Shanghai Duohui Network Technology Co., Ltd. v. Travel Tao Ltd.

December 16, 2025
Cancellation No. 92080891
alv
Shanghai Duohui Network Technology Co.,
Ltd.
v.
Travel Tao Ltd.
Before Greenbaum, Thurmon, and Casagrande,
Administrative Trademark Judges.
By the Board:
This case now comes up on Petitioner’s motion (filed July 29, 2025) for summary
judgment on its pleaded claims, listed below.1 The motion is fully briefed.2
1 49 TTABVUE. Citations to the Board record refer to TTABVUE, the Board’s online
docketing system, unless otherwise specified. See Turdin v. Trilobite, Ltd., Conc. Use. No.
94002505, 2014 TTAB LEXIS 17, at *6 n.6 (TTAB 2014) The number preceding “TTABVUE”
corresponds to the docket entry number, and any number following “TTABVUE” refers to the
page number of the docket entry where the cited materials appear.
2 We observe that at the end of Respondent’s brief in response (51 TTABVUE 13-14), it
appears to assert a “counter-claim of petitioner’s fraud.” The only type of counterclaim that
we may entertain is a counterclaim for cancellation of a registration owned by an adverse
party. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 313
(2025) and cases cited therein. Petitioner, however, has not pleaded ownership of a
registration. We therefore disregard this unpleaded counterclaim. In addition, Respondent’s
statement in its brief that it “reserves all rights to pursue trademark infringement claims
against Petitioner” will also be disregarded. Such a claim is outside the Board’s jurisdiction
and cannot be considered. Paramount Pictures Corp. v. White, Opp. No. 91090130, 1994
TTAB LEXIS 14, at *11, n.5 (TTAB 1994) (no jurisdiction over claims of trademark
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
This order is not a
precedent of the
TTAB.

Cancellation No. 92080891
2
The Board has considered the parties’ submissions and does not recount all of the
facts or arguments except as necessary to explain the decision. See Guess? IP Holder
L.P. v. Knowluxe LLC, No. 92060707, 2015 TTAB LEXIS 482, at *4-5 (TTAB 2015).
I. Relevant Background
Petitioner seeks to cancel Respondent’s registration for the mark XTRANSFER3,
in standard character form, for the following goods and services:
International Class 9: Central processing units (CPU); Computer
network server; Computer software platforms, downloadable, for
application development; Data processing apparatus; Downloadable
computer programs for connecting remotely to computers or computer
networks; Downloadable computer software for encryption;
Downloadable computer software for use as an electronic wallet;
Downloadable mobile applications for managing bank accounts;
Electronic and magnetic ID cards for use in connection with payment
for services; Labels carrying magnetically, optically, or electronically
recorded or encoded information; Pocket-sized electronic calculators.
International Class 35: Advertising services; Advertising agency
services; On-line advertising on a computer network; Outdoor
advertising; Pay per click advertising; Production of advertising
films; Providing business information via a web site; Provision of an
on-line marketplace for buyers and sellers of goods and services;
Updating and maintenance of data in computer databases; Direct
mail advertising services.
International Class 36: Cash and foreign exchange transactions;
Currency exchange services; Electronic funds transfer; Financial
services, namely, providing information in the fields of foreign
currency, commodities, financial derivatives, interest rate products,
and equities via the internet and intranet systems.
International Class 42: Computer programming; Computer software
consultancy; Computer system design; Conversion of computer
programs and data, other than physical conversion; Conversion of
data or documents from physical to electronic media; Design and
infringement and unfair competition), aff’d, 108 F.3d 1392 (table), 1997 U.S. App. LEXIS
3079 (Fed. Cir. 1997).
3 U.S. Registration No. 6390519.

Cancellation No. 92080891
3
development of software in the field of mobile applications; Electronic
data storage; Information technology consulting services; Product
development consultation; Scientific research and development;
Software as a service (SAAS) services featuring software for
managing bank accounts; User authentication services using
technology for e-commerce transactions.
Respondent filed the underlying intent-to-use application on March 12, 2020.
Following the filing of its Statement of Use (SOU) on February 25, 2021 and its
acceptance by the Office on May 14, 2021, Respondent’s registration issued on June
15, 2021, with a claimed date of first use anywhere and first use in commerce of
February 25, 2021 for all classes of goods and services.
In its amended petition for cancellation, Petitioner alleges the following claims:
(1) Petitioner has priority of use of an identical mark and Respondent’s later use is
likely to cause confusion; (2) nonuse by Respondent of the mark in connection with
any of the goods and services recited in the registration; (3) Respondent’s lack of bona
fide intent to use; and (4) fraud.4
Petitioner pleads prior use of the identical mark XTRANSFER in the United
States in connection with a mobile application since at least June 15, 2019.5
Additionally, Petitioner alleges it filed Application Serial No. 97503809 for
registration of the mark XTRANSFER for various goods and services in International
Classes 9, 35, 36, 41, and 42, on July 14, 2022, which has been refused registration
due to a likelihood of confusion with the involved Registration.6
4 32 TTABVUE.
5 Id. at 15-16, ¶¶ 36-37.
6 Id. at 14-15, ¶¶ 34-35.

