Adamson Systems Engineering, Inc. v. Peavey Electronics Corporation

THIS OPINION IS A

PRECEDENT OF THE TTAB

Mailed: November 1, 2023

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

_____

Adamson Systems Engineering, Inc.

v.

Peavey Electronics Corporation

_____

Cancellation No. 92076586

_____

Parna Mehrbani, Steven Wilker, and Stephanie J. Grant of Tonkon Torp LLP,

for Adamson Systems Engineering, Inc.

Ronald S. Bienstock of Scarinci & Hollenbeck, LLC,

for Peavey Electronics Corporation.

_____

Before Heasley, Pologeorgis, and Dunn,

Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:

Respondent, Peavey Electronics Corporation, owns a Principal Register

registration for the standard character mark CS for “amplifiers” in International

Class 9.1 Petitioner, Adamson Systems Engineering, Inc., seeks cancellation of

Respondent’s registration on the grounds of abandonment, genericness, and

fraudulent maintenance of the registration.2 Respondent’s Answer denies the salient

1 Registration No. 1486017 issued on April 26, 1988, and has been renewed.

2 Petition for Cancellation, 1 TTABVUE.

Cancellation No. 92076586

allegations of the Petition for Cancellation.3 Both parties have briefed the case.4

We grant the petition to cancel on the ground of abandonment. In view thereof,

we need not reach the remaining grounds for cancellation. See Fender Musical

Instruments Corp. v. Win-D-Fender, LLC, 2023 USPQ2d 61, *11 n. 21 (TTAB 2023).

I. Background

This case finds its origin in a cease and desist letter. On January 26, 2021,

Respondent’s counsel wrote to Petitioner, stating in pertinent part:

As you know, [Respondent] Peavey is known throughout the world as an

industry leader in the development, manufacturing and selling of

speakers, amplifiers, guitars, bass guitars, audio and recording equipment,

keyboards and other musical instrument related accessories.

As such, Peavey owns an extensive portfolio of registered and common-law

trademarks, including, but not limited to, the “CS” trademark (US Reg. No.

1,486,017) in connection with amplifiers (the “Peavey Mark”). …

It has recently come to our Client’s attention that Adamson Systems

Engineering [Petitioner] has been advertising Your new “CS Series” of

intelligent loudspeakers using the Peavey Mark. … Your products

advertised using the Peavey Mark are sold in a similar market through

similar channels of trade, our Client is concerned that Your continued use

of the Peavey Mark may cause consumer confusion. While we trust that

You did not intend to use the Peavey Mark to promote Your amplifiers, we

3 4 TTABVUE. Respondent also asserted the equitable affirmative defenses of acquiescence,

laches, and unclean hands in its Answer, 4 TTABVUE 5-6, but did not pursue them in its

final brief, so they are waived. See Harry Winston, Inc. v. Bruce Winston Gem Corp., 111

USPQ2d 1419, 1422 (TTAB 2014) (“As applicant did not pursue the affirmative defenses of

failure to state a claim and unclean hands, either in its brief or by motion, those defenses are

waived.”). See also TPI Holdings, Inc. v. TrailerTrader.com LLC, 126 USPQ2d 1409, 1413

n.28 (TTAB 2018); (“Respondent also asserted ‘estoppel, acquiescence and waiver,’ but does

not argue any of these in its brief. They are therefore waived.”). Respondent also asserts that

“The Peavey CS® mark has developed secondary meaning within the industry.” 4 TTABVUE

5. This purported affirmative defense is unnecessary, as Respondent’s subject registration

for CS issued without a showing of acquired distinctiveness. Moreover, the defense is moot

because we do not reach the claim of genericness.

4 Both parties designated parts of their briefs confidential and submitted them under seal

with redacted copies for the public record. When referring to a brief, the Board uses parallel

citations referring to both versions.

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Cancellation No. 92076586

appreciate Your understanding that such use constitutes infringement of

our Client’s registered intellectual property rights. See 15 U.S.C. §1114(1).

In light of the foregoing, we must demand that You cease and desist from

any present and future distribution, marketing, promotion, offering for

sale, and/or sale of any and all products discussed above that use the

Peavey Mark. Moreover, we require that your client comply with the

following demands immediately:

(1) Immediately cease and desist from the manufacture, having

manufactured, use, distribution, promotion, importation, offering for

sale and sale of goods using the Peavey Mark; and

(2) Remove all postings and offers for sale and promotion of, and

references to, the Peavey Mark from all print or electronic media,

including, but not limited to, your website and/or any all other

websites, or print media, including, but not limited to, all social

media, e-commerce websites, magazines, catalogues, brochures and

the like.5

The cease and desist letter appended a copy of Petitioner’s advertising:

5 Respondent’s January 26, 2021 cease and desist letter to Petitioner. Ex. 27, Respondent’s

Notice of Reliance (NOR) 47 TTABVUE 249, Courtland Gray deposition 62:17-20, 45

TTABVUE 168 (confidential). Testimony authenticating a non-confidential cease and desist

letter cannot reasonably be considered confidential, and we exercise our discretion under the

rule (set forth later in this opinion) to treat the testimony as not confidential.

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Cancellation No. 92076586

6

The next month, Petitioner instituted this cancellation proceeding.7

II. The Record

The record includes the pleadings and the file of Respondent’s subject registration.

Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b). The parties also introduced the

following evidence:

• Petitioner’s Notice of Reliance, including the Notice of Rule 30(b)(6) deposition

of Courtland Gray, Respondent’s Chief Operating Officer and corporate

designee; excerpts and exhibits from that deposition; excerpts from

Respondent’s amended answers to interrogatories; Respondent’s amended

responses to requests for production of documents; screenshots from

Respondent’s website; evidence of third-party use of CS (16 TTABVUE; 17

TTABVUE (confidential));

• Respondent’s Notice of Reliance, including excerpts and exhibits from the Rule

30(b)(6) deposition of Respondent’s corporate designee Courtland Gray;

Petitioner’s initial disclosures; Petitioner’s responses to requests for

6 47 TTABVUE 249.

7 1 TTABVUE.

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Cancellation No. 92076586

production and answers to interrogatories; Respondent’s supplemental

answers to interrogatories; publication on history of Respondent and CS

amplifier; internet materials regarding Respondent’s CS amplifiers (47-49

TTABVUE (corrected version), 43-46 TTABVUE (confidential corrected

version));

• Petitioner’s rebuttal Notice of Reliance, containing the entire Rule 30(b)(6)

deposition transcript of Respondent’s corporate designee Courtland Gray (23

TTABVUE; 24 TTABVUE (confidential)).

III. Evidentiary Issues

Before proceeding to the merits, we address evidentiary issues arising from this

proceeding.

A. Motion to Strike and Objections to Evidence

During discovery, Petitioner took the Rule 30(b)(6) deposition of Courtland Gray,

Respondent’s Chief Operating Officer and corporate designee. Petitioner later

submitted excerpts and exhibits from that discovery deposition in its notice of

reliance.8 Respondent then submitted in evidence its own excerpts from the Gray

deposition.9 Petitioner followed with its rebuttal notice of reliance, in which it made

the entire Gray deposition transcript of record, although it designated only certain

portions of the transcript as its rebuttal material.10

8 16 TTABVUE; 17 TTABVUE 25 et seq. (confidential).

9 43 TTABVUE 317 et seq. (confidential corrected version); 47 TTABVUE 316 et seq.

(corrected version).

10 23, 24 TTABVUE (confidential).

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Cancellation No. 92076586

On the same day Petitioner filed its rebuttal notice of reliance, Petitioner also

moved to strike Respondent’s reliance on:

its own corporate deponent’s discovery deposition as trial evidence through

a notice of reliance. The rules could not be clearer that Registrant cannot

rely on the discovery deposition of its witness—only the adverse party to

the witness (Petitioner) can do so. Because Registrant is barred from

relying on the discovery deposition of its own witness, the Board should

strike those materials from Registrant’s Notice of Reliance.11

Respondent opposed the motion to strike, and the matter is fully briefed.12

The Trademark Rules provide in pertinent part that “[t]he discovery deposition of

… a person designated by a party pursuant to Rule 30(b)(6) … of the Federal Rules

of Civil Procedure, may be offered in evidence by an adverse party.” Trademark

Rule 2.120(k)(1), 37 C.F.R. § 2.120(k)(1) (emphasis added). See also TRADEMARK TRIAL

AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 704.09 (2023).

