TTAB Denies Bertini's Petition for Cancellation of APPLE Registration Due to Failure of Proof of Abandonment

Charles Bertini won a battle with Apple, Inc. last year [TTABlogged here], but he lost this one. Bertini petitioned to cancel a registration for the mark APPLE for a host of entertainment and other services in class 41, claiming that Apple Inc. abandoned the mark through nonuse. Bertini contended that the nonuse occurred "during a period of at least three years and six months after the date of the SOU, namely during November 11, 2011 - May 31, 2015." However, Bertini failed to make a prima facie case of nonuse, and so the Board denied the petition. Charles Bertini v. Apple Inc., Cancellation No. 92068213 (March 20, 2024) [not precedential] (Opinion by Judge Peter W. Cataldo).

A trademark registration is presumed valid, and so a party seeking cancellation bears the initial burden of establishing a prima facie case of abandonment. If the petitioner presents a prima facie case, the burden of production shifts to the registrant to rebut the prima facie showing. The ultimate burden of proof, however, remains with the petitioner.

Under Section 45 of the Trademark Act, proof of non-use for three consecutive years constitutes prima facie evidence of abandonment.

Bertini submitted examples of websites that display the APPLE mark in connection with other terms, websites that display other marks owned by Apple, Inc., and websites that do not display the APPLE mark. From this evidence, Bertini "essentially requests that the Board infer that Respondent was not using the APPLE mark in connection with the recited services from November 11, 2011 to May 31, 2015." Nothing doing, said the Board.

The record consists only of circumstantial evidence of abandonment. Petitioner could have taken the oral testimony deposition of Respondent to ascertain whether Respondent had indeed discontinued use of it registered mark and if so, whether it had any intent to resume use, but elected not to do so. Petitioner further could have compelled responses to his discovery requests or amended his requests to obviate the objections raised by Respondent. Petitioner, however, elected to proceed with discovery responses consisting largely of procedural objections rather than substantive responses and evidence showing use of the APPLE mark that Respondent believed was insufficient. Therefore, Petitioner has failed to make a prima facie showing that there is no use of Respondent’s registered mark for the services identified in its Registration over a three-year period.

The Board pointed out that "[t]he addition of a generic or highly descriptive term does not necessarily detract from the separate commercial impression created by the mark APPLE alone." And it rejected Bertini's argument that the "use of APPLE as a trade name precludes the term from also serving as a trademark or service mark to indicate source."

And so, the Board denied the petition for cancellation.

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TTABlogger comment: Faced with the presumption of validity, a cancellation petitioner who claims abandonment through nonuse has the difficult task of proving a negative. Hard to do without thorough discovery, probably including a deposition of the registrant.

Text Copyright John L. Welch 2024.