Family owned bicycle manufacturer regains control of lost trademark. ROSS v. CENTURY

A trademark is something that a product seller uses to identify its products from competing products. A word, phrase or symbol is what most people commonly think of as a trademark, but anything that a product seller uses to distinguish its products from competitor’s products can be granted trademark protection. Obtaining a right to a trademark law in the United States is based on using the trademark in commerce. The first person to use a trademark to brand products is considered the senior user and has priority over junior users of a trademark. A trademark can be registered with the United States Patent and Trademark Office to strengthen the rights associated with a trademark, however registration is not required to begin using a trademark to brand products.

Trademark law is not intended to allow a trademark owner to accumulate a collection of unused trademarks. To be granted trademark registration in the United States, evidence of the trademark being used in commerce must be presented at some stage of the trademark registration process. After a trademark is registered a trademark owner must file maintenance documents which demonstrate the trademark continues to be used in commerce. If a trademark owner stops using a trademark in commerce, then the trademark owner will eventually loose their claim to the trademark.

According to 15 USC 1127, a trademark is considered abandoned if “its use has been discontinued with intent not to resume such use.” The intent not to resume may be inferred from circumstances. Trademark abandonment, therefore, requires two elements: 1) nonuse; and 2) intent not to resume use. If someone believes that a registered trademark has been abandoned by its owner, then they can petition the United States Patent and Trademark Office to cancel the registration for the abandoned trademark. Motivation to cancel an abandoned trademark might arise when a new trademark application is being denied registration because the USPTO believes the new trademark is confusingly similar to an already registered trademark. If the new trademark applicant can get the old, abandoned, trademark canceled then that would clear the path for the new trademark to be registered. Successfully getting a registered trademark canceled for abandonment depends on what evidence can be presented to the USPTO.

ROSS BICYCLES LLC v. CENTURY SPORTS, INC., Cancellation No. 92067406 (TTAB 2020) is a case which illustrates when a trademark can be canceled for abandonment.

This case centers on the trademark ROSS registered on March 26, 1974, Registration No. 980887, for “bicycles and structural parts thereof,” in International Class 12. The trademark was acquired by Century Sports (“Respondant”) on July 23, 2013 from a bankruptcy sale.

The Petitioner is owned by family members of the original Ross Bicycle company which was founded in 1948. That company lost the trademark when it went bankrupt in 1988. The Petitioners wanted to relaunch the trademark which had been first used by their great grandfather. The Petitioners watched the products sold by the Respondent for 10 years until the time was right.

On November 7, 2017, Ross Bicycles (“Petitioner”) filed a petition to cancel the registration because it filed an application to register the trademark for identical products. In its petition to cancel the Petitioner presented the expert testimony of two of its owners stating that they had not encountered ROSS branded bicycles since the Petitioner acquired the trademark in 2013. The Petitioner rebutted this evidence with inventory lists and specification sheets for ROSS bicycles.

The TTAB noted that the testimony from the Petitioner may have a certain bias however, that testimony establishes a prima facie case of non-use. Once the Petitioner establishes a prima facie case, it is up to the Respondant to present evidence that it had an intent to resume use of the mark. Respondant failed to produce evidence that bicycles were actually being offered for sale under the ROSS trademark.

The TTAB ulimately concluded that abandonment is a question of fact. After carefully considering all of the evidence, the TTAB found that Petitioner established by a preponderance of the evidence a prima facie case of abandonment based on three years of nonuse, and that Respondent has not met its burden of rebutting that prima facie case. Therefore the TTAB granted the petition for the cancellation of the trademark ROSS.

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