There are, however, some exceptions to this rule. The Trademark Rules further

provide that:

If only part of a discovery deposition is submitted and made part of the

record by a party, an adverse party may introduce under a notice of

reliance any other part of the deposition which should in fairness be

considered so as to make not misleading what was offered by the

submitting party. A notice of reliance filed by an adverse party must be

supported by a written statement explaining why the adverse party needs

to rely upon each additional part listed in the adverse party’s notice, failing

which the Board, in its discretion, may refuse to consider the additional

parts.

Trademark Rule 2.120(k)(4). See also TBMP § 704.09.

11 Motion to strike, 25 TTABVUE 2.

12 Respondent’s response to motion to strike, 26 TTABVUE; Petitioner’s reply in support of

motion to strike, 27 TTABVUE.

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Cancellation No. 92076586

In this case, as Petitioner observes, the deposition of Respondent’s Chief

Operating Officer, Courtland Gray, “was the only deposition—discovery or trial

testimony—taken in this case.”13 Both parties rely on his testimony, and neither

party submitted another testimony deposition or declaration. “Abandonment is a

question of fact.” On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d

1471, 1476 (Fed. Cir. 2000). And his testimony is a key means by which we determine

the facts in this case.

When Petitioner offered excerpts from Gray’s deposition, it was appropriate for

Respondent to supplement the record with other portions of his deposition—the

better to round out the record on the disputed factual issues. As the Board has found

in similar cases, “the interests of fairness are served best by considering the

additional excerpts of the … discovery deposition submitted … under notice of

reliance.” Weider Pubs., LLC v. D & D Beauty Care Co., LLC, 109 USPQ2d 1347, 1351

n.13 (TTAB 2014), quoted in Made in Nature, LLC v. Pharmavite LLC, 2022 USPQ2d

557, *13 (TTAB 2022).

Petitioner critiques Respondent’s notice of reliance, arguing that it fails to provide

a written statement explaining why Respondent needs to rely upon each additional

part of the deposition.14 But Petitioner made the entire Gray deposition transcript of

record,15 which effectively moots the motion to strike because “evidence is either of

record or it is not.” In re Brunetti, 2022 USPQ2d 764, *5 (TTAB 2022), appeal

13Petitioner’s main brief, 28 TTABVUE 9 (redacted), 29 TTABVUE 9 (confidential).

Hereafter, Petitioner’s main brief will be cited as 28, 29 TTABVUE.

14 25 TTABVUE 5; 27 TTABVUE 4.

15 23, 24 TTABVUE (confidential).

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Cancellation No. 92076586

docketed, No. 23-1539 (Fed. Cir. Feb. 27, 2023). “A discovery deposition not properly

offered in evidence under 37 C.F.R. § 2.120(k) may nevertheless be considered by the

Board if the nonoffering party … treats the deposition as being of record, or

improperly offers a discovery deposition in the same manner.” TBMP § 704.09. Under

the Trademark Rules, “When … a discovery deposition, … has been made of record

by one party in accordance with the provisions of paragraph (k)(3) of this section, it

may be referred to by any party for any purpose permitted by the Federal Rules of

Evidence.” Trademark Rule 2.120(k)(7), 37 C.F.R. § 2.120(k)(7).16

In view of these circumstances, especially Petitioner’s introduction of the entire

discovery deposition, and the important role played by the Gray deposition in this

proceeding, we find that the interests of fairness are best served by considering his

entire deposition transcript. See Made in Nature v. Pharmavite, 2022 USPQ2d 557,

at *13; Wear-Guard Corp. v. Van Dyne-Crotty Inc., 18 USPQ2d 1804, 1806 n.2 (TTAB

1990) (“Nevertheless, in reaching our decision, we have reviewed and taken into

account the entire discovery deposition transcripts ….”), aff’d, 17 USPQ2d 1866 (Fed.

Cir. 1991). Petitioner’s motion to strike Respondent’s submission of excerpts from the

Gray deposition transcript is denied.

Petitioner also moves to strike eleven documents Respondent submitted at trial

on the ground that Respondent failed to produce the documents earlier in the course

16 Respondent’s notice of reliance on the Gray deposition furnishes a far more detailed

explanation of the relevance of each excerpt than Petitioner’s rebuttal notice of reliance,

which merely states in pertinent part that Petitioner “reserves the right to rely on materials

identified in Registrant’s Notice of Reliance,…” and explains that Petitioner’s additional

excerpts of the deposition “[p]rovide[] context for deposition exhibits identified in Registrant’s

Notice of Reliance; abandonment and genericness”.

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Cancellation No. 92076586

of discovery.17 As background: Early in the discovery phase of this proceeding,

Petitioner moved to compel Respondent to respond fully to its document requests

without objection.18 Respondent did not respond, resulting in the Board’s Order

directing it to produce responsive documents “in full and without objection on the

merits.”19

Two of Petitioner’s requests for production were as follows:

Request #2: All documents that you intend to introduce as exhibits during

the testimony period in this matter.

Request #14: All documents related to the marketing, advertising,

promotion, offering for sale, distribution, and/or sale of any goods bearing or

using the CS Mark in the United States from 2012 to the present. This

request includes, but is not limited to, documents indicating advertising

expenditures as well as specimens of advertisements, brochures, promotional

pieces, press releases, social media, websites, catalogues and materials used

or to be used in connection with goods or services bearing or using the CS

Mark in the United States.

Petitioner now moves to strike Respondent’s trial exhibits 57 through 68 on the

ground that Respondent failed to produce them during discovery.20 The first exhibit,

number 57, is vaguely described as “an undated excerpt from a book or magazine

which summarizes activities during the 1970’s, 1980’s and 1990s.”21 The remaining

ten exhibits are third-party online materials listing CS amplifiers for rent or sale, or

reviewing or discussing them.22 Petitioner asks that these exhibits be stricken, that

17 Petitioner’s motion to strike, 25 TTABVUE 3-5.

18 Petitioner’s motion to compel, 6 TTABVUE.

19 Board Order, 9 TTABVUE 3.

20 Petitioner’s motion to strike, 25 TTABVUE 6-9, referring to Respondent’s notice of reliance

at 22 TTABVUE 510-627, 47 TTABVUE 516-633 (corrected copy).

21 25 TTABVUE 6.

22 25 TTABVUE 6-9.

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Cancellation No. 92076586

Respondent not be permitted to rely on the exhibits in its trial brief, and that

Petitioner be permitted to rely on the “improperly submitted materials.”23

Respondent responds that the disputed exhibits consist of third-party materials

that it had no prior obligation to produce and that may therefore be appropriately

introduced to supplement the record.24

We find that Petitioner fails to establish that Respondent’s conduct was so

deficient as to warrant the sanction of striking the eleven exhibits, or allowing only

one party to refer to them in trial briefs. Ordinarily, “[a] party is not required, in

advance of trial, to disclose each document or other exhibit it plans to introduce.”

TBMP § 414(7); see, e.g., British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197,

1201 (TTAB 1993) (“A party is not required to disclose the entirety of its proposed

evidence in support of its case during discovery.”), aff’d, 35 F.3d 1527, 32 USPQ2d

1120 (Fed. Cir. 1994). Moreover, “[g]enerally, a party does not have an obligation to

locate documents that are not in its possession, custody, or control and produce them

during discovery.” TBMP § 406.02 (2023); see Mystery Ranch, Ltd. v. Terminal

Moraine Inc., 2022 USPQ2d 1151, *7 (TTAB 2022) (“a party need not investigate

third-party use or registrations to respond to discovery requests”) (citing Rocket

Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1071-72 (TTAB 2011) (a

party has no duty to conduct an investigation of third-party uses in response to

discovery requests)).

23 25 TTABVUE 9-10.

24 Respondent’s response to motion to strike, 26 TTABVUE 4.

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Cancellation No. 92076586

Respondent complied in good faith with the Board Order compelling discovery. As

the Board observed in a later Order (denying Petitioner’s other motion for sanctions)

Respondent produced nearly 700 documents: “The Board finds that this number

indicates that Respondent was genuine and concerted in meeting the deadline

imposed by its prior order compelling such discovery.”25 Of the eleven subject exhibits,

the first is of indeterminate provenance, and the rest reflect third-party online

communications.26 “Here, the record is inconclusive as to whether documentary

evidence of the third-party [documents] was in [Respondent’s] possession at the time

of the relevant discovery requests. Thus, we cannot conclude that any such documents

were improperly withheld.” Mystery Ranch v. Terminal Moraine, 2022 USPQ2d 1151,

at *7. The motion to strike is denied, and this evidence will be considered for whatever

probative value it is worth.

