UNITED STATES: Trademark Trial and Appeal Board Cancels Trademark on Scant Evidence of Prior Use

(Originally published in the International Trademark Association – INTABulletin Vol. 73 No. 16)

Contributor: Mark A. Romance
Verifier: Linda Yan Yang

In a precedential decision issued on May 15, 2018, in Kemi Organics, LLC v. Rakesh Gupta (Cancellation No. 92065613), the U.S. Trademark Trial and Appeal Board (the Board) canceled the respondent’s trademark registration holding that the petitioner proved prior use even in the absence of documentary evidence.

The petitioner, Kemi Organics, LLC (Kemi), filed an action to cancel a registration issued to the respondent for the mark KEMI OYL for cosmetics and other uses in International Class 3. The parties stipulated to resolve the case using the summary judgment model of the Board’s Accelerated Case Resolution Procedures and that the evidence would be presented by affidavit and exhibits thereto. They also agreed for purposes of the case that there would be a likelihood of confusion between the parties’ marks. Thus, the main issue to be resolved would be whether the petitioner proved use of its mark in the United States prior to the respondent’s use of his mark.

The petitioner’s evidence included affidavits of its president, its lawyer, and two distributors of hair and skin care products. Documentary evidence included only two magazine advertisements from 1996 and one from 1999 showing a KEMI OYL product, a copy of an image of the KEMI OYL label found using a Google search, canceled trademark registrations, and an abandoned application for a trademark registration.

The Board held that the canceled registrations were evidence that the registrations were issued but were not evidence of “use” of the marks. Similarly, the Board held that the advertisements showed only that products bearing the KEMI OYL marks were being advertised; they did not show “use” of the mark, and the product label did not show use prior to the respondent’s use of the mark. Thus, according to the Board, the documentary evidence did not support evidence of prior use, leaving only the uncorroborated affidavits of Kemi’s resident and distributors as evidence of prior use.

However, the Board held that although the evidence was “sparse,” in considering evidence of prior use, the Board had to “look at the evidence as a whole, as if each piece of evidence were part of a puzzle which, when fitted together, establishes prior use.” Quoting West Fla. Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122 (Fed. Cir. 1994). Holding that the president’s affidavit was “far from being a model of clarity or completeness,” and “not accompanied by the type or quantity of documentary evidence that one would expect to be readily available to show the use of the mark,” his testimony was not contradicted, and the record provided no basis to disregard or discount his testimony. Further, the Board held that the third-party distributor witnesses corroborated the president’s testimony on prior use. In the absence of any contrary testimony, fruits of discovery or documentary evidence establishing non-use of the KEMI Oyl mark, the petitioner’s evidence of prior use was unrebutted.

The respondent also argued that the petitioner’s evidence failed to show “continuous” use of the mark. However, the Board held that continuous use is not required. Rather, Section 2(d) of the Trademark Act, 15 U.S.C. Section 1052(d), which authorizes the Board to cancel a registered mark, limits the analysis to whether the mark was “previously used” not “continuously” used.

This decision shows that testimony of prior use can be sufficient to support cancellation even in the absence of documentary support for the testimony.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

Contributing Attorneys

Romance, Mark A. – Shareholder