for the Prior Mark. (Response to Req.
No. 13).
The Board issued a decision on October 2, 2013 sustaining
Petitioner’s opposition to the Prior Application. (Response
to Req. No. 21).
The October 2, 2013 Decision refuses registration of the
Laguna Candles Mark on the grounds that the mark was
primarily geographically descriptive and the evidence
before the Board was insufficient to establish secondary
meaning (Response to Req. No. 24 and 25).
B. Claim Preclusion
This case involves offensive, not defensive, claim preclusion – it is the plaintiff in
the proceeding that is asserting claim preclusion. See, e.g., Sharp K.K. v. ThinkSharp
57 The Board’s well-established practice is not to take judicial notice of USPTO records. See,
e.g., Cities Service Co. v. WMF of Am., Inc., 199 USPQ 493 (TTAB 1978) (judicial notice of
third-party registrations may not be taken where no copies thereof are submitted).
58 19 TTABVUE 312-16.
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Cancellation No. 92072343
Inc., 448 F.3d 1368, 79 USPQ2d 1376, 1378-79 (Fed. Cir. 2006); Chromalloy Am.
Corp. v. Kenneth Gordon (New Orleans), Ltd., 736 F.2d 694, 222 USPQ 187, 189-90
(Fed. Cir. 1984). Petitioner argues that “the Board’s decision in the Prior Decision
established that the Subject Mark is primarily geographically descriptive and had
not acquired distinctiveness.”59
As articulated in Jet Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d
1854, 1856 (Fed. Cir. 2000), claim preclusion requires:
(1) an identity of parties (or their privies);
(2) an earlier final judgment on the merits of a claim; and
(3) a second claim based on the same set of transactional
facts as the first.
See also Empresa Cubana, 111 USPQ2d at 1065; Valvoline Licensing & Intell.
Prop. LLC v. Sunpoint Int’l Grp. USA Corp., 2021 USPQ2d 785, at *6 (TTAB 2021).
“Precedent cautions that res judicata is not readily extended to claims that were not
before the court, and precedent weighs heavily against denying litigants a day in
court unless there is a clear and persuasive basis for that denial.” Kearns v. Gen.
Motors Corp., 94 F.3d 1553, 39 USPQ2d 1949, 1952 (Fed. Cir. 1996); see also Brown
v. Felsen, 442 U.S. 127, 132 (1979) (res judicata is “invoked only after careful
inquiry”).
1. Are the parties or their privies identical?
Petitioner in this proceeding was the opposer in the Prior Opposition. Thus, the
plaintiffs in the two proceedings are identical.
59 30 TTABVUE 15.
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Cancellation No. 92072343
The defendant in the present proceeding is Laguna Candles, LLC. The Board’s
opposition decision, however, identified the defendant as Laguna Candles, a sole
proprietorship composed of Candice Hendricks,60 even though “an individual named
Sharie Denise Hendricks signed the Prior Application.”61 Its opposition trial brief
explained, “Applicant Laguna Candles … is a small, family-owned purveyor of
candles and home accessories primarily operated by Sharie Hendricks with the help
of her husband Clarence and their two daughters Candice and Amy Hendricks.”62 The
opposition decision makes no reference to an assignment from Sharie Hendricks to
Candice Hendricks.
Mr. Hendricks explains:
2. My wife, Sharie D. Hendricks (“Sharie”), launched our
family business in the early 2000’s with the support and
participation of me and our three daughters. …
3. Sharie operated our family business as a sole
proprietorship until 2013, when the business was
converted to a member-managed California limited
liability company. The sole member-managers of
[Respondent] are myself and Sharie.
4. Our family business has sold luxury, hand-crafted, eco-
friendly candles under the mark LAGUNA CANDLES for
nearly two decades.63
In addition, the record reflects that on July 1, 2003, Sharie D. Hendricks signed
an Orange County, California “Fictious Business Name Statement” identifying
60 19 TTABVUE 278.