In an Appendix to its main trial brief, Petitioner objects to the same third-party

website printouts on the grounds that they are irrelevant and constitute hearsay to

the extent they are offered for the truth of any matter asserted.27 Petitioner further

objects to Respondent’s exhibits 3-4, and 56-57 on the ground that “Registrant sought

to introduce the entirety of its initial and amended discovery responses. The Board,

in its discretion, should decline to consider the entirety of these exhibits because

25 Board Order, 15 TTABVUE 5.

26 In its Appendix to its main trial brief, Petitioner characterizes Respondent’s exhibits 65

and 66 as screenshots of “promotional youtube videos posted by Registrant in 2016 and 2018.”

28, 29 TTABVUE 37. Respondent rejoins in its trial brief that “While Petitioner attempts to

claim that these videos were posted by the Registrant, a cursory review shows that they were

posted by third parties – not the Registrant.” 30, 31 TTABVUE 39. In view of this disclaimer,

we treat the exhibits as screenshots of third-party videos.

27 28, 29 TTABVUE 37.

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Cancellation No. 92076586

Registrant failed to provide a written statement explaining why it needs to rely on

the additional disclosures.”28 Respondent similarly objects to Petitioner’s reliance on

third-party websites (exhibits 3-31, 35-47), to the extent they are offered for the truth

of any matter asserted, and to other exhibits (exhibits 33, 48-49, 69) on the ground

that their probative value is outweighed by the danger of unfair prejudice. 29

As the Board has made clear in prior rulings:

Because a cancellation proceeding is akin to a bench trial, the Board is

capable of assessing the proper evidentiary weight to be accorded the

testimony and evidence, taking into account the imperfections surrounding

the admissibility of such testimony and evidence. As necessary and

appropriate, we will point out any limitations in the evidence or otherwise

note that we cannot rely on the evidence in the manner sought. We have

considered all of the testimony and evidence introduced into the record. In

doing so, we have kept in mind the various objections the parties have

raised and we have accorded whatever probative value the subject

testimony and evidence merit.

Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, *3-4 (TTAB 2020). We shall do

the same here. See also Grote Indus., Inc. v. Truck-Lite Co., 126 USPQ2d 1197, 1200

(TTAB 2018) (“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.”).

B. Over-designation of Materials as Confidential

The parties have over-designated as confidential or “attorneys’ eyes only” large

portions of the record, including the Gray deposition in its entirety and exhibits

28 28, 29 TTABVUE 38.

29 30, 31 TTABVUE 41.

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Cancellation No. 92076586

pertaining to the central issues in this case—particularly, the extent of Respondent’s

use of the CS mark on amplifiers in commerce. We remind the parties:

It is intended that the filings in Board proceedings be publicly available

and the improper designation of materials as confidential thwarts that

intention. It is more difficult to make findings of fact, apply the facts to the

law, and write decisions that make sense when the facts shown by the

evidence may not be discussed. The Board needs to be able to discuss the

evidence of record, unless there is an overriding need for confidentiality, so

that the parties and a reviewing court will know the basis of the Board’s

decisions.

Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413,

1416 n.21 (TTAB 2016).

“The Board may treat as not confidential that material which cannot reasonably

be considered confidential, notwithstanding a designation as such by a party.”

Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g), quoted in ARSA Dist., Inc. v. Salud

Natural Mexicana S.A. de C.V., 2022 USPQ2d 887, *6 n.15 (TTAB 2022). See also

TBMP § 412.01(c) (“The fact that the Board’s standard protective order is

automatically entered upon commencement in the proceeding does not give a party

unbridled authority to designate its filed submissions to the Board as protected. …

The Board may disregard the designation as ‘confidential’ for those matters which

are improperly designated….”). Due to the improper designation of all record

testimony as confidential, we resort to this rule and discuss evidence that cannot be

reasonably termed confidential and is necessary to support our decision.

IV. Entitlement to a Statutory Cause of Action

Under Section 14 of the Trademark Act, “[a] petition to cancel a registration of a

mark, stating the grounds relied upon, may … be filed as follows by any person who

believes that he is or will be damaged… by the registration … (3) [a]t any time if the

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Cancellation No. 92076586

registered mark becomes the generic name for the goods or services, … or has been

abandoned, or its registration was obtained fraudulently….” 15 U.S.C. § 1064, cited

in Meenaxi Enter., Inc. v. Coca-Cola Co., 38 F.4th 1067, 2022 USPQ2d 602, * 3 (Fed.

Cir. 2022).

Petitioner’s Petition for Cancellation asserts all three of these grounds for

cancellation.30 Petitioner may not, however, rest on its allegations. Rather, it “must

maintain its entitlement to the statutory cause of action throughout the proceeding

and affirmatively prove its existence at the time of trial by introducing evidence to

support the allegations in its pleading that relate to such entitlement as an element

of its case-in-chief.” Philanthropist.com, Inc. v. Gen. Conf. Corp. of Seventh-Day

Adventists, 2021 USPQ2d 643, *11 (TTAB 2021), aff’d mem., 2022 WL 3147202 (Fed.

Cir. Aug. 8, 2022). To establish entitlement, Petitioner must demonstrate (i) an

interest falling within the zone of interests protected by the statute and (ii) a

reasonable belief in damage proximately caused by the registration or continued

registration of the mark. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020

USPQ2d 11277, *4 (Fed. Cir. 2020); Spanishtown Enters., Inc. v. Transcend

Resources, Inc., 2020 USPQ2d 11388, *1 (TTAB 2020); Kimberley Kampers IP Pty Ltd

v. Safiery Pty Ltd, 2022 USPQ2d 1036, *3-4 (TTAB 2022).

Respondent’s cease and desist letter, introduced during the Rule 30(b)(6)

deposition of its corporate designee,31 serves to establish Petitioner’s interest falling

30 1 TTABVUE 4-8.

31Gray depo. 62:17-20, 24 TTABVUE 22, 45 TTABVUE 168, cease and desist letter, 47

TTABVUE 246-49.

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Cancellation No. 92076586

within the zone of interests protected by Section 14 of the Trademark Act, and its

reasonable belief in damage proximately caused by the continued registration of

Respondent’s CS mark. See Int’l Dairy Foods Ass’n v. Interprofession du Gruyère and

Syndicat Interprofessionnel du Gruyère, 2020 USPQ2d 10892, *11 (TTAB 2020)

(standing found where applicant sent opposer cease and desist letters), aff’d, 575 F.

Supp. 3d 627 (E.D. Va. 2021), aff’d, 61 F.4th 407, 2023 USPQ2d 266 (4th Cir. 2023);

Miller v. Miller, 105 USPQ2d 1615, 1619 (TTAB 2013) (“These cease and desist letters

[from applicant to opposer] provide additional evidence that opposer has business

interests that have been affected, i.e., a real interest in the proceeding, and thus, has

standing.”) cited in Apollo Medical Extrusion Technologies, Inc. v. Medical Extrusion

Tech., Inc., 123 USPQ2d 1844, 1848 (TTAB 2017).

Petitioner’s advertising, attached to the cease and desist letter, further establishes

its status as a potential competitor to Respondent. Peterson v. Awshucks, 2020

USPQ2d 11526, at *6 (entitlement to a statutory cause of action found where

petitioner and respondent are competitors), cited in Mystery Ranch v. Terminal

Moraine, 2022 USPQ2d 1151, at *17. See also Herbko Int’l v. Kappa Books, 308 F.3d

1156, 64 USPQ2d 1375, 1377 (Fed. Cir. 2002) (“[i]n most settings, a direct commercial

interest satisfies the ‘real interest’ test”), quoted in Monster Energy Co. v. Lo, 2023

USPQ2d 87, *10 (TTAB 2023).

Accordingly, Petitioner has demonstrated its entitlement to institute and

maintain this cancellation proceeding under Section 14 of the Trademark Act. 15

U.S.C. § 1064.

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Cancellation No. 92076586

V. Abandonment

A. Applicable Law

“[T]he Lanham Act was not intended to provide a warehouse for unused marks.”

Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1394

(Fed. Cir. 1990). The Act accordingly provides for canceling a registration at any time

if the registered mark has been abandoned. Rivard v. Linville, 133 F.3d 1446, 45

USPQ2d 1374, 1376 (Fed. Cir. 1998) (citing 15 U.S.C. § 1064(3)). This provision

permits the abandoned mark to return to the public domain, so it may be used by

others in the marketplace. Exec. Coach Builders, Inc. v. SPV Coach Co., Inc., 123

USPQ2d 1175, 1180 (TTAB 2017).

