Mailed: October 5, 2012
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______Sean Combsv. All Surface Entertainment, Inc._____Cancellation No. 92051490to Registration No. 2814750registered on February 17, 2004_____John A. Squires of Chadbourne & Parke LLP for Sean Combs.Gary Adelman of Meister Seelig & Felin LLP for All SurfaceEntertainment Inc.______Before Kuhlke, Quinn and Mermelstein, AdministrativeTrademark Judges.Opinion by Kuhlke, Administrative Trademark Judge:Petitioner, Sean Combs, seeks to cancel respondent’sregistration for the mark DIRTY MONEY in typed form for“men’s and women’s clothing, namely, t-shirts, sweatshirts,hats, headwear, jackets, jeans and pants.”
1
1
Registration No. 2814750, filed on March 17, 2003, issued onFebruary 17, 2004, claiming a date of first use anywhere and adate of first use in commerce of October 10, 1994. A Section 8affidavit was filed on October 5, 2009 and accepted on October15, 2009.
THIS OPINION IS NOT APRECEDENT OF THE TTAB
Cancellation No. 92051490
2 As grounds for cancellation, petitioner alleges thatrespondent has abandoned use of its mark on all of theidentified goods
because it has discontinued use with anintent not to resume such use. Petitioner also alleges thathe filed an application for the standard character markDIDDY-DIRTY MONEY and that respondent’s registration hasbeen cited as a bar to registration of petitioner’s mark.
2
In its answer, respondent denies the allegations of thepetition to cancel and further asserts that it has notabandoned use of its mark DIRTY MONEY.
PROCEDURAL HISTORY
On November 24, 2010, petitioner filed a motion forsummary judgment on the claim of abandonment. Respondentcross-moved for summary judgment in its favor onpetitioner’s claim of abandonment and on the issue ofpetitioner’s standing. On May 13, 2011, the Board grantedpetitioner’s motion for summary judgment in part. The Boarddetermined that petitioner established his standing and aprima facie case of abandonment based on respondent’s nonusefrom February 17, 2004 to February, 2009. Thus, the soleremaining issue for final determination is respondent’s
2
Application Serial No. 77751393, filed on June 3, 2009, for thegoods “clothing, namely, t-shirts, hooded sweatshirts, jackets,sweatshirts; headwear” is based on an allegation of a bona fideintention to use the mark in commerce under Trademark Act Section1(b), 15 U.S.C. § 1051(b).
Cancellation No. 92051490
3rebuttal of the presumption of abandonment based on anintent to resume use.
ABANDONMENT/INTENT TO RESUME USE
Abandonment of a mark occurs:When its use has been discontinued with intent notto resume such use. Intent not to resume may beinferred from circumstances. Nonuse for 3consecutive years shall be prima facie evidence ofabandonment. "Use" of a mark means the bona fideuse of such mark made in the ordinary course oftrade, and not made merely to reserve a right in amark.Trademark Act Section 45, 15 U.S.C. § 1127. A petitioner for cancellation of a registration on theground of abandonment bears the burden of proving suchabandonment by a preponderance of evidence. CerverceriaCentroamericana S.A. v. Cerveceria India Inc., 892 F.2d1021, 13 USPQ2d 1307 (Fed. Cir. 1989). However, “[o]nce aprima facie case is established, this ‘eliminates thechallenger’s burden to establish the intent element ofabandonment as an initial part of [his] case,’ and creates arebuttable presumption that the registrant abandoned themark without intent to resume or commence use under thestatute. This presumption shifts the burden to theregistrant to produce evidence that he either used the markduring the statutory period or intended to resume orcommence use. The burden of persuasion, however, alwaysremains with the petitioner to prove abandonment by apreponderance of evidence.” Rivard v. Linville, 133 F.3d
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Sean Combs v. All Surface Entertainment, Inc., Cancellation No. 92051490 (T.T.A.B. 2012) (DIRTY MONEY)
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