Summary
The United States Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s cancellation of Cerveceria Centroamericana’s MEDALLA DE ORO beer trademark registration on abandonment grounds. The court held that nonuse for two consecutive years established a prima facie case of abandonment, that the petitioner retained the burden of proof by a preponderance of the evidence, and that only the burden of production shifted to the registrant under Federal Rule of Evidence 301. The court concluded that Centroamericana failed to rebut the abandonment showing.
Topics
Practice areas
Questions Presented
- Whether India established a prima facie case of trademark abandonment through evidence of nonuse for two consecutive years, including whether domestic nonuse could properly be inferred from the absence of imports and the small quantities previously shipped.
- Whether establishing prima facie abandonment shifts the burden of proof or only the burden of production to the trademark registrant under Federal Rule of Evidence 301.
- Whether Centroamericana rebutted the prima facie case by disproving nonuse or showing intent to resume use.
- Whether the TTAB's factual findings and credibility determinations were clearly erroneous.
Holdings
- The cancellation petitioner bears the burden of proving abandonment by a preponderance of the evidence; the Lanham Act does not impose a heightened burden of proof.
- Once a prima facie case of abandonment is established, only the burden of production shifts to the registrant; the ultimate burden of proof and risk of nonpersuasion remain with the cancellation petitioner.
- The TTAB properly inferred at least two consecutive years of domestic nonuse from the absence of imports over an extended period combined with the very small quantities of earlier shipments.
- Centroamericana failed to rebut the prima facie case because its evidence did not credibly disprove nonuse during the relevant period or establish intent to resume use during the earlier years of nonuse.
Key quotations
“In all civil ... proceedings not otherwise provided for by Act of Congress or by these rules, a presumption imposes on the party against whom it is directed the burden of going forward with evidence to rebut or meet the presumption, but does not shift to such party the burden of proof in the sense of the risk of nonpersuasion, which remains throughout the trial upon the party on whom it was originally cast.” (1026)
“Accordingly, we conclude that Rule 301 applies to the Lanham Act's abandonment provision, and therefore, only the burden of going forward (burden of production) shifts to the trademark registrant.” (1026)
“Accordingly, we must uphold TTAB's decision to cancel Centroamericana's MEDALLA DE ORO registration because of abandonment.” (1028)
Factual background
Centroamericana registered the MEDALLA DE ORO mark for beer in 1973, but the record showed only small shipments to the United States in 1971, 1972, 1975, and 1977, followed by no shipment until 1986. India established the absence of imports during an extended period and presented evidence undermining the existence of domestic sales. Centroamericana offered vague testimony about possible sales in Los Angeles and Washington, D.C., and evidence of efforts to resume use beginning in 1982 or 1984, but the TTAB gave that evidence little or no weight.
Procedural history
Centroamericana obtained a United States registration for MEDALLA DE ORO for beer in 1973. After India petitioned to cancel the registration in 1985, the TTAB found prima facie abandonment based on nonuse and canceled the registration. The Federal Circuit affirmed the TTAB's decision.