Lettuce Entertain You Enterprises, Inc. v. Upper Shelf Farms, LLC

JMM Mailed: March 30, 2026
Opposition No. 91295632 (parent)
Lettuce Entertain You Enterprises, Inc.
v.
Upper Shelf Farms, LLC
_____________________________________
Cancellation No. 92086338
Upper Shelf Farms, LLC
v.
Lettuce Entertain You Enterprises, Inc.
Before Pologeorgis, Dunn, and Allard,
Administrative Trademark Judges.
By the Board:
Applicant, Upper Shelf Farms, LLC, seeks registration of the standard character
mark SUMMER’S END SMOKEOUT and the mark shown below for “arranging,
organizing, conducting, and hosting social entertainment events and musical events
being live musical performances” in International Class 41:1
1 Application Serial Nos. 98164916 and 98164905, respectively, were filed on September 5,
2023; “smokeout” disclaimed.
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
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB

Opposition No. 91295632 and Cancellation No. 92086338
2
Opposer, Lettuce Entertain You Enterprises, Inc., filed a notice of opposition against
the applications on the ground of likelihood of confusion. Opposer pleads prior use of,
and ownerhip of two registrations for, the standard character marks WINDY CITY
SMOKEOUT2 and SMOKEOUT3 in connection with “conducting entertainment
exhibitions in the nature of a community barbecue festival featuring live country
music performances” in International Class 41.
In its answer, Applicant denies the salient allegations in the notice of opposition.
In addition, by way of a separate petition to cancel consolidated herein, Applicant
seeks cancellation of Opposer’s pleaded Registration No. 5875606 for the mark
SMOKEOUT on the grounds that the mark is merely descriptive and that the mark
has been abandoned as a result of mutilation. In particular, Applicant pleads that
(i) “the SMOKEOUT designation was, and continues to be, merely descriptive of the
services set forth in that registration, namely a ‘festival featuring live music
performances;’”4 and (ii) “the word ‘SMOKEOUT’ in standard characters – is an
incomplete representation of the mark as actually used by Respondent,” such that
“Respondent did not use the SMOKEOUT designation in connection with the services
2 Registration No. 4526928 was issued on May 6, 2014, and renewed; “windy city” disclaimed.
3 Registration No. 5875606 was issued on October 1, 2019; Section 8 declaration accepted.
4 Cancellation No. 92086338: 1 TTABVUE 5. The cancellation was filed September 26, 2024,
before the fifth anniversary of subject Registration No. 5875606.

Opposition No. 91295632 and Cancellation No. 92086338
3
set forth in that registration, as a trademark apart from other wording, for a period
of at least two years, with no intent at the time to resume same . . . .”5 In its answer,
Opposer denies the salient allegations in the petition to cancel.
This case now comes before the Board for consideration of Opposer’s motion for
summary judgment on both of Applicant’s claims. The motion is fully-briefed.6
I. Preliminary Matter – Review of the Pleaded Claims
As an initial matter, consideration of a motion for summary judgment may
require a review of relevant portions of the operative pleadings, because a party may
not obtain summary judgment on an unpleaded or legally insufficient claim or
defense. See Fed. R. Civ. P. 56(a); Asian & W. Classics B.V. v. Selkow, No. 92048821,
2009 WL 3678263, at *3 (TTAB 2009). Here, on the Electronic System for Trademark
Trials and Appeals (ESTTA) generated filing form, Applicant selected the additional
ground for cancellation that the mark is not inherently distinctive and has not
acquired distinctiveness.
Although the content of the ESTTA filing form is read in conjunction with the
petition to cancel as an integral component, the mere mention of a claim therein is
insufficient to plead that claim. Embarcadero Techs. Inc. v. RStudio Inc., No.
91193335, 2013 WL 2365029, at *1 n.2 (TTAB 2013). The attached allegations include
numbered allegations relating only to the mere descriptiveness and
mutilation/abandment claims. As a result, Applicant has not provided any factual
5 Id. at 5-6.
6 We have considered the parties’ submissions but do not recount all of the facts or arguments.
Guess? IP Holder LP v. Knowluxe LLC, No. 92060707, 2015 WL 9702438, at *2 (TTAB 2015).