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4
Respondent denies the salient allegations in its answer.7
Petitioner now moves for summary judgment on all pleaded claims.
II. Summary Judgment Standard
Summary judgment is an appropriate method of disposing of cases in which there
are no genuine disputes as to material facts, thus allowing resolution as a matter of
law. See Fed. R. Civ. P. 56(a). The burden is on the party moving for summary
judgment to demonstrate the absence of any genuine dispute of material fact and that
it is entitled to summary judgment as a matter of law. Fed. R. Civ. P. 56(c). A factual
dispute is genuine if, on the evidence of record, a reasonable fact finder could resolve
the matter in favor of the non-moving party. See Opryland USA Inc. v. Great Am.
Music Show Inc., 970 F.2d 847, 850 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v.
Roundy’s, Inc., 961 F.2d 200, 202 (Fed. Cir. 1992).
In considering the propriety of summary judgment, all evidence must be viewed
in the light most favorable to the non-movant, and all justifiable inferences are to be
drawn in the non-movant’s favor. See Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d
766, 767 (Fed. Cir. 1993). The Board may not resolve disputes as to material facts
and, based thereon, decide the merits of the proceeding. Rather, we may only
ascertain whether any material fact is genuinely disputed. See Lloyd’s Food Prods.,
987 F.2d at 767; Olde Tyme Foods, 961 F.2d at 202; Meyers v. Brooks Shoe Inc., 912
F.2d 1459, 1461 (Fed. Cir. 1990).
7 33 TTABVUE.

Cancellation No. 92080891
5
II. Analysis and Order
For the reasons explained below, we grant Petitioner’s motion for summary
judgment on its nonuse claim.
A. Entitlement to a Statutory Cause of Action
A plaintiff’s entitlement to a statutory cause of action must be proven in every
inter partes case. See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC,
965 F.3d 1370, 1373-74 (Fed. Cir. 2020). In a cancellation proceeding, a party may
petition to cancel the registrant’s registration of a mark where such action is within
the zone of interests protected by the relevant statute and the petitioner’s reasonable
belief in damage is proximately caused by continued registration of the registrant’s
mark. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1304-07 (Fed. Cir. 2020).
Entitlement to a statutory cause of action is generally conferred on a plaintiff
whose pleaded pending application has been refused registration under Trademark
Act Section 2(d), 15 U.S.C. § 1052(d). See, e.g., Great Seats Ltd. v. Great Seats, Inc.,
Can. No. 92032524, 2007 TTAB LEXIS 68, at *5-6 (TTAB 2007); Cerveceria Modelo
S.A. de C.V. v. R.B. Marco & Sons, Inc., Can. No. 92022137, 2000 TTAB LEXIS 394,
at *3-4 (TTAB 2000).
Respondent does not contest Petitioner’s statutory entitlement in its brief in
response, and, more importantly, in Respondent’s answer it admits that Petitioner
owns an application for the mark XTRANSFER and that Petitioner’s application was
refused registration based on Respondent’s registration.8 See Performance Prods. Ltd.
8 33 TTABVUE 5-6, ¶¶33-34.