Under Section 45 of the Trademark Act, a mark shall be deemed to be abandoned:

(1) When its use has been discontinued with intent not to resume such use.

Intent not to resume may be inferred from circumstances. Nonuse for 3

consecutive years shall be prima facie evidence of abandonment. “Use”

of a mark means the bona fide use of such mark made in the ordinary

course of trade, and not made merely to reserve a right in a mark.

15 U.S.C. § 1127.

Under the statute, there are two elements to a nonuse abandonment claim: (1) use

of the mark has been discontinued, (2) with intent not to resume use. Tiger Lily

Ventures Ltd. v. Barclays Cap. Inc., 35 F.4th 1352, 2022 USPQ2d 513, *4 (Fed. Cir.

2022). Proof of these elements is a matter of fact, not speculation. Cerveceria

Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 13 USPQ2d 1307,

1310 (Fed. Cir. 1989); Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd.,

126 USPQ2d 1526, 1532-33 (TTAB 2018).

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Cancellation No. 92076586

Since a mark registered on the Principal Register is presumed to be valid, 15

U.S.C. § 1057(b), “the burden of persuasion in a cancellation proceeding rests on the

party seeking to cancel the registration. … A party seeking to cancel a registration

must overcome the registration’s presumption of validity by a preponderance of the

evidence.” Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92

USPQ2d 1626, 1628 (Fed. Cir. 2009) (citing Cerveceria Centroamericana, 13 USPQ2d

at 1309 and W. Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31 USPQ2d 1660,

1665-66 (Fed. Cir. 1994)).

If a petitioner can show three consecutive years of nonuse, it establishes a prima

facie showing of abandonment, creating a rebuttable presumption that use of the

mark was discontinued with intent not to resume use. On-line Careline v. Am. Online,

56 USPQ2d at 1476; ARSA v. Salud, 2022 USPQ2d 887, at *24-25. The burden of

production (i.e., going forward) then shifts to the respondent to produce evidence that

it either used the mark or that it intended to resume use. The burden of persuasion

remains with the petitioner, the party attempting to prove abandonment by a

preponderance of the evidence. Imperial Tobacco v. Philip Morris, 14 USPQ2d at

1393; Peterson v. Awshucks 2020 USPQ2d 11526, at *9. If Petitioner does not prove

three consecutive years of nonuse, it must prove both elements without the aid of a

presumption—that is, that Respondent discontinued use of its mark with intent not

to resume such use. Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409,

*15 (TTAB 2019).

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Cancellation No. 92076586

B. Summary of the Parties’ Arguments

Respondent states it introduced the Peavey CS amplifiers to the market in the

1970’s, regularly updating the series thereafter.32

Petitioner Adamson acknowledges that the amplifiers were popular in the 1980’s,

but contends as follows:

• In the early 2000s, Respondent Peavey stopped manufacturing the CS

amplifiers in the United States and outsourced their manufacture to a firm in

China.33 Respondent also stored the CS amplifiers in a Chinese warehouse.

• In 2013, Respondent Peavey stopped promoting the CS amplifiers in the

United States.34 After 2013, CS amplifiers were entirely absent from its

catalogs.35 By 2015, consumers were posting on Respondent’s message boards

about CS amplifiers no longer being available. Respondent’s responses on the

message boards directed them to a different line of amplifiers.36

• Respondent’s domestic U.S. sales of the CS amplifiers dwindled to a few in

2016-2017, then none from 2018 through 2020, then a single digit in 2021.37

32 Respondent’s brief, 30 TTABVUE (confidential), 31 TTABVUE 11 (redacted). Hereafter,

Respondent’s brief will be cited as 30, 31 TTABVUE.

33 Petitioner’s main brief, 28, 29 TTABVUE 13, 18.

34 Id. at 13.

35 Id. at 10, 23.

36 Id. at 10, 24.

37 Id. at 10, 18. We omit Petitioner’s specification of the exact number of Respondent’s annual

sales, as Petitioner’s cited source for that information was appropriately designated as

confidential. We note that Respondent’s brief does not object to improper use of confidential

information by Petitioner. Where, in any publicly accessible filing, a party has cited, quoted

from, or described, without redaction, testimony or documents that it has designated as

confidential, or that its adversary has designated as confidential and the adversary has not

subsequently objected, the Board may treat this as a waiver of the claim of confidentiality as

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Cancellation No. 92076586

• In February 2021, Respondent’s U.S. website stated that its CS amplifiers

were no longer available. After Petitioner Adamson’s counsel responded to

Respondent’s cease and desist letter, Respondent removed that page from its

website and added information about its CS amplifiers.38

Petitioner concludes that “[t]hese facts are uncontroverted, and establish a period

of nonuse in the United States of at least three years—if not since 2016, then at least

throughout 2018 and 2020.”39

Respondent rejoins as follows:

• Since 2012, Respondent has sold a significant amount of CS Series power

amplifier units.40

• Between 2016 and 2021, there were, in addition to the sales identified above

by Petitioner, single-digit sales of CS amplifiers to dealers in Puerto Rico in

2016 and 2020, and an auction sale of surplus items in 2019.41

• Respondent sells its amplifiers primarily through its network of independent

dealers. And two of Respondent’s dealers indicated in handwritten notes that

each still has a CS Series amplifier in inventory.42

• There is an active warranty and repair business for CS amplifiers.43

to the content and subject matter of the pertinent materials. Kohler Co. v. Honda Giken Kogyo

K.K., 125 USPQ2d 1468, 1475 n.17 (TTAB 2017) and TBMP 703.02(a).

38 Id. at 11, 24.

39 Id. at 18.

40 Respondent’s brief, 30, 31 TTABVUE 15.

41 Id. at 15, 26.

42 Id. at 13-14, 16.

43 Id. at 11, 16, 27.

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Cancellation No. 92076586

• Respondent promoted CS Series products at the two National Association of

Music Merchants trade shows it attended each year until the pandemic struck

in 2020.44

• Respondent was planning to debut a new CS series amplifier at the June 2022

National Association of Music Merchants trade show, but was delayed by the

pandemic, which disrupted global supply chains.45

Respondent concludes that “petitioner cannot establish a prima facie case. As a

result, Registrant’s intent to resume use never comes into play (as the use of the

subject mark never ceased). Assuming arguendo that the intent to resume was at

issue, Registrant has demonstrated a bona fide intent to resume the usage of the

mark at issue.”46

C. Analysis

After reviewing all the evidence and arguments, we find that Petitioner Adamson

has established a prima facie case of abandonment, and that Respondent Peavey has

not overcome that presumption.

Trademark rights arise from the use of a mark in connection with particular goods

or services. Bertini v. Apple, 63 F.4th 1373, 2023 USPQ2d 407, *5 (Fed. Cir. 2023)

(citing B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 135 S. Ct. 1293, 113

USPQ2d 2045, 2048 (2015)). As the United States Supreme Court has declared,

“There is no such thing as property in a trade-mark except as a right appurtenant to

44 Id. at 13.

45 Id. at 12, 27-28.

46 Id. at 9.

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Cancellation No. 92076586

an established business or trade in connection with which the mark is employed.”

United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 39 S. Ct. 48 (1918), quoted in

Meenaxi v. Coca-Cola, 2022 USPQ2d 602, at *5.

Respondent’s CS mark registered on February 2, 1988, before passage of the

Trademark Law Revision Act (TLRA). Even then, token sales and sporadic, casual,

and nominal shipments of goods bearing a mark were insufficient to avoid a prima

facie finding of abandonment. Cont’l Grain Co. v. Strongheart Prods., Inc., 9 USPQ2d

1238, 1240 (TTAB 1988) (collecting cases); see also Nabisco Inc. v. Wm. Wrigley Jr.

Co., 40 USPQ2d 1251, 1257 (TTAB 1995) (citing TTAB decisions). “The pre-TLRA

cases remain instructive because if a use does not meet the old pre-1989 ‘token use’

standard, then it certainly will not rise to the higher level of ‘use’” set forth in the

TLRA. 3 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 19:111 (5th ed. Sept.

2023).

The statutory definition of “abandonment” reiterates the standard of “use in

commerce,” in effect since 1989 under the TLRA: “‘Use’ of a mark means the bona fide

use of such mark made in the ordinary course of trade, and not made merely to

reserve a right in a mark.” 15 USC § 1127, quoted in Abitron Austria GmbH v.