61 Respondent’s Resp. to Petitioner’s Req. for Admission No. 12, 19 TTABVUE 313.
62 19 TTABVUE 253. See also Respondent’s Resp. to Petitioner’s Req. for Admission No. 30,
19 TTABVUE 318, admitting that Candice Hendricks is Sharie Hendricks’ daughter.
63 Hendricks Decl. ¶¶ 2-4, 21 TTABVUE 2.
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Cancellation No. 92072343
herself and Candice S. Hendricks as “Registrant[s]” of the fictious name “Laguna
Candles.”64 About five years later, on October 1, 2008, Sharie Hendricks signed
another Orange County, California “Fictious Business Name Statement” identifying
Sharie Hendricks alone as the owner of the fictious name “Laguna Candles Laguna
Candles.com.”65 The Prior Application was filed on September 23, 2010.66
Respondent has not suggested that the defendants in the two proceedings were
not identical or in privity, and admitted that the prior applicant, a sole
proprietorship, was converted into Respondent, a California limited liability
company.67
The Board’s opposition decision identifies Candice Hendricks as the defendant,
and Candice Hendricks is not a principal of Respondent. However, because of the
family nature of the business, and the lack of evidence regarding any transfer from
Sharie Hendricks (who signed the Prior Application) to Candice Hendricks, and the
fact that Respondent does not dispute that the defendants in the opposition and
cancellation are in privity, for purposes of this inquiry we consider the parties in the
two proceedings to be identical or in privity. The first factor is satisfied.
2. Was the earlier final judgment on the merits of a claim?
The Board issued a final judgment on Petitioner’s claim of geographic
descriptiveness with no acquired distinctiveness in the prior proceeding, as tried by
64 19 TTABVUE 127.
65 Id. at 124.
66 Respondent’s Resp. to Req. for Admissions No. 10, 19 TTABVUE 312.
67 Respondent’s Resp. to Req. for Admissions No. 14, 19 TTABVUE 313.
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Cancellation No. 92072343
the consent of the parties under Fed. R. Civ. P. 15(b)(2). We therefore find that the
second factor is satisfied regarding Petitioner’s claim of geographic descriptiveness
with no acquired distinctiveness.
3. Is the second claim based on the same set of transactional facts as
the first?
“[C]ourts have defined ‘transaction’ in terms of a ‘core of operative facts,’ the ‘same
operative facts,’ or the ‘same nucleus of operative facts,’ and ‘based on the same, or
nearly the same, factual allegations.’” Jet, 55 USPQ2d at 1856 (quoting Herrmann v.
Cencom Cable Assoc., Inc., 999 F.2d 223, 226 (7th Cir. 1993)). Because there is no
dispute that both proceedings involve the same mark for identical, and otherwise
legally-identical, goods,68 we must determine whether Respondent’s claim of acquired
distinctiveness in the Prior Opposition is based on the same set of factual allegations
as its claim of acquired distinctiveness in the cancellation. Id. at 1957 (“Thus, we
must determine whether, for purposes of claim preclusion, a claim for trademark
infringement is based on the same set of factual allegations as a petition to cancel the
defendant’s federally registered mark.”).
Petitioner argues that res judicata applies because “the Board found a mere four
months before the filing of the Subject Application that the Subject Mark in fact had
not acquired distinctiveness.”69 Respondent maintains that “[t]he doctrine[ ] of res
judicata… [is] discretionary and will not be applied where circumstances relating to
68 The “aromatherapy fragrance candles; candles; scented candles” in the ’702 registration
are legally identical to the “candles and fragrant candles” identified in the Prior Application.
69 33 TTABVUE 8.
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Cancellation No. 92072343
trademark use and consumer recognition have changed since the prior judgment was
rendered,” noting that “the Prior Application was based on a claim of inherent
distinctiveness, whereas the Subject Registration was filed under Section 2(f) on the
basis of acquired distinctiveness.”70
“The issue of whether res judicata bars relitigating the issue of [acquired
distinctiveness] is a difficult one [as there] are no cases which expressly demarcate a
minimum time that must elapse before a defendant can re-litigate the issue of
[acquired distinctiveness].” Test Masters Educ. Servs., Inc. v. Singh, 428 F.3d 559, 76
USPQ2d 1865 (5th Cir. 2005). “[T]rademark rights are not static ….” In re Morton-
Norwich Prods., 671 F.2d 1332, 213 USPQ 9, 18 (CCPA 1982), and “res judicata is not
applicable where ‘it is apparent that all the questions of fact and law involved … [in
the second proceeding] were not determined in the previous proceeding.’” In re Bose,
81 USPQ2d at 1752 (quoting Litton Indus., Inc. v. Litronix, Inc., 577 F.2d 709, 198
USPQ 280 (CCPA 1978) (internal citation omitted)).