Cancellation No. 92080891
6
v. Weapon X Motorsports, Inc., Opp. No. 91221553, 2018 TTAB LEXIS 72, at *20
(TTAB 2018) (opposer’s standing established through applicant’s admissions that
opposer’s pending application would be refused registration should applicant’s
application register). Petitioner also has supported its motion for summary judgment
with a copy of the Office Action refusing registration of Petitioner’s mark in light of
Respondent’s registration.9
We find that, for purposes of this motion, there exist no genuine disputes of
material fact that Petitioner is entitled to a statutory cause of action under Section
2(d) to petition to cancel Respondent’s registration. See, e.g., Great Seats, 2007 TTAB
LEXIS 68, at *5-6 (finding petitioner’s ownership of application for mark and services
related to registrant’s mark and services and refusal of application sufficient to
establish entitlement to bring Section 2(d) claim); Cerveceria Modelo, 2000 TTAB
LEXIS 394, at *3-4; TBMP § 309.03(b) and authorities cited therein.
Accordingly, Petitioner may rely on any statutory ground for cancellation. See
Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1031 (CCPA 1982).
B. Nonuse
1. Evidence and Parties’ Arguments
A registration under Trademark Act Section 1, 15 U.S.C. § 1051, cannot be
obtained for goods or services upon which an applicant or registrant has not used the
mark. Trademark Act Section 45, 15 U.S.C. §1027 defines “use in commerce” for goods
and services as:
9 49 TTABVUE 290-99.

Cancellation No. 92080891
7
[T]he bona fide use of a mark in the ordinary course of trade, and not
made merely to reserve a right in a mark….[A] mark shall be deemed
to be in use in commerce…on goods when…it is placed in any manner
on the goods or their containers or the displays associated therewith
or on the tags or labels affixed thereto, or if the nature of the goods
makes such placement impracticable, then on documents associated
with the goods or their sale, and…the goods are sold or transported
in commerce…on services when it is used or displayed in the sale or
advertising of services and the services are rendered in commerce, or
the services are rendered in more than one State or in the United
States and a foreign country and the person rendering the services is
engaged in commerce in connection with the services.
15 U.S.C. §1127.
A nonuse claim is based on allegations that the mark was not used in commerce
in connection with the recited goods or services as of the filing date of a use-based
application, or the filing date of an amendment to allege use in support of an intent-
to-use application, or, as here, prior to the expiration of time for filing a statement of
use in support of an intent-to-use application. See, e.g., Embarcadero Techs., Inc. v.
Delphix Corp., Opp. No. 91197762, 2016 TTAB LEXIS 11, at *17 (TTAB 2016)
(granting motion to amend to add claim of nonuse based on respondent's alleged
failure to use its mark in commerce by the expiration of the time for filing a statement
of use). Therefore, nonuse as of the filing deadline for the SOU can provide an
“independent basis” to cancel Respondent’s registration. Tao Licensing, LLC v.
Bender Consulting Ltd, Can. No. 92057132, 2017 TTAB LEXIS 437, at *1 (TTAB
2017).
To prevail on its claim of nonuse, Petitioner must establish that there is no
genuine dispute of material fact that Respondent had not used the mark
XTRANSFER in commerce in connection with the goods and services identified in its

Cancellation No. 92080891
8
application as of the deadline for filing its SOU, i.e., March 1, 2021. See id.; Ashland
Licensing & Intell. Prop. LLC v. Sunpoint Int’l Grp. USA Corp., Can. No. 92057294,
2016 TTAB LEXIS 219, at *20 (TTAB 2016); Embarcadero Techs., 2016 TTAB LEXIS
11, at *17 (“actual filing of a statement of use does not cut off the deadline for meeting
the requirements for a statement of use” so the focus in a nonuse claim is whether
the mark was in use as of the deadline to file a statement of use).
Petitioner must establish the case for cancellation by a preponderance of the
evidence. Cerveceria Centroamericana S.A. v. Cerveceria India, Inc., 892 F.2d 1021,
1023 (Fed. Cir. 1989); see also On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080,
1087 (Fed. Cir. 2000). In determining whether there is a genuine dispute of material
fact for trial, we take this substantive evidentiary burden into account. See Anderson
v. Liberty Lobby, Inc., 477 U.S. 242, 254 (1986).
As an initial matter, Petitioner cites the wrong standard in its petition to cancel
in stating that Respondent had no use of the mark when it filed its SOU. In
particular, Petitioner states the following:
49. On February 25, 2021, Registrant represented to the USPTO the
material fact that as of that date, Registrant was using the
XTRANSFER mark in commerce in connection with all of the
Claimed Goods and Services.
50. On information and belief, at the time Registrant filed its
Statement of Use, and contrary to Registrant’s declaration,
Registrant was not using the XTRANSFER mark in U.S. commerce
at all.10
10 32 TTABVUE 17.