Hetronic Int’l, Inc., 600 U.S.__, 143 S.Ct. 2522, 2023 USPQ2d 760, *11 (2023). “The

Board has reviewed the legislative history of the TLRA and found that the stricter

standard for use in commerce contemplates ‘commercial use of the type common to

the particular industry in question.’ Paramount Pictures Corp. v. White, 31 USPQ2d

1768, 1774 (TTAB 1994), aff’d mem., White v. Paramount Pictures Corp., 108 F.3d

1392 (Fed. Cir. 1997).” Lewis Silkin LLP v. Firebrand LLC, 129 USPQ2d 1015, 1018

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Cancellation No. 92076586

(TTAB 2018). “The word ‘commerce’ means all commerce which may lawfully be

regulated by Congress.” 15 U.S.C. § 1127, quoted in In re National Concessions Group,

Inc., 2023 USPQ2d 527, *2 (TTAB 2023). “The types of commerce encompassed in this

definition are interstate, territorial, and between the United States and a foreign

country.” TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 901.03 (July

2022).

The issue, then, is whether Respondent made bona fide use of its mark in

commerce during the alleged period of nonuse: 2016 to 2021. As noted, Respondent,

instead of submitting testimonial declarations or depositions of its own, chose to rely

on the discovery deposition of its Chief Operating Officer, Courtland Gray, taken in

late December 2021, at the end of the period of alleged nonuse. The notice of

deposition topics included, inter alia:

1. [Respondent] Peavey’s domestic (U.S.) sales of goods bearing the CS

Mark, both directly and indirectly through distributors, retailers, or

wholesalers, from 2012 to the present.

2. Peavey’s future plans for the domestic (U.S.) manufacture, promotion,

or sale of goods bearing the CS Mark.47

Mr. Gray pronounced himself capable of testifying as Respondent’s corporate

designee on all of the topics listed in Petitioner’s notice of deposition.48 In the course

of his deposition, he testified as follows:49

47 Gray deposition transcript and exhibits, 16, 17 TTABVUE 11.

48 Id., 10:6-8, 17 TTABVUE 32.

49 With the exception of Respondent’s annual sales of goods under the mark, which we

describe generally in accord with the confidential designation, we do not find that Mr. Gray’s

testimony listed here could reasonably be described as confidential.

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Cancellation No. 92076586

• Since the late 1990s or early 2000s, CS amplifiers have been manufactured in

China.50 They could be stored in a China bonded warehouse.51

• CS amplifiers did not appear in Respondent Peavey’s product catalogs after

2013.52 In 2015, one of Respondent’s customer service representatives

recommended Crest amplifiers instead of CS because, according to Mr. Gray,

“we were possibly out of stock.”53

• Respondent sold the CS amplifiers primarily through its dealer network.54 It

does not keep track of dealer sales to end consumers,55 but it does keep track

of its sales to its dealers on its SAP software system.56 The underlying invoices

are kept in its SAP software system.57

• Respondent did not produce the underlying invoices of its sales of CS amplifiers

to dealers; instead, it produced two SAP spreadsheets summarizing its sales.

The first (Gray dep. exhibit 5) shows annual unit sales from 2010 to 2021, and

the second (Gray dep. exhibit 9) shows annual dollar amounts of sales from

2012 through 2021.58

• The spreadsheets corroborated Petitioner’s position that Respondent had

little or no domestic sales of CS amplifiers during the alleged period of

nonuse. Exhibit 9 showed a total of three sales of CS amplifiers in the

50 Id., 19:7-15, 17 TTABVUE 39.

51 Id., 40:18-22, 17 TTABVUE 87.

52 Id., 22:10-11, 17 TTABVUE 41.

53 Id., 29:6-17, 17 TTABVUE 46.

54 Id., 24:19-21, 17 TTABVUE 42.

55 Id., 26:1-11, 17 TTABVUE 43.

56 Id., 26:12-14, 26:23-27:7, 17 TTABVUE 43-44.

57 Id., 36:11-13, 43:10-12, 17 TTABVUE 84, 89.

58 Id., Exhibit 5, 17 TTABVUE 3-5 (designated “Attorneys’ Eyes Only”), Gray dep. 34:2-14, 17

TTABVUE 82. Exhibit 9, 16 TTABVUE 20; Gray dep. 58:22-59:7, 17 TTABVUE 49-50.

Additional testimony concerning the various categories and entries in these exhibits may be

found at Gray dep. 34:23-36:10, 37:20-38:5, 38:11-39:15, 40:18-41:24, 43:16-44:10, 58:22-

59:22, 60:17-22, 106:19-107:4, 107:20-108:4; 24 TTABVUE 15-17, 21, 33.

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Cancellation No. 92076586

United States in 2016 and 2017.59 Referring to the Exhibit 9 spreadsheet,

Petitioner’s counsel asked Mr. Gray: “Q. Why is there no domestic column

for 2018, ’19 or ’20?

A. Probably didn’t have inventory.”60

• Deposition Exhibit 32 contained an online auction sales list, including one

pallet, number 417, described as

61

Pallet 417 purportedly had CS amplifier units.62 Mr. Gray was asked:

Q. Were they things that have kind of been sitting around for a while?

A. Some of them were, yeah.63

…

Q. And was everything from this auction sold?

A. I don’t think everything was sold, no.64

Q. … And we can’t tell from this how many of them were CS versus another

type. Correct?

A. No.65

…

A. We would not have any way to know with SAP,

59 Gray dep. 43:16-25, 44:3-10, 17 TTABVUE 89-90. Exhibit 9 confirmed that the two CS

amplifiers were sold in 2017 for a total of $817. Id., 59:10-14, 17 TTABVUE 50.

60 Id., 59:20-22, 17 TTABVUE 50.

61 Exhibit 32, 45 TTABVUE 124. Gray dep., 108:5-18, 17 TTABVUE 72.

62 Id., 110:4-10, 45 TTABVUE 280.

63 Id., 109:18-25, 45 TTABVUE 279.

64 Id., 109:5-6, 45 TTABVUE 279.

65 Id. 110:18-20, 45 TTABVUE 280.

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Cancellation No. 92076586

you know, which -- how many or what was on that pallet.66

• Exhibit 32 to the Gray deposition also shows single-digit sales to two Puerto

Rican dealers—one in 2016 and the other in 2020.67 Mr. Gray opined that the

sales to a U.S. protectorate would be considered domestic, but did not explain

why the sales failed to appear on Exhibit 5, showing unit sales, or Exhibit 9,

showing dollar amounts of sales.68

• There was one domestic sale of a CS amplifier in 2021, according to the Exhibit

9 spreadsheet.69 As of February 2021, Respondent’s U.S. website stated that

its CS amplifiers were no longer available, and urged customers to “check out”

other products. After Petitioner Adamson’s counsel responded to Respondent’s

cease and desist letter, Respondent revised its website. Mr. Gray was asked:

“Q. Did Peavey make that change in response to the correspondence

from Adamson?

A. That may have had something to do with it.”70

• As of December 2021, when the deposition was taken, Mr. Gray estimated that

the current U.S. inventory for CS amplifiers was “a few,” less than ten. 71

Respondent also submitted two handwritten notes it elicited from dealers in

2021, each attesting that it still had a single CS amplifier in stock.72

• Mr. Gray was asked, “Q. … [A]re you aware of any other dealers that are

currently stocking CS amps?

A. I don’t know.”73

66 Id. 111:9-10, 45 TTABVUE 281.

67 Ex. 32, 45 TTABVUE 128.

68 Gray dep. 112:19-22, 45 TTABVUE 282.

69 Id. 60:17-22, 106:2-107:25, 17 TTABVUE 51, 70-71.

70 Id., 63:21-65:2, 17 TTABVUE 53-55.

71 Id., 61:1-8, 17 TTABVUE 52.

72 Id., exhibits 20 and 21, 78:6-12, 80:9-12, 45 TTABVUE 190, 192. We note that the

handwritten notes could have been submitted as testimonial declarations. See generally

TBMP § 703.01(a). In their current form, they constitute nothing more than hearsay, and will

be given no consideration.

73 Id. 85:14-18, 17 TTABVUE 63.

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Cancellation No. 92076586

Altogether, based on the evidence, we find that Respondent’s sporadic, casual, and

nominal use of the CS mark on amplifiers from 2016 through 2021 would not even

meet the lower, pre-TLRA standard of use in commerce, much less the current higher

standard of bona fide use made in the ordinary course of trade. 15 U.S.C. § 1127.