“[T]here is nothing to preclude an applicant from attempting a second time in an
ex parte proceeding to register a particular mark if conditions and circumstances
have changed since the rendering of the adverse final decision in the first
application.” In re Honeywell Inc., 8 USPQ2d 1600, 1601-02 (TTAB 1988); In re Oscar
Mayer & Co., 171 USPQ 571 (TTAB 1971). Professor McCarthy explains, “[a] prior
decision that a designation was not protectable as a trademark because it was
descriptive and lacked secondary meaning, does not preclude the party from later
70 31 TTABVUE 9.
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Cancellation No. 92072343
arguing that in the time since that decision, consumer usage and perception has
changed so that the designation has now achieved secondary meaning.” 6 J. Thomas
McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 32:88
(5th ed. 2022). In a recent case involving an applicant who re-applied for the same
mark for the same goods less than 20 months after the Board affirmed the refusal of
registration of its mark on the ground of mere descriptiveness refusal, the Board
stated that “the losing party must demonstrate a material change in the relevant
conditions or circumstances … since the Prior Decision” for claim preclusion not to
apply. In re SolarWindow Techs., Inc., 2021 USPQ2d 257, at *8 (TTAB 2021); see also
Flowers Indus. Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1584 (TTAB 1987)
(“[A]n applicant who has received an adverse judicial determination of its right to
registration … is not precluded thereby from seeking registration in a second
application if the applicant can show that there has been a substantial change in the
relevant facts since the rendering of the adverse final decision in its first
application.”) (citing In re Oscar Meyer & Co., Inc., 171 USPQ 571 (TTAB 1971)).
The parties have not cited a case and we know of no case that addresses a change
in circumstances, where a second application claiming acquired distinctiveness is
made for the same term for identical and legally-identical goods four months after a
successful opposition to a first application, and which term has registered under a
claim of acquired distinctiveness in the second application.
Prior decisions have found a change in circumstance when a second showing of
acquired distinctiveness is made many years after the initial failed showing. See
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Cancellation No. 92072343
Texas Pig Stands, Inc. v. Hard Rock Cafe Int’l, Inc., 951 F.2d 684, 21 USPQ2d 1641,
1646 (5th Cir. 1992) (factual changes found when second proceeding was 65 years
later, and after proliferation of defendant’s stores throughout the country); Flowers
Indus., 5 USPQ2d at 1589-90 (involving HONEY WHEAT for bread, the applicant
had used the designation sought to be registered for more than 50 years at the time
of the second proceeding, whereas 40 years earlier, in the prior proceeding, there was
use of the term for approximately ten years); In re Honeywell, 8 USPQ at 1602 (change
of conditions in the marketplace 17 years since the record of the original application
closed and since applicant’s design patent on the configuration expired.).
These cases are contrasted with Test Masters Educ. Servs., Inc. v. Robin Singh
Educ. Servs., Inc., 799 F.3d 437, 116 USPQ2d 1234, 1242 (5th Cir. 2015), in which
the Fifth Circuit rejected an argument that circumstances had changed 13 years after
an initial decision finding no acquired distinctiveness. The court found that there was
insufficient evidence to prove a significant factual change by achieving a secondary
meaning in the designation on a nationwide basis for all test preparation courses even
though annual revenues increased from just over $3 million in 2001 to an average of
$14 million between 2008 and 2010; advertising expanded; media exposure was
extensive; a new survey showed 58.1 percent awareness of the term TESTMASTERS;
and growth of the internet and customer confusion had “become epidemic.” Id. The
Fifth Circuit stated that “[a] ‘significant intervening factual change’ must be shown
[and] [e]vidence of increased business success alone is insufficient to show a
significant intervening change.” Id. at 1242. Instead, “‘a change in the minds of the
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Cancellation No. 92072343
public … such that they could immediately associate the ‘TESTMASTERS’ mark with
his [business]’” must be shown and plaintiff “has not shown any special circumstances
warranting re-litigation.” Id.
