The U.S. Trademark Trial and Appeal Board recently cancelled a fitness trademark registration based on abandonment.   This case serves as a reminder of the importance of proper health trademark use.

In Rise Above Fitness LLC v. Rise Above Performance Training, the Petitioner brought a cancellation action on the grounds of abandonment, fraud, and likelihood of confusion.   The Respondent was the owner of U.S. trademark registration of the mark RISE ABOVE for personal fitness training services.   Petitioner’s application for RISE ABOVE FITNESS  for fitness boot camps was refused based on the preexistence of the RISE ABOVE registration.  The Petitioner therefore had standing to bring the petition for cancellation of the RISE ABOVE registration.  Rise Above Fitness LLC filed a brief in support of its trial testimony.   Rise Above Performance Training, for some reason, did not.  Respondent did not file trial testimony or submit any evidence either.  Its belated attempt to reopen its time for doing so was denied by the Board.

In support of its case, Petitioner filed its Requests for Admissions that is served on Respondent.  The Respondent failed to answer or object to any of the admission requests.  Accordingly, the requests for admissions were deemed admitted.   The Request for Admissions contained the following admissions:

  • Admit that you have failed to exercise continuous use of Registrant’s mark since November 21, 2012.
  • Admit that you have failed to exercise continuous use of Registrant’s mark since July 9, 2013.
  • Admit that you do not have any bona fide future plans to use Registrant’s mark in connection with Registrant’s goods and services.

Since the Admission requests established a prima facie case of abandonment, and coupled with the fact that they were deemed admitted, this proved fatal to Respondent’s case.  The Board concluded that the Respondent had abandoned its rights to its trademark.  Respondent’s registration was cancelled and judgment issued in favor of Petitioner.

Attorney’s note:  This case presents an example of the dangers of failing to maintain a robust defense to a trademark cancellation proceeding.   Parties who fail to either settle the case or engage in a defense operate at their own peril.   If a petition for cancellation for abandonment has been filed against a trademark that you or your company own, you may contact us to discuss the matter.