Respondent’s assertion in its trial brief that “[s]ince 2012, [a significant number

of] CS Series power amplifier units have been sold”74 is based on its own interrogatory

answer.75 A party’s submission of its own interrogatory answer is not an appropriate

way to introduce evidence. Trademark Rule 2.120(k)(5) (“[A]n answer to an

interrogatory … may be submitted and made part of the record only by the receiving

or inquiring party….”).

However, Respondent’s Exhibit 5 spreadsheet, which is properly in evidence,

albeit confidential, explains that Respondent’s calculations are overly expansive

chronologically, including sales from 2012-2015, before the relevant 2016-2021

time frame, and geographically, including international shipments of its Chinese-

manufactured goods from its China warehouse to non-U.S. buyers.76 If we restrict the

parameters of our inquiry to domestic sales from 2016 through 2021, Exhibit 5,

though confidential, tends to corroborate Petitioner’s calculations. The Exhibit 9

spreadsheet, also properly in evidence, encompasses the same expansive time frame

of 2012-2021, and international as well as domestic sales. It indicates a total of three

domestic sales in 2016, 2017, and 2021—averaging one per year—and completely

74 Respondent’s brief, 30, 31 TTABVUE.

75 Respondent’s answer to interrogatory no. 4, 43 TTABVUE 125.

76 Gray dep. Exhibit 5, 17 TTABVUE 3-5.

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Cancellation No. 92076586

omits any mention of domestic sales in 2018-2020.77

This evidence indicates that there was bona fide domestic use of the CS mark on

amplifiers in the ordinary course of trade from 2012 through 2015. In the 2012-2015

period, Respondent’s domestic sales, measured in dollar amounts, were in the five-to-

six figure range annually.78 But after 2013, when Respondent last advertised the CS

amps in its domestic catalogs, domestic sales plummeted, rapidly dwindling to single

digits and then zero at some points in the critical 2016-2021 time frame.79

What constitutes “bona fide use of the mark in the ordinary course of trade” may

vary over time as markets and businesses change. Lewis Silkin v. Firebrand, 129

USPQ2d at 1018; see also M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 114

USPQ2d 1892, 1898 (Fed. Cir. 2015) (“Congress expressly rejected inclusion of a

statutory definition for ‘bona fide’ in order to preserve ‘the flexibility which is vital to

the proper operation of the trademark registration system.’”) (citation omitted). But

Respondent’s de minimis domestic use of the CS mark on amplifiers clearly fell below

that standard.

Respondent tries to liken its de minimis domestic sales to Person’s Co. v.

Christman, 900 F.2d 1565, 14 USPQ2d 1477 (Fed. Cir. 1990), which noted that

“[a]lthough [apparel] sales by Christman … were often intermittent and the

inventory of the corporation remained small, such circumstances do not necessarily

imply abandonment. There is also no rule of law that the owner of a trademark must

77 Id., Exhibit 9, 16 TTABVUE 20.

78 Id.

79 Id., Exhibits 5 and 9, 17 TTABVUE 3-5, 16 TTABVUE 20.

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Cancellation No. 92076586

reach a particular level of success, measured either by the size of the market or by its

own level of sales, to avoid abandoning a mark.” Id. at 1481 (citing Wallpaper Mfrs.,

Ltd. v. Crown Wallcovering Corp., 680 F.2d 755, 214 USPQ 327, 332 (CCPA 1982))

cited in Tiger Lily v. Barclays, 2022 USPQ2d 513, at *4-5.80 But these cited opinions

are distinguishable from the present case.

In Person’s, the Board found that “[t]he evidence also clearly establishes that

respondent has not abandoned use of the mark. Respondent has had intermittent

sales of products bearing the mark, but periods between sales have never been long

enough to create a presumption of abandonment, inventories of various items of stock

bearing the mark have never been totally exhausted, and there is nothing which

supports petitioner’s argument that respondent had the intent to abandon use of the

mark.” Person’s v. Christman, 9 USPQ2d 1477, 1480 (TTAB 1988).

The Federal Circuit opinion affirmed the Board’s decision in Person’s, and cited

Wallpaper Mfrs. v. Crown Wallcovering, which stated, in turn, that:

To prove bona fide usage, the proponent of the trademark must

demonstrate that his use of the mark has been deliberate and continuous,

not sporadic, casual or transitory ….

Respondent’s … use was certainly deliberate; it was planned, purposeful,

and ... profitable. The use was continuous; it could not remotely be

described as sporadic, casual or transitory.

Wallpaper Mfrs. v. Crown Wallcovering, 214 USPQ at 330-31 (quoting La Societe

Anonyme des Parfums le Galion v. Jean Patou, Inc., 495 F.2d 1265, 181 USPQ 545,

548 (2d Cir. 1974)).

In Tiger Lily v. Barclays (the more recent Federal Circuit decision citing Person’s

80 Respondent’s brief, 30, 31 TTABVUE 23-24.

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Cancellation No. 92076586

and Wallpaper Mfrs.) the party asserting abandonment, Tiger Lily, essentially

conceded that it could not prove nonuse of the subject LEHMAN BROTHERS mark,

as the mark had been used continuously in connection with managing hundreds of

billions of dollars’ worth of assets—investing in, maintaining, and selling a vast

portfolio of commercial real estate, securities, and derivative swaps. Tiger Lily v.

Barclays, 2022 USPQ2d 513, at *5-6.

Here, in contrast, Respondent’s actions evince a purposeful drawing-down of

domestic CS amplifier sales. From 2012-2015, it supplied enough CS amplifier

inventory to support robust domestic sales. It ceased listing CS amplifiers in its

domestic catalog after 2013. By 2015, its customer service representative directed

customers to another amplifier brand. As Mr. Gray testified, the precipitous decline

in CS amplifier sales was due, not to a lack of demand, but a lack of “inventory.”81

Yet notably, international sales from Respondent’s China warehouse remained in the

five-to-six figure range annually from 2012 through 2021.82 So Respondent could have

furnished inventory to the domestic market, but evidently chose not to. By 2021, its

U.S. website stated that the CS amplifier was no longer available.

Respondent tries to liken its de minimis domestic sales from 2016-2021 to

Christian Faith Fellowship Church v. Adidas, where a church’s pre-registration sale

of two hats bearing its mark sufficed to support registration of the mark.83 As

Petitioner correctly observes, however, that case did not concern abandonment, but

81 Gray dep. 59: 20-22, 17 TTABVUE 50.

82 Id., Exhibits 5 and 9, 17 TTABVUE 3-5, 16 TTABVUE 20.

83 Respondent’s brief, 30, 31 TTABVUE 24 & n. 6.

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Cancellation No. 92076586

the scope of commerce that may be regulated by the U.S. Congress.84 Christian Faith

Fellowship Church v. Adidas AG, 841 F.3d 986, 120 USPQ2d 1640 (Fed. Cir. 2016);

Ahal Al-Sara Group for Trading v. American Flash, Inc., 2023 USPQ2d 79, *7-8

(TTAB 2023). Respondent’s sales to dealers in the United States and Puerto Rico fall

within that scope, but from 2016-2021, fell to de minimis or zero, year to year.

Respondent’s international shipments of its Chinese-manufactured goods from its

China warehouse to non-U.S. buyers do not constitute use in commerce within the

meaning of the Trademark Act. See Fiat Group Autombiles S.p.A. v. ISM, Inc., 94

USPQ2d 1111, 1115 (TTAB 2010) (“activity solely outside the United States is

ineffective to create or maintain rights in marks within the United States.”); Linville

v. Rivard, 41 USPQ2d 1731, 1736 (TTAB 1996) (“It is well settled that activity outside

the United States does not create rights in marks within the United

States.”), aff’d, Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998).

See generally TMEP § 901.03; Anthony J. Colangelo, The Foreign Commerce Clause,

96 Va. L. Rev. 949, 954 (2010) (“Foreign commerce that is the subject of federal

regulation therefore must be not only ‘with’ foreign nations, but also ‘with’ the United

States. That is, there must be a U.S. nexus.”).

Overall, looking at the evidence as a whole, as if each piece were part of a puzzle

to be fitted together, W. Fla. Seafood v. Jet Rests., 31 USPQ2d at 1663 (priority

determination), we find that Respondent’s de minimis domestic sales of the CS mark

on amplifiers between 2016 and 2021 are insufficient to constitute bona fide use of

84Petitioner’s reply brief, 39 TTABVUE 20 (confidential), 40 TTABVUE 20 (redacted).