As mentioned, when considering the issue of acquired distinctiveness, we must
consider factors such as the length, degree, and exclusivity of use; amount and
manner of advertising; amount of sales and number of customers; and unsolicited
media coverage of the product embodying the mark. Virtual Indep. Paralegals, 2019
USPQ2d at 11. We must keep in mind as well that acquired distinctiveness may be
determined at the time of registration or trial in the cancellation. See Alcatraz Media,
107 USPQ2d at 1765; Neapco, 12 USPQ2d at 1747; Kasco Corp. v. S. Saw Serv. Inc.,
27 USPQ2d 1501, 1506 n.7 (TTAB 1993).
The following are facts and evidence in the cancellation that were not present in
the Prior Opposition:
● The mark subsequently was registered, and registrations
are entitled to a presumption of validity pursuant to
Section 7(b) of the Trademark Act.
● The second application for the registered mark includes
a Section 2(f) declaration which attests to Respondent’s
substantially exclusive and continuous use of its mark for
a period of at least five years; there was no assertion of
substantially exclusive use in the prior proceeding.
● Respondent’s mark has been in use seven years longer at
the time of trial in the cancellation than at the time of trial
in the Prior Opposition.
● Respondent’s sales have increased; from December 6,
2001 through November 21, 2011, Respondent sold
approximately 15,000 candles for approximately $384,000
(or approximately 1,500 candles per year for $38,400 per
year) (¶ 6), and Mr. Hendricks testified, “[e]ach year from
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Cancellation No. 92072343
2012 to the present, our annual sales of candles with the
Mark has exceeded 15,000 units (the total amount sold
from 2001 to 2011) [and] I estimate that our business sold
18,765 units in 2012; 24,875 units in 2013; and 30,270
units in 2014. From 2015 to the present, I estimate that
our business has sold an additional 324,318 units.”71
● Respondent has received additional press coverage
referencing the LAGUNA CANDLES mark in publications
such as the Los Angeles Times Daily Pilot, New York
Magazine, Allure, Cosmopolitan, Elle and Women’s
Health.
These facts and evidence – notably the increased sales after trial in the Prior
Opposition – establish a recognizable change of circumstances from the time of trial
in the Prior Opposition and the time of trial in the cancellation. The third Jet factor
is not satisfied.
4. Conclusion on Claim Preclusion.
We conclude that the doctrine of claim preclusion does not apply to Petitioner’s
claim of geographic descriptiveness with no acquired distinctiveness. Petitioner’s res
judicata claim is denied.
VI. Fraud
In conjunction with its claim of fraud, Petitioner claims that Respondent
represented to the USPTO that its mark was entitled to registration under
Section 2(f) in the application which matured into the involved registration, when
just four months earlier, the Board decided that the mark was primarily
geographically descriptive and had not acquired distinctiveness.72
71 Hendricks Decl. ¶ 8, 21 TTABVUE 4.
72 30 TTABVUE 15-16.
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Cancellation No. 92072343
“Fraud in procuring a trademark registration occurs when an applicant for
registration knowingly makes a false, material representation of fact in connection
with an application to register with the intent of obtaining a registration to which it
is otherwise not entitled.” Luxco, 121 USPQ2d at 1501 (citing In re Bose Corp., 580
F.3d 1240, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009)). A party alleging fraud in the
procurement of a registration bears the heavy burden of proving fraud with clear and
convincing evidence. Id.; Nationstar Mortg. LLC v. Ahmad, 112 USPQ2d 1361, 1365
(TTAB 2014). “There is no room for speculation, inference or surmise and, obviously,
any doubt must be resolved against the charging party.” In re Bose, 91 USPQ2d at
1939 (quoting Smith Int’l, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981)). To
carry this burden, the party alleging fraud must prove that:
(1) the applicant made a false representation to the
USPTO;
(2) the false representation was material to the
registrability of the mark;
(3) the applicant had knowledge of the falsity of the
representation; and
(4) the applicant made the representation with intent to
deceive the USPTO.
See In re Bose, 91 USPQ2d at 1941.
Petitioner’s claim of fraud rests on an allegedly false representation by
Respondent that it was entitled to seek and obtain registration of its mark when it
knew that the Board had already ruled that the same mark was not registerable. The
Examining Attorney assigned to the application which registered included a “Note to
the File” which states, “the Applicant is under common ownership with Ser. No.
