“[A]bandonment being in the nature of a forfeiture, must be strictly proved.” Reversing the TTAB, the CCPA held that where the petitioner could not conclusively prove the respondent’s non-use for the statutory period (then, 2 years), the presumption of abandonment did not apply
How later courts described this case
- “[A]bandonment being in the nature of a forfeiture, must be strictly proved.” Reversing the TTAB, the CCPA held that where the petitioner could not conclusively prove the respondent’s non-use for the statutory period (then, 2 years), the presumption of abandonment did not apply
- “Normally, if evidence were submitted on an issue without objection by registrant, and both sides presented arguments thereon, then, in accordance with Fed. R. Civ. P. 15(b), the Petition for Cancellation would be treated as amended to conform to the evidence.”
- “[T]he inference of abandonment is readily rebutted by a showing that such nonuse was due to special circumstances which excuse the same and not due to any intention to abandon the mark.”
- no inference of abandonment when registrant’s last date of use is less than two years prior to the date when registrant answered petitioner’s interrogatory
Written by the judges who cited it.
The opinion
MILLER, Judge,
concurring in part and dissenting in part.
Although agreeing with the result reached by the majority opinion on the two-year nonuse issue, I cannot agree that Fed.R.Civ.P. 15(b) should not apply. If registrant really considered that it did not have fair notice that petitioner was attempting to establish a two-year period of nonuse beginning July 12, 1973, it should have moved for reconsideration. However, as pointed out by the majority, the burden was on petitioner to show nonuse for two consecutive years and to fill the gap between June 23, 1975, and July 12, 1975, by evidence rather than by implication. Under Fed.R.Civ.P. 26(e)(3), petitioner could have requested supplementation of registrant’s prior response for this purpose.
The “scant record,” as the majority puts it, is not sufficient to support the board’s conclusion that registrant’s shipments were so minimal that the specter is raised that they were contrived for maintenance of registration rather than to establish a commercial market in this country. However, neither is the record adequate for making new law on “balance of the equities,” as the majority proposes to do. The case should be remanded for development of an adequate record, with particular emphasis on appellee-petitioner’s burden of showing token use and appellant-registrant’s burden of explaining and justifying such use.