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Fitness trademark cancelled due to abandonment

By James Hastings on June 25, 2019
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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.

Photo of James Hastings James Hastings

James Hastings is an attorney with the U.S. Trademark Trial and Appeal Board Practice Group of Practus, LLP.  He is a certified mediator of the INTA Panel of Mediators, an international roster of select professionals with expertise in trademark dispute resolution.

James is…

James Hastings is an attorney with the U.S. Trademark Trial and Appeal Board Practice Group of Practus, LLP.  He is a certified mediator of the INTA Panel of Mediators, an international roster of select professionals with expertise in trademark dispute resolution.

James is the publisher of Trademark Opposition Lawyer, an online advisory dedicated to helping brand owners understand important issues that arise in proceedings before the U.S. Trademark Trial and Appeal Board.  His commentary has been featured on Corporate Counsel, Law.com, LegalZoom,and other digital publications.

He devotes his practice to trademark opposition and trademark cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.  Over the course of his career, he has represented the interests of numerous national and international brand owners in trademark litigation matters in both the U.S. District Courts and before the U.S. Patent and Trademark Office.

Prior to his current affiliation with Practus, LLP, James was in-house counsel to a New England-based catalog retailer, where he was responsible for developing trademark portfolio acquisition, protection, and licensing strategies.  Earlier in his career, he was a partner and associate at intellectual property law firms in New York, where he was engaged in trademark portfolio and intellectual property protection work on behalf of well-known fashion and personal care brands.

James is a member of the New York and Connecticut bars.  He has lectured at University MBA programs and legal education conferences on the issues of trademark protection and e-commerce law.

Past and Present Membership

  • International Trademark Association
  • Association Corporate Counsel
  • National E-tailing and Mail Order Organization of America

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  • Posted in:
    Intellectual Property
  • Blog:
    Healthcare Marketing Law
  • Organization:
    Rothwell Figg
  • Article: View Original Source

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