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Cancellation No. 92072343
85/137006 [i.e., the Prior Application] per attorney Amy Burke.”73 Applicant’s
attorney informed the Examining Attorney about the Prior Application, and the
Examining Attorney presumably was, or should have been, aware of the Board’s
opposition decision. Thus, to the extent the Section 2(f) claim differed from the
Board’s determination in the Prior Opposition, this was not material to the
registrability of the mark. See, e.g., Lesley Hornby a/k/a Lesley Lawson a/k/a
Twiggy v. TJX Cos., 87 USPQ2d 1411 (TTAB 2008) (“The Examining Attorney was
well aware that ‘Twiggy’ was the name of a British actress and personality, also
referred to by the Examining Attorney in the June 19, 1998 Office action as ‘a well
known former supermodel who also sings and acts.’ In view thereof, respondent’s
failure to identify petitioner when it signed the declaration in its application can
hardly be considered material to the Examining Attorney’s decision to allow the
application.”).
We also address Petitioner’s argument that Respondent had the requisite intent
to deceive the USPTO.74 Subjective intent to deceive, however difficult it may be to
prove, is an indispensable element in the analysis. Of course, “because direct evidence
of deceptive intent is rarely available, such intent can be inferred from indirect and
circumstantial evidence. But such evidence must still be clear and convincing, and
inferences drawn from lesser evidence cannot satisfy the deceptive intent
73 June 3, 2014 “Note to File,” TSDR 1. TSDR refers to the downloadable .pdf version of the
USPTO’s Trademark Status & Document Retrieval (TSDR) system.
74 30 TTABVUE 16.
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Cancellation No. 92072343
requirement.” Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366
[88 USPQ2d 1001] (Fed. Cir. 2008).
Petitioner argues that “[t]he only possible conclusion … is that such
representation was intentionally false given the Board’s decision only four months
earlier”;75 and that “the false statements were not accidental but were made with an
intent to deceive the [USPTO] given that they were made four months after the
Board’s finding of lack of acquired distinctiveness.”76 Respondent notes that
“Petitioner does not identify a scintilla of evidence regarding Registrant’s intent,”77
75 Id.
76 Id., 30 TTABVUE 17. See also Petitioner’s Resp. to Interrog. No. 10 (23 TTABVUE 90),
stating:
Registrant knew that (1) the Subject Mark was primarily
geographically descriptive; (2) the Subject Mark had not
acquired distinctiveness or secondary meaning; (3) the Subject
Mark was not entitled to registration; (4) Registrant was not
entitled to seek or obtain registration of the Subject Mark; and
(5) the Board already had found the Subject Mark was primarily
geographically descriptive and the applicant for the Prior
Registration was unable to prove acquired distinctiveness or
secondary meaning.
Despite knowing these facts, Registrant filed the application
that resulted in the Subject Registration and represented to the
Trademark Office that it was entitled to seek and obtain
registration of the Subject Mark. Registrant knew when it filed
such application that the Board already had ruled that the
Subject Mark was not subject to registration because it was
primarily geographically descriptive and Registrant therefore
knew that it was not entitled to seek or obtain registration of the
Subject Mark.
77 31 TTABVUE 11.
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Cancellation No. 92072343
and argues that Petitioner is simply drawing a conclusion from the circumstances
surrounding the filing of the application.78
While intent to deceive can be inferred from indirect and circumstantial evidence,
such evidence must still be clear and convincing, and inferences drawn from lesser
evidence cannot satisfy the deceptive intent requirement. Bose, 91 USPQ2d 1941. We
find that there is insufficient evidence in the record before us to warrant the inference
of an intent to deceive the USPTO. Respondent disclosed the prior application to the
Examining Attorney, suggesting that Respondent was not deliberately concealing the
Prior Opposition. Also, Respondent may have believed that the change of
circumstances discussed above permitted a second application. Cf. Nationstar Mortg.
LLC v. Ahmad, 112 USPQ2d 1361 (TTAB 2014) (Board able to infer deceptive intent
to deceive USPTO based on applicant’s testimony coupled with other factual
findings). “[A]bsent the requisite intent to mislead the PTO, even a material
misrepresentation would not qualify as fraud under the Lanham Act warranting
cancellation.” Bose, 91 USPQ2d at 1940 (citing King Auto., Inc. v. Speedy Muffler
King, Inc., 667 F.2d 1008, 212 USPQ 801 (CCPA 1981)).
In view of the foregoing, Petitioner’s claim of fraud is denied.
VII. Laches
Because we have denied each of Petitioner’s claims, we need not reach
Respondent’s affirmative defense of laches.
Decision: The Petition to Cancel is denied.
78 Id.
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