Fancy Talk LLC v. Building Better Days, LLC

This opinion is not a
precedent of the TTAB
Mailed: January 9, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Fancy Talk LLC
v.
Building Better Days, LLC
_____
Cancellation No. 92079575
_____
J. Alexander Hershey and Adam J. Fromm, of Clark Hill PLC,
for Petitioner Fancy Talk, LLC.
C. Nicole Gaither and Jay Kotzker, of Holon Law Partners LLP,
for Respondent Little Brown House, LLC.
_____
Before Thurmon, Casagrande, and O’Connor,
Administrative Trademark Judges.
Opinion by Casagrande, Administrative Trademark Judge:
This cancellation proceeding turns on which party first developed rights in the
trademark REEFER MADNESS for apparel and mugs.
Little Brown House, LLC, the predecessor of Respondent Building Better Days,
LLC, obtained Registration No. 5200743, which issued from an application filed in
2015, for the standard-character mark REEFER MADNESS for goods identified as:

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Beer mugs; Ceramic mugs; China mugs; Coffee mugs; Cups and
mugs; Mugs made of ceramic materials; Mugs made of china;
Mugs made of earthenware; Mugs made of fine bone china; Mugs
made of plastic; Mugs made of porcelain, in International Class
21; and
Clothing, namely, t-shirts, tank tops, tops, shirts, and hooded
sweatshirts, in International Class 25.1
On April 26, 2022, Fancy Talk LLC filed a petition to cancel the registration.2 The
Petition contains one count: a claim under Section 2(d), 15 U.S.C. § 1052(d), that
Petitioner, itself and through its predecessors and licensees, since at least as early as
1999, used and continues to use REEFER MADNESS as a trademark in connection
with mugs and apparel and that Respondent’s registered mark is likely to cause
confusion as to source.3 The Petition also attaches, inter alia, Petitioner’s Application
Serial No. 90585937 for the mark REEFER MADNESS (the ’937 Application)4 and
1 Little Brown House filed its application on September 9, 2015, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on its statement that it had a bona fide intention
to use the mark in commerce in connection with the identified goods. After allowance, it filed
a statement of use averring first use anywhere at least as early as January 21, 2016, and
first used in commerce at least as early as February 25, 2017. On April 6, 2023, the USPTO
accepted a Section 8 declaration of use. Due to an assignment of the challenged registration,
Building Better Days, LLC, has been substituted as Respondent. See 16 TTABVUE.
References to the briefs, other filings in the case, and the record cite the Board’s TTABVUE
docket system. The number preceding “TTABVUE” is the docket number assigned to the cited
filing in TTABVUE and any number immediately following “TTABVUE” identifies the
specific page(s) to which we refer.
2 See 1 TTABVUE.
3 See id. at 11. The Petition also alleges that Petitioner owns the rights to several REEFER
MADNESS creative works dating back as far as 1999, including a live theatrical musical
production, an original cast recording of the musical, a film adaptation, and a later benefit
concert version. See id. at 6-7.
4 See id. at 13-54.

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alleges that the USPTO, based on Respondent’s registration, refused registration to
the extent that the ’937 application identified mugs and apparel.5
Respondent answered, denying the salient allegations and asserting several
defenses under the heading “Affirmative Defenses.”6 During the trial period, both
parties submitted evidence and then filed briefs.7
The case is now ready for decision. For the reasons set forth below, we grant the
petition to cancel.
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of Respondent’s registration.
During their trial periods, both parties submitted very long Notices of Reliance
that attached not only various documents suitable for such Notices, but also several
declarations as well as transcripts of trial testimony depositions.8 We note
preliminarily that declarations are testimony and should not be included in Notices
5 See id. at 9-10. The other goods and services identified in the application, as well as
another application Petitioner alleges to have filed for yet further goods, ultimately play no
role in how we resolve this dispute, so we do not need to summarize them here.
6 See 4 TTABVUE. Under the heading “Affirmative Defenses,” Respondent also asserted
that the Petition fails to state a claim. See id. at 5. This is not an affirmative defense. See,
e.g., Shenzhen IVPS Tech. Co. v. Fancy Pants Prods., LLC, No. 91263919, 2022 WL 16646840,
at *1 n.5 (TTAB 2022). Respondent also stated that it “reserves the right” to amend to add
more affirmative defenses later. See id. at 7. This is improper and unnecessary. See, e.g.,
Made in Nature, LLC v. Pharmavite LLC, No. 91223352, 2022 WL 2188890, at *3 (TTAB
2022). Fed. R. Civ. P. 15 governs amendment of pleadings. A purported reservation in a
pleading has no effect on Rule 15.
7 See 60 TTABVUE (Petitioner’s brief); 64 TTABVUE (Respondent’s brief); 69 TTABVUE
(Petitioner’s rebuttal brief).
8 See 33 TTABVUE (Petitioner); 36 TTABVUE (Respondent).