Cancellation No. 92080891
9
However, inasmuch as Petitioner also alleges that Respondent never used its
mark, we find that Petitioner’s claim of nonuse to include an allegation that
Respondent did not use its mark as of the deadline for filing its SOU.11 Accordingly,
the complaint is construed to sufficiently plead a nonuse claim. See IdeasOne Inc. v.
Nationwide Better Health, Can. No. 92049636, 2009 TTAB LEXIS 86, at *3 (TTAB
2009) (pleading must be examined in its entirety, construing the allegations therein
liberally, as required by Fed. R. Civ. P. 8(f), to determine whether it contains any
allegations which, if proved, would entitle plaintiff to the relief sought). Further,
Respondent has not objected to Petitioner’s motion on the ground that it is based, in
part, on an unpleaded issue, but rather has treated the issue on its merits.
Accordingly, to the extent that it may be necessary to do so, we deem Petitioner’s
pleading to be amended, by agreement of the parties, to assert the proper standard.
See Paramount Pictures Corp., 1994 TTAB LEXIS 14, at *14.
In evidentiary support of its motion with regard to the nonuse claim, Petitioner
has submitted and relies on, inter alia, (1) Respondent’s responses to Petitioner’s
Second Request for Production of Documents;12 (2) Respondent’s revised responses to
Petitioner’s First and Second Requests for Production of Documents;13 (3) the
declaration of Richard Finkelstein, Respondent’s former counsel, wherein he admits
that he does not have and never had any actual knowledge of Respondent’s use of its
mark in U.S. commerce and that when he signed the involved SOU he merely relied
11 See id., ¶51 (“as of February 25, 2021, as well as at any earlier or later time, Registrant did
not have…use in commerce…”) and ¶52 (“Registrant has never used in U.S. commerce…”).
12 49 TTABVUE 38-62.
13 Id. at 64-88.

Cancellation No. 92080891
10
on representations made to him by Respondent and its attorneys and his review of
the website that was presented to him;14 (4) Respondent’s responses and objections to
Petitioner’s Second Set of Interrogatories;15 (5) Respondent’s revised responses
thereto;16 and (6) the declaration of Rob Holmes, a third-party private investigator
hired by Petitioner, wherein he discusses the investigation he undertook regarding
certain of Respondent’s goods and services.17
In particular, Petitioner relies on Respondent’s revised responses to its
Interrogatory Nos. 7, 9-10, 16-17, and 1918 in which Respondent essentially states
that it has only used the subject mark on the following goods and services:
“Pocket-sized electronic calculators” and “downloadable computer
software for use as an electronic wallet” in Class 9;
“Advertising services” in Class 35;
“Cash and foreign exchange transactions; Currency exchange
services; Electronic funds transfer; Financial services, namely,
providing information in the fields of foreign currency, commodities,
financial derivatives, interest rate products, and equities via the
internet and intranet systems” in Class 36; and
“Computer software consultancy” in Class 42.
Petitioner designates these goods and services as the “Claimed Goods and
Services.”19 For convenience purposes, we adopt the same designation in this order.
14 Id. at 90-91.
15 Id. at 93-120.
16 Id. at 122-52.
17 Id. at 213-49.
18 49 TTABVUE 125-30.
19 Id. at 20.

Cancellation No. 92080891
11
In these same responses, while referencing some or all of the goods and services
immediately above, Respondent makes, inter alia, the following statements:
Registrant only provide [sic] goods and service mentioned above.
Registrant did not provide product or service [sic] for the rest of goods
registered in U.S. Registration No. 6,390,519. (Revised Response to
Interrogatory No. 7).20
Registrant did not provide product or service [sic] for the rest of goods
or services registered in U.S. Registration No. 6,390,519 on the
website intbuyeasy.com. (Revised Response to Interrogatory No. 9).21
Registrant did not provide product or service [sic] for the rest of goods
registered in U.S. Registration No. 6,390,519 excepts [sic] the ones
above. (Revised Response to Interrogatory No. 10).22
Registrant did not sale [sic] the rest of goods [sic] in Class 9.
Registrant no longer sales [sic] any goods in Class 9 in the USA with
the mark xTransfer. (Revised Response to Interrogatory No. 16).23
Registrant did not provide the rest of services [sic] in Class 35.
Registrant no longer provides any services in Class 35 in the USA
with the mark xTransfer. (Revised Response to Interrogatory No.
17).24
Registrant did not provide the rest of services [sic] in Class 42.
Registrant no longer provides any services in Class 42 in the USA
under the mark xTransfer.” (Revised Response to Interrogatory No.
19).25
Therefore, as Petitioner points out in support of its motion, Respondent admits
that it never used the XTRANSFER mark with any of the following goods and services
(Petitioner identifies these as the “Never-Offered Goods and Services”):
20 Id. at 125.
21 Id. at 127.
22 Id. at 128.
23 Id. at 129.
24 Id.
25 Id. at 130.

