As to the merits of Opposer’s motion, we first consider Applicant’s defense of abandonment. A showing of three consecutive years of non-use sets forth a prima facie case of abandonment; otherwise, a showing must be made of a period of nonuse less than three years coupled with an intent not to resume use. See Otto Int’l, Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007). As pleaded in its answer, Applicant alleges “that Opposer has abandoned any rights it may have had to the mark ‘AUTODUEL.’” Answer to Amended Notice of Opposition, 13 TTABVUE 4. In other words, it is Applicant’s position that Opposer has abandoned the AUTODUEL mark as to all of the goods upon which use of the mark is asserted.
However, upon consideration of the evidence submitted by the parties, we find on the record before us that Opposer has not abandoned its rights to the AUTODUEL mark vis-à-vis all of Opposer’s asserted goods. In particular, Opposer submitted probative evidence that it has used the mark in commerce by offering for sale digital versions of Opposer’s “Autoduel Quarterly” continuously since 2005. Although Applicant characterizes these digital offerings as mere efforts to “archive” or “warehouse” the print versions of these publications and contends that Opposer’s making these back issues available in digital form “does not constitute the deliberate and continuous use that is required under trademark law,” Applicant’s Opposition to Motion for Summary Judgment, 15 TTABVUE 4, we do not find such use to be so insignificant as to warrant a finding of abandonment. Applicant cites Kusek v. Family Circle, Inc., 894 F. Supp. 522 (D. Mass. 1995), for the proposition that the availability of back magazine issues is a “nominal or residual use” that is too inconsequential to forestall a finding of abandonment. However, the circumstances in Kusek are distinguishable from those herein.
In Kusek, the mark at issue (“Speed Cooking”) was not utilized as the name of the periodical (“Family Circle”) and had appeared in only two issues six months apart and only as part of an article in the magazine. Back issues of the periodical (including those that did not contain the mark) were made generally available upon request “if available” rather than as part of any effort “to market the trademarked product” or any “ongoing program to exploit the mark.” Id. at 533. Moreover, the defendant publisher of the magazine made manifest its intention to abandon the disputed mark. Id. at 526.
Such circumstances are in contrast to those in this proceeding relating to the 2005 use asserted by Opposer. Here, the subject mark was displayed on the cover of the periodical as part of the title, and past issues of the periodical were made available for sale as a digital download on Opposer’s own retail website since 2005, with each issue having a separate product page, description and order button, which clearly reflect an affirmative effort on the part of Opposer to market and sell the goods under the mark. See Motion for Summary Judgment, Declaration of Phil Reed, ¶¶ 13-14 and 19-22, Exhibits 13 (confidential), 18-19, 7 TTABVUE 34, 36-37, 84-89. We do not consider this a residual use intended merely to wind down physical inventory of Opposer’s periodicals on an “as requested” basis. Cf. Oshman’s Sporting Goods Inc. v. Highland Imp. Corp., 16 USPQ2d 1395, 1397 (TTAB 1990) (stating that the selling off of remaining inventory without intent to resume use is deemed abandonment).
Accordingly, we find an absence of a genuine dispute of material fact on Applicant’s claim of abandonment as to all of the goods asserted by Opposer and therefore GRANT Opposer’s motion for summary judgment on this defense.