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of Reliance. They instead should be filed separately. So, too, with trial testimony
deposition transcripts. Trademark Rule 2.122(g), 37 C.F.R. § 2.122(g), states that
“[t]he types of evidence admissible by notice of reliance are identified in paragraphs
(d)(2) and (e)(1) and (2) of this section and § 2.120(k).” Referenced subparagraph (d)(2)
concerns registrations; subparagraph (e)(1) concerns printed publications; and
subparagraph (e)(2) concerns Internet materials. Referenced section 2.120(k)
concerns discovery depositions and responses to written discovery. Trial testimony is
not listed as a type of evidence to be attached to a notice of reliance. Rather, trial
testimony is to be submitted separately pursuant to the procedure set forth in Rules
2.123(a)(1) & (b) and 2.125(a) & (d). That way, the trial testimony is reflected in
separate entries in TTABVUE. When trial testimony is included in Notices of
Reliance, it is harder for the Board to find the testimony when cited, especially when
the Notices of Reliance are, as here, thousands of pages long. It also makes it harder
for the submitting party’s adversary to identify testifying witnesses for possible oral
cross-examination, see generally WeaponX Performance Prods. Ltd. v. Weapon X
Motorsports, Inc., No. 91221553, 2018 WL 1326374, at *3 (TTAB 2018), and thus
could facilitate gamesmanship.
Petitioner’s Notice of Reliance contained the declarations of:
• America Olivo Campbell, a member and manager of Fancy Talk, LLC (with
exhibits);9
• Christian Campbell, member and manager at Fancy Talk, LLC and an
actor in the REEFER MADNESS musical at various times (with exhibits);10
9 33 TTABVUE 29-182.
10 Id. at 184-372.

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• Dan Studney, member and manager at Fancy Talk, LLC and original co-
developer of the REEFER MADNESS musical (with exhibits);11
• Kevin Murphy, member and manager at Fancy Talk, LLC and original co-
developer of the REEFER MADNESS musical (with exhibits);12
• Caroline Barnard, Senior Vice President of Business and Legal Affairs at
Concord Theatricals (a licensee of Petitioner’s predecessors) (with
exhibits);13
• Paul Nygro, an actor in the REEFER MADNESS musical from 1998-2001
and, during that time, a member of the licensee who performed it;14
• Robert Torti, an actor in the REEFER MADNESS musical from 1999-
2001;15
• Craig Coursey, a manager at Broadway New York Inc., which sold REEFER
MADNESS t-shirts in 2001;16
• Kristen Anne Bell, a performer in the 2001 stage production and 2005
movie version of REEFER MADNESS;17
• Linda Noveroske-Tritten (associated with a licensed 2007 Reno, NV
performance of the REEFER MADNESS musical) (with exhibits);18
• Lydia Nightingale (associated with a licensed SUNY New Paltz
performance of the REEFER MADNESS musical in 2009) (with exhibit);19
11 Id. at 374-528.
12 Id. at 530-674.
13 Id. at 676-713.
14 Id. at 715-17. In this declaration (and in several of Petitioner’s other attached
declarations), digital signatures were missing. Upon discovering this, Petitioner, with
Respondent’s consent and the Board’s later approval (see 59 TTABVUE), submitted
replacement copies with signatures. They appear at 58 TTABVUE. This decision will cite to
33 TTABVUE when discussing these declarations.
15 33 TTABVUE 719-21.
16 Id. at 723-24.
17 Id. at 727-29.
18 Id. at 731-32.
19 Id. at 735-40.