Opposition No. 91295632 and Cancellation No. 92086338
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allegations regarding its claim that Opposer’s mark is not inherently distinctive, and
cannot plead a legally sufficient claim that the mark is not inherently distinctive and
has not acquired distinctiveness.
In addition, in their briefing on the motion for summary judgment, the parties
argue over the scope of Applicant’s abandonment claim based on an alleged
mutilation. Applicant’s brief in opposition to the motion focuses on alleged nonuse of
Opposer’s SMOKEOUT mark as of the date of first use claimed in the underlying
application that matured into Opposer’s pleaded registration. Moreover, in its reply
brief, Opposer argues that Applicant has raised both mutilation and abandonment as
separate claims. Despite the foregoing, the issue before the Board with respect to
Applicant’s abandonment claim based on mutilation is whether Opposer’s registered
mark is an impermissible mutilation of the mark as it’s actually used such that
Opposer abandoned its mark either for a period of three consecutive years or for a
period less than three years with an intent not to resume use.7
7 Applicant’s petition to cancel does not plead a legally sufficient claim of nonuse, and
therefore Applicant may not seek summary judgment as to an alleged nonuse claim. Because
Opposer’s Registration No. 5875606 was filed under Trademark Act § 1(b), 15 U.S.C.
§ 1051(b), a claim of nonuse would require an allegation of nonuse as of the expiration of the
time period to file a statement of use. See Embarcadero Techs., Inc. v. Delphix Corp., No.
92055153, 2016 WL 462869, at *7-8 (TTAB 2016). Moreover, to the extent Applicant is
contending that Opposer’s specimen of use should not have been accepted during prosecution,
the adequacy of specimens is not an independent ground for cancellation. See Gen. Mills, Inc.
v. Health Valley Foods, No. 91076303, 1992 WL 296518, at *2 n. 6 (TTAB 1992) (“the question
of the sufficiency of the specimens is not a proper ground for opposition [or, in this case,
cancellation]”); Century 21 Real Estate Corp. v. Century Life of Am., No. 75090, 1989 WL
281901, at *1 (TTAB 1989) (“it is not the adequacy of the specimens, but the underlying
question of service mark usage which would constitute a proper ground for opposition”).

Opposition No. 91295632 and Cancellation No. 92086338
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II. Summary Judgment Standard
Summary judgment is an appropriate method of disposing of cases in which there
are no genuine disputes of material fact and the moving party is entitled to judgment
as a matter of law. See Fed. R. Civ. P. 56(a). A party moving for summary judgment
has the burden of demonstrating there is no genuine dispute of material fact
remaining for trial and it is entitled to judgment as a matter of law. See Fed. R. Civ.
P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). The evidentiary record,
and all justifiable inferences to be drawn from the undisputed facts, must be viewed
in the light most favorable to the nonmoving party. Olde Tyme Foods, Inc. v.
Roundy’s, Inc., 961 F.2d 200, 202 (Fed. Cir. 1992).
Where the non-movant bears the ultimate burden of persuasion, the moving party
may establish its entitlement to summary judgment by pointing out the lack of
evidence to support any essential element of the non-movant’s case at trial. See
Celotex Corp., 477 U.S. at 323. However, the moving party must satisfy its obligation
of demonstrating that there are no genuine disputes of material fact at issue before
the burden would shift to the non-movant. Id. at 323 (“[A] party seeking summary
judgment always bears the initial responsibility of informing the district court of the
basis for its motion, and identifying those portions of the pleadings, depositions,
answers to interrogatories, and admissions on file, together with the affidavits, if any,
which it believes demonstrate the absence of a genuine issue of material fact.”)
(internal quotations omitted).

Opposition No. 91295632 and Cancellation No. 92086338
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III. Analysis and Decision
A. Abandonment Based on Mutilation
In an application under Trademark Act § 1, the mark on the drawing must be a
complete mark; “when the representation on a drawing does not constitute the
complete mark, it is sometimes referred to as a ‘mutilation’ of the mark.” TRADEMARK
MANUAL OF EXAMINING PROCEDURE (TMEP) § 807.12(d) (Nov. 2025); see also
Trademark Rule 2.51(b), 37 C.F.R. § 2.51(b) (“In an application under section 1(b) of
the Act, the drawing of the mark must be a substantially exact representation of the
mark as intended to be used on or in connection with the goods and/or services
specified in the application, and once . . . a statement of use under § 2.88 has been
filed, the drawing of the mark must be a substantially exact representation of the
mark as used on or in connection with the goods and/or services.”).
Trademark Act § 45 provides, in relevant part, that a mark shall be deemed to be
abandoned:
When its use has been discontinued with intent not to resume such use
. . . Nonuse for 3 consecutive years shall be prima facie evidence of
abandonment. ‘Use’ of a mark means the bona fide use of such mark
made in the ordinary course of trade, and not made merely to reserve a
right in a mark.
15 U.S.C. § 1127. If the involved registration originated from an intent-to-use
application, then the three-year period of nonuse, proof of which would constitute a
prima facie case of abandonment, may be deemed to have commenced with the filing
of either an amendment to allege use or a statement of use in the underlying
application. See Consolidated Cigar Corp. v. Rodriguez, No. 92028292, 2002 WL

