This article explores a recent Trademark Trial and Appeal Board (TTAB) decision, which held that in the circumstance of a “never-used” mark registered on the basis of Trademark Act Section 66(a), an intent to begin use is acceptable evidence to rebut the presumption of abandonment.

In Wirecard AG v. Striatum Ventures B.V., Wirecard filed a petition to cancel a registration owned by Striatum Ventures for the stylized mark “Zupr” issued under Trademark Act Section 66(a), claiming that Striatum “has either never used the [mark] in commerce, or completely ceased using the mark… including for a non-use period of at least three consecutive years” and that “[Striatum] had and has no intent to resume use.”

In response, Striatum declared that, following registration of its mark in the United States, it sought strategic assistance from, and entered into a contract with, a public relations agency for marketing of “Zupr” goods and services in the United States, retooled its platform and reached an oral agreement with a retailer to use these goods and services in the US.

The TTAB ultimately denied Wirecard’s petition to cancel the registration, finding that Striatum’s activities demonstrated it had the requisite intent to commence use of the “Zupr” mark during the three year period of non-use.

Read, “US: Petition to cancel on the ground of abandonment fails despite the lack of traditional use,” in its entirety.