Hereafter, Petitioner’s reply brief will be cited as 39, 40 TTABVUE.

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Cancellation No. 92076586

that mark in the ordinary course of trade. See Executive Coach Builders v. SPV Coach,

123 USPQ2d at 1197 (isolated, de minimis uses insufficient to constitute use of mark

in ordinary course of trade); cf. Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376,

103 USPQ2d 1672, 1677 (Fed. Cir. 2012) (sporadic, casual and nominal use did not

amount to use in the ordinary course of trade).

We find accordingly that Petitioner has established a prima facie case of

abandonment. “The prima facie case eliminates the challenger’s burden to establish

the intent element of abandonment as an initial part of [his] case, and creates a

rebuttable presumption that the registrant abandoned the mark without intent to

resume … use under the statute.” Rivard v. Linville, 45 USPQ2d at 1376 (internal

punctuation omitted). The burden of production (i.e., going forward) then shifts to

Respondent to produce evidence that it has either used the mark or that it has

intended to resume use. Cerveceria Centroamericana v. Cerveceria India, 13 USPQ2d

at 1312 n.6.

Respondent Peavey’s arguments and evidence do not overcome the presumption

of abandonment. Respondent argues that it has “spent millions and millions of dollars

on the advertising and marketing of its products throughout the years.”85 Even

though it could not specify how much of these advertising dollars were attributable

to the CS amplifiers, as opposed to other audio products,86 Respondent asserts that it

“continually advertised and marketed the CS Mark from its inception until today”

85 Respondent’s brief, 30, 31 TTABVUE 14 n. 3.

86 Id.

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Cancellation No. 92076586

including at the National Association of Music Merchants trade show.87

However, “[b]ecause ‘use in commerce’ means that the mark is placed on the goods

and ‘the goods are sold or transported in commerce,’ see Section 45 of the Trademark

Act, 15 US.C. § 1127, advertising and marketing without sales or transporting goods

is not use of the mark.” Noble House v. Floorco, 118 USPQ2d at 1418. See also Clorox

Co. v. Salazar, 108 USPQ2d 1083, 1086 (TTAB 2013) (“The mere use of a trademark

in the advertising or promotion of goods in the United States is insufficient to

constitute use of the mark in commerce, within the meaning of the Trademark Act,

where the advertising or promotion is unaccompanied by any actual sale or transport

of the goods in commerce, as is the case here.”). Moreover, Petitioner did not document

its advertising or expenditures therefor during the period of nonuse, 2016-2021.

Rather, as has been shown, it stopped advertising its CS amplifiers in its domestic

catalogs after 2013. In fact, its deponent, Mr. Gray, testified:

Q. … How does Peavey currently advertise its CS line of products?

A. We aren’t doing any current advertising for

it.

Q. Do you know when the last time was that Peavey

actively advertised CS?

A. I don’t.88

Respondent alludes to the “storied history” of the CS Series, and contends that

“[a] mark is only abandoned when all trademark significance, including residual good

will, is lost.”89 That contention, however, confuses the second part of the

87 Id. at 13.

88 Gray dep. 83:3-10, 17 TTABVUE 61.

89 Respondent’s brief, 30, 31 TTABVUE 12, 19.

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Cancellation No. 92076586

abandonment statute with the first. The second part of the statute provides that a

mark shall be deemed to be abandoned:

(2) When any course of conduct of the owner, including acts of omission as

well as commission, causes the mark to become the generic name for

the goods or services on or in connection with which it is used or

otherwise to lose its significance as a mark.

15 U.S.C. § 1127.

Evidence of residual goodwill can negate this second type of abandonment. Where

“some of the public continued to identify the prior user with the mark, … the record

did not establish that the prior user’s course of conduct had caused the mark to lose

its significance as an indication of origin….” Wallpaper Mfrs. v. Crown Wallcovering,

214 USPQ at 335 (internal punctuation omitted). “[S]o long as at least some

purchasers identify respondent with the registered mark, it cannot be said that

respondent’s course of conduct has caused the registered mark to lose its significance

as a mark.” Woodstock’s Enters. Inc. (California) v. Woodstock’s Enters. Inc. (Oregon),

43 USPQ2d 1440, 1446 (TTAB 1997) cited in Ballet Tech Found., Inc. v. Joyce Theater

Found., Inc., 89 USPQ2d 1262, 1273-74 (TTAB 2008).

However, residual goodwill does not negate a finding of abandonment based on

nonuse. The first part of the statute speaks not to remembrance of things past, but to

use. Under its terms, a mark may be deemed abandoned “(1) [w]hen its use has been

discontinued with intent not to resume such use.” 15 U.S.C. § 1127. In General Motors

v. Aristide, for example, General Motors tried to claim continued rights in the

LASALLE mark for motor vehicles, pleading that:

While no longer in production, Opposer’s LASALLE vehicle has remained

popular with enthusiast[s] and consumers throughout the world and, in

particular, the United States, and continues to be associated in the minds

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Cancellation No. 92076586

of such enthusiasts and consumers with Opposer and its Cadillac Motor

Car Division.

Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179, 1180

(TTAB 2008). The Board nonetheless focused on General Motors’ nonuse of the

mark:

Opposer’s nonuse on automobiles is in excess of sixty years. Indeed,

opposer does not offer any evidence or explanation for its nonuse between

1940 and the early 1990’s. It has not shown that it has used its LASALLE

mark on any goods during this period nor has it provided any explanation

for its plans to resume use of this particular mark on vehicles.

Id. at 1182.

Similarly, in Azeka Building v. Azeka, the opposer contended that “goodwill

associated with the mark has not dissipated since the mark was last used in 2006.”

Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1485 (TTAB 2017). Again the Board

focused on nonuse, finding abandonment: “The testimony clearly shows that Opposer

has not used the mark in the ordinary course of trade for over ten years. Accordingly,

this nonuse for a period in excess of three consecutive years establishes prima facie

abandonment of the mark AZEKA’S RIBS. Opposer does not deny its nonuse of the

mark since 2006.” Id. As some commentators have observed, “United States federal

courts have struggled with the concept of residual goodwill. Some seem hostile to

applying a principle that allows anyone to adopt an abandoned trademark and to

begin using it, yet to date no court has protected a truly abandoned mark on the basis

of residual goodwill, alone.” J. Gilson and A. Gilson LaLonde, The Zombie Trademark:

A Windfall and a Pitfall, 98 Trademark Reporter 1280, 1294 (2008).

Respondent, in its answer to Petitioner’s interrogatory no. 1, states that “Despite

not being actively sold by Peavey, there is an active resellers, repair and

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refurbishment market for these legacy power amplifiers.”90 Respondent submits

third-party online materials downloaded in February 2023 listing CS amplifiers for

rent or sale, or reviewing or discussing them.91 These materials were subject to

Petitioner’s motion to strike,92 but we have considered them for whatever probative

value they are worth.

In short, they are not worth much. First, resales by third parties do not inure to

Respondent’s benefit. A similar situation took place in Gen. Motors v. Aristide, where

car enthusiasts would collect and resell LASALLE cars long after General Motors

ceased producing them. The Board nonetheless stated:

[W]e do not find that there is residual goodwill in the LASALLE

trademark. Opposer’s evidence that there are some car collector clubs that

also collect LASALLE vehicles….

Also, the simple fact that there are collectors of an item does not, by itself,

defeat the statutory presumption of abandonment by the mark’s owner

after three years of nonuse in the ordinary course of trade.

Gen. Motors v. Aristide, 87 USPQ2d at 1183. See also MCCARTHY ON TRADEMARKS AND

UNFAIR COMPETITION 19:139 (Sept. 2023) (“Products originally sold at retail and

offered unused for resale to collectors in small quantities on Internet web sites (such

as eBay) should, in the authors opinion, not qualify as being in “the ordinary course

of trade.”). Second, its third-party online evidence shows nothing more than third-

party advertising and discussion, not sale, of CS amplifiers. See Noble House v.

Floorco, 118 USPQ2d at 1418 (“advertising and marketing without sales or

transporting goods is not use of the mark.”). And third, Respondent downloaded these

90 16 TTABVUE 89.

91 Respondent exhibits 58-68, 48 TTABVUE 92-143.

92 25 TTABVUE 6-9.

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online materials in 2023, long after the period of nonuse. See General Motors v.

Aristide, 87 USPQ2d at 1183-84 (later efforts would represent a new and separate

use, which would not serve to cure the abandonment).