Cancellation No. 92080891
12
Class 9: Central processing units (CPU); Computer network server;
Computer software platforms, downloadable, for application
development; Data processing apparatus; Downloadable computer
programs for connecting remotely to computers or computer
networks; Downloadable computer software for encryption;
Downloadable mobile applications for managing bank accounts;
Electronic and magnetic ID cards for use in connection with payment
for services; Labels carrying magnetically, optically, or electronically
recorded or encoded information;
Class 35: Advertising agency services; On-line advertising on a
computer network; Outdoor advertising; Pay per click advertising;
Production of advertising films; Providing business information via a
web site; Provision of an online marketplace for buyers and sellers of
goods and services; Updating and maintenance of data in computer
databases; Direct mail advertising services;
Class 42: Computer programming; Computer system design;
Conversion of computer programs and data, other than physical
conversion; Conversion of data or documents from physical to
electronic media; Design and development of software in the field of
mobile applications; Electronic data storage; Information technology
consulting services; Product development consultation; Scientific
research and development; Software as a service (SAAS) services
featuring software for managing bank accounts; User authentication
services using technology for e-commerce transactions.
In further support of its motion, Petitioner obtained the sworn declaration of
Respondent’s former attorney, Mr. Finkelstein, who signed the application during the
prosecution thereof.26 Among the statements Mr. Finkelstein makes in the
declaration regarding the signing of the application are the following:
2. I have no first-hand knowledge as to my former client Travel Tao’s
actual or intended use of the mark XTRANSFER.
3. I conducted an inquiry with my former client Travel Tao regarding
its use and its proposed use of its XTRANSFER trademark in the
United States in connection with each and every good and/or service
listed in U.S. Trademark Application Serial No. 88/832,385 (the
“Application”) prior to signing and filing the Application, which I filed
26 Id. at 90-91.

Cancellation No. 92080891
13
on March 12, 2020. In that Application, I attested to Travel Tao’s bona
fide intention to use its XTRANSFER mark in United States
commerce based solely on information conveyed to me by Travel Tao.
4. I conducted an inquiry with my former client Travel Tao regarding
its actual use of its XTRANSFER trademark in the United States in
connection with each and every good and/or service listed in the
Application prior to signing and filing the Statement of Use for the
Application, which I filed on February 25, 2021. In that Statement of
Use, I attested to Travel Tao’s actual use of its XTRANSFER mark in
United States commerce based solely on information conveyed to me
by Travel Tao.
5. I reviewed the website that Travel Tao presented to me to
determine that it appeared to me to be a legitimate website.
6. I currently do not have, and have never had, any actual knowledge
of Travel Tao’s use of its XTRANSFER mark in United States
commerce.
7. I have consistently stated that I have no actual knowledge of Travel
Tao’s use of its XTRANSFER mark in United States commerce.27
Mr. Finkelstein makes the following statements regarding the SOU which he
signed and filed on February 25, 2021 on behalf of Respondent.
8. With regard to signing the Statement of Use, when I inquired
regarding Travel Tao’s use of its XTRANSFER mark in the United
States, I merely relied on the representations made to me by Travel
Tao or its attorneys and the review of the website presented to me.
9. Apart from relying on the representations made to me by Travel
Tao or its attorneys, I did not conduct my own independent
investigation or inquiry regarding Travel Tao’s actual use of the
XTRANSFER mark in the United States other than the review of the
website indicated in the Statement of Use. 28
27 Id.
28 Id. at 91.

Cancellation No. 92080891
14
We observe that during discovery Petitioner asked Respondent “to describe in
detail” the basis for Respondent’s sworn declaration in the SOU. Specifically,
Petitioner asked the following:
29. Describe in detail the basis for your sworn declaration in the
Statement of Use filed with the USPTO on February 25, 2021 to
support the XTRANSFER registration (Reg. No. 6,390,519) that
“[t]he mark is in use in commerce on or in connection with all of the
goods/services in the application or notice of allowance, or as
subsequently modified.29
Respondent answered as follows:
Answer: Registrant did not enter sworn declaration in the Statement
of Use. It was entered by Richard S. Finkelstein.30
Similarly, we observe that when asked to describe all the steps taken by Mr.
Finkelstein to confirm accuracy of the SOU in Petitioner’s Interrogatory No. 40,
Respondent simply states it “has no such knowledge.”31
In further support of the present motion, Petitioner also states that while
Respondent claims to have used the XTRANSFER Mark with certain “Claimed Goods
and Services” in classes 9, 35, and 42 (see above Pg. 10), when asked in discovery for
“documents sufficient to show how Registrant has provided each [of the Class 9, 35,
and 42 goods and services] in the U.S.” the only document Respondent points to is its
specimen of use submitted with its SOU, which purports to show use of the
XTRANSFER Mark through the “IntBuyEasy Website.”32 Petitioner also points out
29 Id. at 134.
30 Id.
31 Id at 136.
32 Id. at 8. See also Respondent’s responses to Request for Document Nos. 21-22, 24., id. at
67-68.