Opposition No. 91295632 and Cancellation No. 92086338
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1547556, at *2 (TTAB 2002); cf. NT-MDT LLC v. Kozodaeva, No. 92071349, 2021 WL
1748458, at *6 (TTAB 2021) (“A registration that issues from an application based on
an intent to use the mark in commerce under Section 1(b) is void ab initio if the mark
was not in use in commerce in connection with the goods identified in the application
at the time the amendment to allege use was filed or prior to the expiration of the
time for filing a statement of use.”).
The statement of use in Opposer’s underlying application was filed on July 29,
2019. Thus, as the party moving for summary judgment on Applicant’s claims,
Opposer must establish that, since July 29, 2019, there is no consecutive three-year
period of nonuse of its mark for the involved services, or that it has not ceased such
use without an intent to resume use, as a result of any alleged mutilation.
Opposer contends that “the overwhelming factual evidence of record shows that
[Opposer] has made extensive and continuous use of SMOKEOUT as a standalone
mark in connection with its festivals since well before filing its Statement of Use.”8
Opposer further argues that, even if it did not have extensive evidence of such use, it
has used the term SMOKEOUT as part of its WINDY CITY SMOKEOUT mark in a
manner sufficienct to support registration of SMOKEOUT. Specifically, Opposer
contends that “the term SMOKEOUT plainly makes a separate commercial
impression within the WINDY CITY SMOKEOUT mark.”9
8 Opposition No. 91295632: 13 TTABVUE 3.
9 Id. at 17.

Opposition No. 91295632 and Cancellation No. 92086338
8
In support of its motion, Opposer relies upon, inter alia, the declaration of its
Chief Marketing Officer, Jennifer Bell (hereinafter “the Bell Declaration”), who avers
that “[s]ince 2013, [Opposer] has also conducted an annual three-day festival
featuring live music performances, barbecued foods, and craft beers under the marks
SMOKEOUT and WINDY CITY SMOKEOUT.”10 The Bell Declaration includes
testimony (quoted below) regarding a number of photographs showing Opposer’s use
of the SMOKEOUT mark on signage at their annual events in 2019 and in 2021-2025,
including:
Photograph Ms. Bell’s Description
“Below is a photo of the main welcome
sign at the general admission entrance
of the 2019 SMOKEOUT festival” (13
TTABVUE 31-32, ¶ 15).
“On the following page is photo of a
similar welcome sign that [Opposer]
displayed at one of the entry points for
its 2021 SMOKEOUT festival.” (13
TTABVUE 32-33, ¶ 16).
10 Id. at 25, ¶ 3.

Opposition No. 91295632 and Cancellation No. 92086338
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“Inside [Opposer’s] SMOKEOUT
festivals, [Opposer] also features
numerous booths, displays, and photo
backdrops prominently showcasing the
SMOKEOUT mark. These setups
provide festival-goers with ample
opportunities for memorable photos
featuring the event. Below is a photo
of such a display from [Opposer’s]
2022 SMOKEOUT festival” (13
TTABVUE 33-34, ¶ 17).
“[Opposer] also displays signage
throughout festival grounds featuring
its SMOKEOUT mark alongside
marks of its SMOKEOUT festival
partners. These signs enhance the
event’s branding and highlight
[Opposer’s] collaborations. Below is a
photo of such signage from [Opposer’s]
2023 SMOKEOUT festival” (13
TTABVUE 34-35, ¶ 18).
“At its SMOKEOUT festivals,
[Opposer] also prominently displays
the SMOKEOUT festival mark on the
festival’s main stage. Below are photos
of the SMOKEOUT signage displayed
on the festival’s main stage at the
2024 and 2025 SMOKEOUT festivals,
respectively” (13 TTABVUE 35-36, ¶
19).

