The Board granted a petition for cancellation of a registration
for the mark SHOTTAS for clothing, video games,
and entertainment services, finding that Respondent Richard Effs
was not using the mark on the identified goods and services when he
filed his statement of use. Effs admitted in his testimony that
"everything" was on hold due to lawsuits with Petitioner
Silvera relating to the "Shottas" motion picture.
Norman "Cess" Silvera v. Richard Effs,
Cancellation No. 92064094 (April 28 2020) [not precedential]
(Opinion by Judge Christen M. English).
The evidentiary submissions by the parties were not "by the
book," but neither party objected to the other's
attachment of evidence to his brief, and each considered it of
record. The Board treated this as a stipulation to the admission of
the evidence.
Petitioner Silvera's allegations of nonuse were set out as
part of a fraud claim, but he did identify nonuse as a separate
claim on the ESTTA cover sheet, and thus Effs had adequate notice
that Silvera was pleading nonuse as well as fraud. [The Board
declined to reach the fraud issue].
In order to succeed on the claim of nonuse, Silvera had to prove
that Effs was not using the SHOTTAS mark in commerce as of August
19, 2013, i.e., as of Effs' deadline to file a statement of
use. Embarcadero Techs., Inc. v. Delphix Corp., 117 USPQ2d
1518, 1524 (TTAB 2016) ("[T]he actual filing of a statement of
use does not cut off the deadline for meeting the requirements for
a statement of use" so the focus in a nonuse claim is whether
the mark was in use as of the deadline to file a statement of
use).
To qualify as use in commerce under Section 45 of the Lanham Act,
the use must be an "open, public and notorious use such that
the purchasing public is made aware of the availability of the
goods [and services] under said mark and of the use of the mark as
an indication of the origin of those goods [or services]."
See, e.g., Mastic Inc. v. Mastic Corp., 230 USPQ 699, 701
(TTAB 1986).
As to video games, Effs admitted that he made no sales, and there
was no evidence that he transported video games in commerce under
the mark. [Actual sales aren't required for trademark use -
ed.]. In fact, Effs testified that "we were working
towards it."
As to clothing, Effs again stated that he had made no sales, but
he had "50 to 60" t-shirts, "if not more,"
printed with the SHOTTAS mark and the t-shirts, as well as hats and
shorts, "were given away for promotion" in Miami, Florida
to "friends, anybody that knew the [SHOTTAS] movie," to
"wear it, see what's the response."
The Board was unable to find that "Respondent's
distribution of a limited number of SHOTTAS t-shirts, hats and
shorts in Miami, Florida had a substantial effect on interstate
commerce, or was sufficiently open, public and notorious, as
necessary to constitute 'use in commerce.'" There also
was no evidence that distributing product samples is typical in the
clothing industry. See, e.g., Tao Licensing LLC v. Bender
Consulting Ltd., 125 USPQ2d 1043, 1053 (TTAB 2017). [What
about the two hats sold at a church bookstore in Christian
Faith Fellowship Church v. Adidas AG, 841 F.3d 986, 120 USPQ2d
1640, 1643 (Fed. Cir. 2016)? - ed.].
As to entertainment services, Effs claimed that he was involved in
three film projects since January 2009, but there was no evidence
that he used the mark SHOTTAS in connection with any of those
projects. Purported use of the mark on a move released in 2005 was
not use by Effs alone but was a collaborative effort, and in any
case was too far removed from the 2013 deadline to support
Effs' statement of use. See Barbara's Bakery, 82
USPQ2d at 1289 (finding no use in commerce where claimed use
occurred "more than six years prior to the filing date of
applicant's use-based application").
The Board therefore concluded that Effs had failed to overcome
Silvera's prima facie case of nonuse, and it granted the
petition for cancellation.
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