Cancellation No. 92080891
15
that “[Respondent] admits it had no control over or knowledge of what was offered for
sale through the IntBuyEasy website.”33 Specifically, Respondent admitted in its
response to Petitioner’s Document Request No. 13 that it “never participated in the
running of website is [sic] not the owner and runner of the website.”34
With regard to the Class 36 services, in support of its claim to have used the
XTRANSFER Mark with these services in the U.S., Petitioner states that Respondent
directed Petitioner “to snippets of screenshots of ‘Google Banner[s]” but “there is no
evidence…that any of these services are sold in the U.S. or to consumers in the U.S.”35
In the same vein, Petitioner states that “[Respondent] also has no evidence that it
ever sold any services in the U.S.” and that “when asked [during discovery] to
produce ‘all document and things that reflect, or that relate to or refer to, the total
dollar volume of goods and services under [Respondent’s] Mark in the United States,’
[Respondent] responded: ‘Registrant has no such documents.’”36
Petitioner states that it hired an “an independent third-party service provider to
independently investigate Registrant’s purported use of the subject XTRANSFER
Mark in the U.S.” and that “the investigator was unable to confirm any use of [sic]
XTRANSFER Mark as purportedly shown in the Specimen of Use.”37 A copy of the
declaration of this investigator, Mr. Holmes, is provided, along with attached
exhibits.38
33 Id. at 8.
34 Id. at 66.
35 Id. at 8. See also Respondent’s response to Document Request No. 23, id. at 68, 75-85.
36 Id. at 9. See also Respondent’s response to Document Request No. 9., id. at 65.
37 Id. at 9.
38 Id. at 213-49.

Cancellation No. 92080891
16
Mr. Holmes recounts the steps he took to purchase certain of the goods and
services from the list of “Claimed Goods and Services” from Respondent, namely, the
“calculators” and “electronic wallet” from class 9 and the “electronic funds transfer”
and “currency exchange services” from Class 36. Mr. Holmes, specifically, states as
follows:
5. In August 2022, I was contacted by counsel for Petitioner to make
purchases from the IntBuyEasy website and report on the financial
transactions that cleared and the goods and services that were
rendered.
6. On August 25, 2022, the [sic] I visited the IntBuyEasy website and
ordered the calculator then-offered for sale at
http://www.intbuyeasy.com/en/pd.jsp?id=l. On September 2, 2022, I
received in the mail via USPS a calculator. The shipping label on the
package the calculator arrived in referenced eBay and listed a return
address as “Brian Henry 341 East Lakeshore Dr East Shelton, WA
98584-7956.” Neither the packaging of the calculator, nor the
calculator itself, bore any XTRANSFER mark or branding. Instead,
the calculator bore the BROOKSTONE® and QUICKCHANGE™
trademarks and branding. Based on the condition of the calculator
and the box, the product appeared to me to be used. For example, the
box and interior materials had curled corners, indicating prior usage,
and the calculator had handwriting on the back-all indicating that it
is not a new product. It appeared to me that the calculator was not
fulfilled by Travel Tao nor the IntBuyEasy website but was instead
purchased, sent, and fulfilled through eBay. A copy of my report
regarding the purchase of this calculator from the IntBuyEasy
website is attached hereto as Exhibit 1.
7. On September 30, 2022, I visited the IntBuyEasy website and
ordered the e-wallet application then-offered for sale at
www.intbuyeasy.com/en/pd.jsp?id=42. On that same day, that
transaction was processed via PayPal (in that my PayPal account was
deducted by $28 to fulfill the order or the e-wallet software
application).
8. As of the date of this Declaration, the order remains unfulfilled. No
e-wallet software was delivered or made downloadable to me.