Opposition No. 91295632 and Cancellation No. 92086338
10
In addition, the Bell Declaration attaches Internet evidence from the Wayback
Machine showing use of the SMOKEOUT mark, alone and in combination with other
elements, on Opposer’s website from 2013-2025.11 Ms. Bell avers that “[t]hese
captures are consistent with how the www.windycitysmokeout.com website appeared
during those years.”12 For example, from 2020-2024, Opposer used the logo shown
below on its website advertising its annual event:13
In response, Applicant contends that genuine disputes of material fact preclude
summary judgment. In particular, Applicant argues, inter alia, that (i) “[e]vidence
concerning [Opposer’s] alleged use of SMOKEOUT dated after July 12, 2019 has no
bearing on its application for the registration of SMOKEOUT,”14 and therefore the
Board should disregard any such evidence; (ii) the “alleged evidence that it used
SMOKEOUT as a standalone mark does not show use in commerce;”15 and (iii) “the
evidence shows that [Opposer] does not use the word SMOKEOUT by itself; rather,
[Opposer] uses SMOKEOUT in combinations with other words.”16
11 Id. at 153-221.
12 Id. at 28, ¶ 9.
13 See, e.g., id. at 162, 176, 183, 192, 205.
14 Opposition No. 91295632: 16 TTABVUE 8.
15 Id. at 10.
16 Id. at 11.

Opposition No. 91295632 and Cancellation No. 92086338
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As an initial matter, Applicant’s contention that the Board cannot consider
evidence dated after July 12, 2019, the date of first use claimed in Opposer’s
underlying application, is inapposite. Applicant’s pleaded claim is that Opposer’s
mark has been abandoned as a result of an alleged mutilation.17 While it is true that
evidence of use dated prior to July 29, 2019—the date of Opposer’s statement of use—
is not considered for purposes of abandonment in these circumstances,18 evidence of
use from July 29, 2019, and beyond is relevant to whether there have been any
periods of nonuse of the involed mark. See 15 U.S.C. § 1127.
Applicant’s conclusory assertion that Opposer’s evidence of use of the mark
SMOKEOUT mark does not show use in commerce is likewise unpersuasive. The
uncontroverted Bell Declaration attests that Opposer has been using the mark
SMOKEOUT in connection with its annual three-day festival featuring live music
performances and barbequed food since 2013. Moreover, the Bell Declaration provides
unchallenged photographs showing use of the SMOKEOUT mark on signage at
Opposer’s annual festival in 2019 and from 2021-2025. See Aycock Engineering Inc.
v. Airflite Inc., 560 F.3d 1350, 1358 (Fed. Cir. 2009) (quoting 15 U.S.C. § 1127) (“a
service mark was in use in commerce ‘when it is used or displayed in the sale or
advertising of services, and the services are rendered in commerce...’”).
17 As set forth earlier, nonuse as of the expiration of the time period for filing a statement of
use has not been pleaded.
18 “[Applicant] cannot assert a three-year period of nonuse that began prior to [Opposer’s]
filing of its statement of use because an intent-to-use applicant need not use its mark until
it files a statement of use.” Noble House Home Furnishings, LLC v. Floorco Enters., LLC, No.
92057394, 2016 WL 3357265, at *6 (TTAB 2016).

Opposition No. 91295632 and Cancellation No. 92086338
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In view of the foregoing, we find that Opposer has met its initial burden to show
that there is no genuine dispute of material fact that it has not ceased use of its
SMOKEOUT mark for a period of three consecutive years, or a period of less than
three years with an intent not to resume use. Moreover, Applicant has not raised any
genuine disputes of material fact in response. Thus, we find as a matter of law that
Opposer has not abandoned its SMOKEOUT mark.
Accordingly, Opposer’s motion for summary judgment as to Applicant’s
abandonment claim is granted. Judgment as to the abandonment claim is hereby
entered against Applicant, and the petition to cancel in Cancellation No. 92086338 is
denied with prejudice as to the abandonment claim.
B. Mere Descriptiveness
Trademark Act § 2(e)(1), 15 U.S.C. § 1052(e)(1), precludes registration of a mark
on the Principal Register which, when used in connection with the applicant’s goods
or services, is merely descriptive of them. 15 U.S.C. § 1052(e)(1). A mark is “merely
descriptive” within the meaning of § 2(e)(1) if it immediately conveys knowledge of a
quality, feature, function, characteristic or subject matter of the applicant’s goods or
services. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 1300 (Fed. Cir. 2012)
(citing In re Bayer AG, 488 F.3d 960, 963 (Fed. Cir. 2007)).
Opposer contends that “there can be no genuine issue of material fact that the
SMOKEOUT mark is not merely descriptive when considered in the context of
[Opposer’s] festival services.”19 Opposer argues that its mark is at least suggestive,
19 Opposition No. 91295632: 13 TTABVUE 3.

