Decision Of The Day: Diddy persuades Trademark Office to cancel owner's registration of DIRTY MONEY based on extended non-use

Posted by Charles Colman

Decision Of The Day: Sean Combs v. All Surface Entertainment, Inc., Cancellation No. 92051490 (T.T.A.B. 2012) (non-precedential).  In this decision, the Trademark Trial and Appeal Board grants musical artist and fashion entrepreneur Sean "Diddy" Combs' petition to cancel a third party's trademark registration for DIRTY MONEY, in connection with apparel, on the grounds of abandonment/non-use.  Key excerpts below, followed by the full opinion.  Look out for a rare flash of snark from the TTAB in the second-to-last paragraph excerpted...


Petitioner, Sean Combs, seeks to cancel respondent’s registration 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'....

A petitioner for cancellation of a registration on the ground of abandonment bears the burden of proving such abandonment by a preponderance of evidence.... [Once a petitioner makes a prima facie showing, there arises] a rebuttable presumption that the registrant abandoned the mark without intent to resume or commence use under the statute.  This presumption shifts the burden to the registrant to produce evidence that he either used the mark during the statutory period or intended to resume or commence use.... [M]ere proclamations of intent to resume use or commence use during the period of nonuse are given little, if any, weight....


It is respondent’s position that it never intended not to resume use and has valid reasons for any periods of nonuse, including a purposeful effort to launch the brand at a time when the climate of the 'street wear' community would be receptive to such a brand and the limited ability of respondent’s president to focus on the brand while producing another brand at the same time....


Respondent asserts that the following actions illustrate the intent to resume use of the trademark: searching for and negotiating with potential licensing partners and brand spokespersons; researching ways to introduce new collections of the brand; test marketing new t-shirt and hat designs; pursuing infringers; renewing registration of the trademark; and actually resuming use of the trademark....


[However,] the testimony regarding the search for licensing partners and a spokesperson is vague and inconsistent, and not corroborated by testimony of others [or concerns activity pre-dating the period of alleged abandonment, and is thus too early to 'count'.] [T]the testimony regarding interaction with sales people at Magic is [likewise] very vague [as it] does not include a specific timeframe or names of individuals....


Respondent points to its policing efforts as evidence of an intent to resume use, which consists of one cease and desist letter sent in 2006 [and another letter sent after the filing of the cancellation petition, which is too late to 'count'.]  His evidence of t-shirt sales relates to his other company, does not fall within the relevant timeframe, and/or is supported only by self-serving and conclusory testimony.]


[Respondent argues that he had valid reasons for non-use, but simultanously] testifies that such a long delay (2003-2009) between developing the design and launching a brand is not standard for the industry.  He explains that it simply shows 'how ahead of the time Dirty Money is.'... Taken as a whole the record shows at most that for seventeen years he waited for the market to catch up to the DIRTY MONEY idea, [the Respondent did engagement in business development efforts for his other brand, MILKCRATE.]  This describes a business choice to go forward with one brand and warehousing the other brand.... '[N]ot every business reason excuses nonuse.'


Once deemed abandoned, a registration will be cancelled even if registrant later resumes commercial use.... Re-adoption of a mark after abandonment represents a new and separate use and cannot cure the abandonment.... In view [of the evidence], petitioner has met its burden to establish that respondent abandoned the mark DIRTY MONEY [and its trademark registration will be cancelled.]

 

 

 

 

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