Cancellation No. 92080891
17
9. On September 30, 2022, I also attempted to purchase the electronic
funds transfer / currency exchange services then-offered for sale at
www.intbuyeasy.com/en/pd.jsp?id=7. On that same day, that
transaction was processed via PayPal (in that my PayPal account was
deducted by $68 to fulfill the order or the electronic funds transfer /
currency exchange services). Attached as Exhibit 2 is a true and
correct copy of my Pay Pal account showing a deduction of $101 for
purchase of the e-wallet application and electronic funds
transfer/currency exchange services.
10. As of the date of this Declaration, the order remains unfulfilled as
no electronic funds transfer or currency exchange services were
delivered or made downloadable to me.
On April 20, 2023, Petitioner states that its counsel identified use by Respondent
of a “mobile application, which purports to allow internet users to download
[Respondent’s] mobile app via the Google Play store”; that “[t]he website states that
[Respondent’s] mobile app is ‘[a] safe, fast and no-hidden-fee way to send money to
China from Japan, Australia.’”; and that “[a]s such, to the extent that this mobile
application could be interpreted to be ‘downloadable computer software for use as an
electronic wallet’ [Respondent] does not offer these services in or to consumers in the
U.S.” 39 Similarly, Petitioner argues that “[t]o the extent this mobile application could
be considered to be serving as a conduit, method or component through which
[Respondent] purportedly offered any of the services in Class 36, that mobile app does
not offer these services in or to consumers in the U.S.”40
With regard to the “advertising services” in Class 35 on the list of “Claimed Goods
and Services,” Petitioner refers the Board to Document Request No. 22, which asks
for “documents sufficient to show how [Respondent] has provided each of the Class
39 Id. at 10. See attached exhibits, id. at 251-53.
40 Id. at 11.

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35 services identified in the XTRANSFER Registration….”41 In response to this
request, Respondent replies: “All of these use evidence documents for the above
service and product can be found on the USPTO website” and directs Petitioner to
Respondent’s SOU. But then in the same response Respondent specifically states:
“Registrant no longer sales [sic] any goods in Class 35 in the USA with the mark
xTransfer.”42
Similarly, with regard to the “computer software consultancy” in Class 42 on the
list of Claimed Goods and Services, Petitioner asked Respondent the following during
discovery for the following documents and things:
24: Documents sufficient to show how Registrant has provided each
of the Class 42 services identified in the XTRANSFER registration
(Reg. No. 6,390,519) in the U.S., including documents showing the
first date on which each service was sold or provided in the U.S.,
whether Registrant’s use of the XTRANSFER mark is ongoing for
each service, and the most recent date on which each service was sold
or provided in the U.S.
Answer: The first date of use of software consultancy service in class
42 is Feb. 25, 2021. All of these use evidence documents for the above
service and product can be found on the database of the USPTO
website…Registrant no longer sales [sic] any goods in Class 42 in the
USA with the mark xTransfer.43
In all, Petitioner asserts that “it is undisputed that [Respondent] did not use the
XTRANSFER Mark in connection with any of the Never-Offered Goods and Services
as of the date of [Respondent’s] filing of the XTRANSFER SOU” and that “[t]he Board
should therefore cancel the XTRANSFER Registration as to the Never-Offered Goods
41 Id. at 12. See also the response to Document Request No. 22, id. at 67.
42 Id.
43 Id. at 68.

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and Services as a matter of law.”44 Finally, Petitioner asserts that Respondent “has
never used the XTRANSFER Mark with any of the Claimed Goods and Services, and
therefore, the Board should cancel the XTRANSFER Registration in its entirety.”45
In response to Petitioner’s motion, Respondent argues that Petitioner has not met
its burden of proof. In particular, Respondent asserts that “Petitioner admits that
‘Respondent sells its goods and services on e-commence platforms including
intbuyeasy.com and Google Play.’”46 Respondent further argues that the findings of
Petitioner’s third-party investigator are irrelevant because Respondent has “no direct
oversight over the goods traded via the intbuyeasy.com Website” and “Respondent’s
role was solely that of a platform user.”47 Respondent asserts that “[t]he website used
by Respondent is a genuine commercial website”; that such website “has been
operational for years, capable of processing orders, maintains stable traffic, and
possesses actual e-commerce functionality”; and that “Respondent used this website
to offer downloadable electronic wallet software, advertising services, and computer
software consulting services related to the XTRANSFER mark, forming a complete
commercial loop.”48 In addition, Respondent states that it “deployed applications on
other platforms, including Google Play, Aptoide App and Apple App Store, and
presented evidence of commercial use pertaining to foreign exchange services.”49
Significantly, Respondent provides no evidentiary support for these assertions.
44 Id. at 21.
45 Id.
46 51 TTABVUE 6.
47 Id.
48 Id. at 6-7.
49 Id. at 7.