Opposition No. 91295632 and Cancellation No. 92086338
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and that none of the dictionary definitions of the term “smokeout” attached to its
motion “refers to, or bears any relationship to, [Opposer’s] festivals featuring country
music and barbecued food.”20 Opposer also argues, in reply, that Applicant has failed
to raise a genuine issue of material fact regarding descriptiveness.
In contrast, Applicant contends that genuine disputes of material fact preclude
summary judgment as to its mere descriptiveness claim. Specifically, Applicant
argues that Opposer’s “events are live music performance events, and those events
feature cannabis,”21 and that “the USPTO recently found that third party evidence
from [various] websites . . . demonstrated that the wording ‘SMOKEOUT’ is
commonly used in connection with similar services to mean an event with music
featuring cannabis.”22 Applicant also argues that “SMOKEOUT is understood by
consumers to mean an event featuring barbecue and live music performances.”23
Upon review of the arguments and evidence presented by the parties, and drawing
all reasonable inferences in favor of Applicant as the non-moving party, we find there
are genuine disputes of material fact with regard to Applicant’s mere descriptiveness
claim that preclude disposition by way of summary judgment. At a minimum, a
genuine dispute of material fact exists with respect to whether Opposer’s mark
SMOKEOUT immediately conveys information concerning an ingredient, quality,
characteristic, function, feature, purpose, or use of Opposer’s involved services.
20 Id. at 19-20.
21 Opposition No. 91295632: 16 TTABVUE 17.
22 Id. at 16 (internal quotation marks omitted).
23 Id. at 20.

Opposition No. 91295632 and Cancellation No. 92086338
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Accordingly, Opposer’s motion for summary judgment as to Applicant’s mere
descriptiveness claim is denied.24
IV. Proceeding Schedule
Proceedings are resumed. Pursuant to the Board’s inherent authority to control
the cases on its docket, proceedings dates are reset as follows:
Expert Disclosures Due 4/17/2026
Discovery Closes 5/17/2026
Pretrial Disclosures Due for Party in Position of
Plaintiff in Original Claim 7/1/2026
30-day Trial Period Ends for Party in Position of
Plaintiff in Original Claim 8/15/2026
Pretrial Disclosures Due for Party in Position of
Defendant in Original Claim and in Position of
Plaintiff in Counterclaim
8/30/2026
30-day Trial Period Ends for Party in Position of
Defendant in Original Claim, and in Position of
Plaintiff in Counterclaim
10/14/2026
Pretrial Disclosures Due for Rebuttal of Party in
Position of Plaintiff in Original Claim and in Position
of Defendant in Counterclaim
10/29/2026
30-day Trial Period Ends for Rebuttal of Party in
Position of Plaintiff in Original Claim, and in Position
of Defendant in Counterclaim
12/13/2026
Pretrial Disclosures Due for Rebuttal of Party in
Position of Plaintiff in Counterclaim 12/28/2026
15-day Trial Period Ends for Rebuttal of Party in
Position of Plaintiff in Counterclaim 1/27/2027
24 The fact that we have identified at least one genuine dispute of material fact as a sufficient
basis to deny Opposer’s motion for summary judgment should not be construed as a finding
that this is necessarily the only dispute that remains for trial. Also, evidence submitted with
a summary judgment motion, or in opposition thereto, is of record only for consideration of
the motion. To be considered at final decision, such evidence must be properly introduced
during the appropriate trial period. See Levi Strauss & Co. v. R. Josephs Sportswear Inc., No.
91081072, 1993 WL 444262, at *1 n.2 (TTAB 1993).

Opposition No. 91295632 and Cancellation No. 92086338
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Opening Brief for Party in Position of Plaintiff in
Original Claim Due 3/28/2027
Combined Brief for Party in Position of Defendant in
Original Claim and Opening Brief as Plaintiff in
Counterclaim Due
4/27/2027
Combined Rebuttal Brief for Party in Position of
Plaintiff in Original Claim and Brief as Defendant in
Counterclaim Due
5/27/2027
Rebuttal Brief for Party in Position of Plaintiff in
Counterclaim Due 6/11/2027
Request for Oral Hearing (optional) Due 6/21/2027
Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
manner and timing of taking testimony, matters in evidence, and the procedures for
submitting and serving testimony and other evidence, including affidavits,
declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
submitted in accordance with Trademark Rules 2.128(a) and (b). Such briefs should
utilize citations to the TTABVUE record created during trial, to facilitate the Board’s
review of the evidence at final hearing. Oral argument at final hearing will be
scheduled only upon the timely submission of a separate notice as allowed by
Trademark Rule 2.129(a).