Similarly, the repair and refurbishment of Respondent’s CS amplifiers does not

maintain its rights in the mark, as neither the repair shops nor the parts bear the

brand. Mr. Gray testified:

A. We have an external sales or service

departments, you know, repair places throughout the

country.

Q. Are those Peavey-branded --

A. No.

Q. -- repair shops? I see.

So it’s just an independent repair shop that

repairs Peavey products?

A. Correct. 93

…

Q. Are any of the parts used for the CS amps also

branded CS? And let me know if I need to clarify that.

A. I don’t think any parts are branded CS, no.94

The sale of unbranded replacement parts is insufficient to maintain rights in a

mark. Executive Coach Builders v. SPV Coach, 123 USPQ2d at 1198 (citing Gen.

Motors v. Aristide, 87 USPQ2d at 1186); see also Emergency One, Inc. v. American

FireEagle, Ltd., 228 F.3d 531, 56 USPQ2d 1343, 1347 (4th Cir. 2000). Moreover, as

93 Gray dep. 36:20-37:3, 17 TTABVUE 84-85.

94 Id. 19:19-21, 17 TTABVUE 39.

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the U.S. Court of Appeals for the Federal Circuit stated in a fraud case, In re Bose

Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009):

Mr. Sullivan [Bose’s in-house counsel] explained that in his belief, Bose's

repairing of the damaged, previously-sold WAVE audio tape recorders

and players and returning the repaired goods to the customers met the

“use in commerce” requirement for the renewal of the trademark. The

Board decided that Bose's activities did not constitute sufficient use to

maintain a trademark registration.

***

We agree with the Board, however, that because the WAVE mark is no

longer in use on audio tape recorders and players, the registration needs

to be restricted to reflect commercial reality.

In re Bose Corp., 91 USPQ2d at 1942.

Respondent finally asserts that “the CS Series was scheduled for a planned update

and the groundwork for which began in 2018 until it was hindered by the onset of the

Covid-19 pandemic in 2020, which delayed the intended debut of the updated CS-

series until the June 2022 NAMM show. … there can be no better contemporaneous

example of excusable non-use, as the delay was the result of a killer virus, not the

desire of Registrant.”95 These assertions, however, are unsupported by the evidence.

“A registrant’s proclamations of his intent to resume or commence use in United

States commerce during the period of nonuse are awarded little, if any, weight.”

Rivard v. Linville, 45 USPQ2d at 1376. “In every contested abandonment case, the

respondent denies an intention to abandon its mark; otherwise there would be no

contest.” Imperial Tobacco v. Philip Morris, 14 USPQ2d at 1394. “Thus, to support a

finding of intent to resume use of the mark, the owner must do more than simply

95 Respondent’s brief, 30, 31 TTABVUE 27-28.

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assert a vague, unsubstantiated intent to make use of the mark at some unspecified

time in the future. Rather, the owner must build a record ‘with respect to what

activities it engaged in during the nonuse period or what outside events occurred from

which an intent to resume use during the nonuse period may reasonably be inferred.’”

Yazhong v. Multi-Media, 126 USPQ2d at 1538 (quoting Imperial Tobacco v. Philip

Morris, 14 USPQ2d at 1394-95). The Board may consider evidence regarding

activities that occurred before or after the three-year period of nonuse to infer intent

to resume use during the three-year period. ARSA Dist., Inc. v. Salud, 2022 USPQ2d

887, at *26-27. The presence of business records documenting these activities would

strengthen the registrant’s case, and the absence of such records does the opposite.

Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ 2d 1043, 1053 (TTAB 2017),

cited in Vans, Inc. v. Branded, LLC, 2022 USPQ2d 742, *14-15 (TTAB 2022).

In this case, Respondent’s designee, Mr. Gray, testified that:

[W]e fully intended and intend to come out with,

you know, new technology using -- you know,

for the CS product as well and evolve it.96

He was asked:

Q…Whose decision was it to continue with the

CS nomenclature for this new line of amps?

A. Mine and Fred’s. [Fred Poole, General Manager of Product Development for

Respondent’s North American Sales]

Q. When did you all make that decision?

A. Only about 2018.

Q. So that’s when -- in 2018 is when your plans

started for this new line?

96 Gray dep., 89:21-24, 17 TTABVUE 91.

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A. That’s when we started talking about what the

next evolution would be of it.97

He was unable, however, to adduce contemporaneous records documenting such

plans or preparations:

Q. And are there any records of these

discussions?

A. Not that I’m aware of.98

…

Q. Between your initial discussions with Fred

starting in 2018 and this document [exhibit 23, an overview drafted in 2021 of

what the product would do] is there any other

documentation that we could look at that shows Peavey’s

plans to launch a new CS line?

A. No.99

…

Q. Are you aware of other documents that were

provided to the vendor for purposes of developing the

new CS?

A. I’m not aware of any.100

And even though his deposition took place in December 2021, he admitted:

Q. Does Peavey have a prototype of the CS 8000?

A. Not yet.101

Respondent did not introduce testimony from Fred Poole, even though it identified

him in its answers to interrogatories as a person with knowledge of its current or

97 Id., 92:17-25, 17 TTABVUE 94.

98 Id., 93:6-8, 17 TTABVUE 95.

99 Id., 98:4-8, 17 TTABVUE 100.

100 Id., 102:1-4, 17 TTABVUE 104.

101 Id., 93:13-14, 17 TTABVUE 95.

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intended use of the CS mark in the United States.102 Respondent did not introduce

testimony or documentation about how, if at all, the Covid-19 pandemic impeded its

plans and preparations to resume use of the CS mark on amplifiers in the United

States. As Petitioner notes, “Peavey produced not a single project schedule, internal

or external email, memo, calendar appointment for a meeting—nothing indicating

that it had a launch schedule that became derailed by the pandemic.”103 And

Respondent did not explain how the pandemic supposedly impeded its shipments of

CS amplifiers to the United States, but did not impede shipments from its China

warehouse to international destinations.104 As Petitioner notes, “it appears that while

Peavey stopped promoting and selling CS amplifiers in the U.S., it continued to make

and sell those same amplifiers abroad. Nothing in the record indicates any particular

impediment to Peavey selling CS amplifiers in the U.S.”105

We agree with Petitioner. As the Board has observed in prior abandonment cases,

“[w]ithout credible documentation, Respondent has chosen to rely on … the testimony

of a single witness, and this witness’s testimony is both vague on critical points and

riddled with inconsistencies.” Vans v. Branded, 2022 USPQ2d 742, at *49. “Evidence

of vague discussions concerning the potential use of the mark at some unknown point

102 “2. Identify each person or entity with knowledge concerning (a) your current or intended

use of the CS Mark in the United States; and (b) your manufacturing, sales and marketing

plans for goods or services in the United States that bear or will bear the CS Mark.

Response: Courtland Gray, COO and Fred Poole, General Manager, Product Development,

North American Sales. Peavey reserves the right to amend or supplement its answers and/or

objections if Peavey determines that replacement or supplemental response or objection is

necessary or required.” Respondent’s answers to interrogatory no. 2, 16 TTABVUE 89.

103 Petitioner’s reply brief, 39, 40 TTABVUE 20-21.

104 Gray dep. Exhibits 5 and 9, 17 TTABVUE 3-5, 16 TTABVUE 133-36.

105 Petitioner’s main brief, 28, 29 TTABVUE 26.

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in the future are insufficient to show an intent to resume use.” Azeka Bldg. v. Azeka,

122 USPQ2d at 1488. The probative value of the witness’s testimony is significantly

undermined by his utter lack of detail. Mars Generation, Inc. v. Carson, 2021 USPQ2d

1057, *20 (TTAB 2021). The record is devoid of evidence showing any intention to

resume use of the mark, much less evidence excusing Respondent’s extended period

of nonuse. Rivard v. Linville, 45 USPQ2d at 1377; Auburn Farms, Inc. v. McKee Foods

Corp., 51 USPQ2d 1439, 1445 (TTAB 1999).

In sum, Petitioner has established a prima facie case of abandonment, and

Respondent’s arguments and evidence fall far short of rebutting the presumption of

abandonment. Yazhong v. Multi-Media, 126 USPQ2d at 1539.

Decision

Petitioner has proven by a preponderance of the evidence that Respondent

discontinued use of the registered CS mark on amplifiers with intent not to resume

such use. 15 U.S.C. § 1127. The petition to cancel is granted on the ground of

abandonment, and Registration No. 1486017 will be cancelled in due course.

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