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In reply, Petitioner argues it “is entitled to summary judgment on its nonuse claim
because (1) [Respondent] admits to never having used the XTRANSFER Mark with
the Never-Offered Goods and Services and (2) Petitioner’s undisputed evidence,
including its unrebutted independent investigator’s report, shows that [Respondent]
has never used the XTRANSFER Mark with the Remaining Goods and Services.”50
Petitioner argues that “[e]ven if [Respondent] now claims through unsupported,
attorney argument to have used the mark on the [Claimed] Goods and Services, this
argument is wholly unsubstantiated by any evidence and cannot create a genuine
issue of material fact” and that “Petitioner’s nonuse claim succeeds as a matter of
law.”51 Petitioner states that, contrary to Respondent’s assertions, Petitioner does not
admit “anywhere in [its] Motion for Summary Judgment” that Respondent sells its
goods and services on e-commerce platforms such as intbuyeasy.com and Google
Play.52 Petitioner emphasizes that Respondent “fails to provide a shred of evidence
showing where a U.S.-based consumer can purchase these goods and services under
the XTRANSFER Mark.”53
2. Analysis
On this record, there is no evidence, documentary or otherwise, showing that
Respondent used the mark XTRANSFER in commerce in the U.S. in connection with
any of the goods and services identified in its underlying application as of the deadline
for the filing of its SOU. In particular, Petitioner has introduced evidence in the form
50 52 TTABVUE 2-3.
51 Id. at 3.
52 Id. at 6.
53 Id.

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of Respondent’s discovery responses, its third-party investigator’s declaration and
supporting exhibits, and the declaration of Respondent’s former counsel. Together
this evidence demonstrates that Respondent has not made use in the U.S. of any of
the goods and services recited in the registration.
Respondent has not attached any evidence to demonstrate that it made use of its
mark in commerce as of the deadline for the filing of its SOU other than the specimen
of record. It is clear under 37 C.F.R. § 2.122(b)(2) that specimens in the underlying
application are not competent evidence. In view of the totality of the evidence, and in
particular the absence of sufficiently specific testimony or documentary evidence
regarding activities that constitute actual use in commerce of XTRANSFER by
Respondent as of the relevant date, the sole reasonable inference is that as of the
deadline for filing the SOU, no use was made. See Tao Licensing, 2017 TTAB LEXIS
437, at *33.
In view thereof, after giving Respondent the benefit of all justifiable inferences
from the undisputed facts, Respondent has failed to raise a genuine dispute of
material fact regarding its nonuse of the mark in commerce in connection with any of
the goods and services as of March 1, 2021, the deadline to file the SOU. See Octocom
Sys., Inc. v. Hous. Comp. Servs., Inc., 918 F.2d 937, 940-41 (Fed. Cir. 1990);
Hornblower & Weeks Inc. v. Hornblower & Weeks, Inc., Opp. No. 91110043, 2001
TTAB LEXIS 562, at *22-23 (TTAB 2001) (factual assertions, without evidentiary
support, are insufficient to defend against a motion for summary judgment).

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Accordingly, we find that there is no genuine dispute of material fact that
Petitioner established its entitlement to a statutory cause of action and that the
underlying application for Registration No. 6390519 is void ab initio due to nonuse of
the involved mark with any of the identified goods or services as of the deadline for
filing the SOU. See 15 U.S.C. § 1127.
We therefore grant Petitioner’s motion for summary judgment on its claim that
Registration No. 6390519 is void ab initio due to nonuse. See Tao Licensing, LLC,
2017 TTAB LEXIS 437, at *24.
In view of this determination, we need not decide Petitioner’s claims of fraud or
likelihood of confusion, or any of the remaining claims in Petitioner’s amended
petition for cancellation. Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd.,
Can. No. 92056548, 2018 TTAB LEXIS 168, at *44 n.52 (TTAB 2018) (Board has the
“discretion to decide only those claims necessary to enter judgment and dispose of the
case”).
III. Decision
In view of the foregoing, Petitioner’s motion for summary judgment on its claim of
nonuse is granted as to all classes, and Registration No. 6390519 will be cancelled in
due course.