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• Michael McKelvey, Producing Artistic Director at Doctuh Mistuh
Productions, a sublicensee of Concord in 2013 and 2017 who did licensed
productions of the REEFER MADNESS musical in Pittsburgh and
Louisiana (with exhibits);20
• Pamela Hirsch, co-founder of a nonprofit entity for whose benefit licensed
2014 and 2015 REEFER MADNESS shows were performed (with
exhibits);21
• Shoshana Feinstein, who assisted with the 2014 and 2015 REEFER
MADNESS benefit shows (with exhibits);22
• Nicole Hanson, “owner of Spirited Designs, a company engaged in the
business of making, designing, and producing t-shirts” (with exhibits);23
• Anthony Schrock, a performer in a licensed production of a REEFER
MADNESS musical in 2022 (with exhibits);24
• Gail L. Woerner, affiliated with a theatre group in NJ that put on a licensed
2023 production of the REEFER MADNESS musical (with exhibits);25
• The transcript of the oral trial deposition testimony of Eli W. Slankard
(affiliated with Respondent) with deposition exhibits;26 and
• The transcript of the oral trial deposition testimony of Charlotte Peel (sole
owner and manager of Building Better Days, LLC) with deposition
exhibits.27
As to documents appropriately attached to Petitioner’s Notice, these include:
20 Id. at 742-80.
21 Id. at 783-89.
22 Id. at 791-822.
23 Id. at 823-26.
24 Id. at 828-30.
25 Id. at 832-38.
26 Id. at 840-1196.
27 Id. at 1198-1413.

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• The prosecution file of Petitioner’s ’937 Application, including the Office
Action refusing registration as to mugs and apparel in view of Respondent’s
registration;28
• The prosecution file of Petitioner’s Appl. Ser. No 90607727;29
• The file for Petitioner’s Reg. No. 6,933,645;30
• The Notice of Allowance for Petitioner’s Appl. Ser. No. 90977485;31 and
• The USPTO’s records for Petitioner’s Appl Ser. No. 98303874.32
During its trial period, Respondent submitted a First Notice of Reliance33
attaching the declarations of:
• Charlotte Peel, the sole owner of Respondent (with exhibits);34
• Eli Slankard, a consultant who works with Respondent (with exhibits);35
• Ryan Ashby, General Manager of Respondent (with exhibits);36
• John Arsenault, the lawyer who represented Respondent with respect to
prosecuting the application that matured into the challenged registration
(with exhibits);37 and
28 Id. at 1472-1617.
29 Id. at 1619-1742.
30 Id. at 1744-1943.
31 Id. at 1945-47.
32 Id. at 1948-58.
33 36 TTABVUE.
34 Id. at 19-719. Our criticism, supra, of the practice of submitting trial declarations of fact
witnesses in notices of reliance, rather than separately filing then as testimony, applies
equally to Respondent.
35 Id. at 721-829.
36 Id. at 831-41.
37 Id. at 843-61.

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• Nadav Aschner, an attorney involved in the sale to Respondent of the assets
of a predecessor entity (with exhibits).38
Respondent’s First Notice also attached other documents, including:
• The deposition transcript of Eli Slankard (with exhibits);39
• The deposition transcript of Charlotte Peel (with exhibits);40
• The deposition transcript of Caroline Barnard (with exhibits);41
• The deposition transcript of Michael McKelvey (with exhibit);42
• Petitioner’s Initial Disclosures and Petitioner’s responses to written
discovery requests;43
• Respondent’s responses to Petitioner’s First Sets of Interrogatories and
Requests for Admission;44
• The file history of Petitioner’s ’937 Application;45 and
• The assignment through which Petitioner succeeded to Studney and
Murphy’s interests in their REEFER MADNESS trademarks.46
38 Id. at 862-1091. This version was unsigned. A signed version appears in a “Supplemental”
Notice of Reliance (37 TTABUE), which also contains the deposition transcript of Kevin
Murphy.
39 Id. at 1093-1449.
40 Id. at 1451-1666.
41 Id. at 1668-1882.
42 Id. at 1824-1901.
43 Id. at 1955-97.
44 Id. at 1999-2014. We note that a party may not make its own discovery responses
(interrogatory responses and requests for admission) of record except to the extent necessary
to make not misleading the discovery responses submitted by the inquiring party. See, e.g.,
DowntownDC Bus. Improvement Dist. v. Clarke, No. 91275100, 2024 WL 4449409, at *2 n.10
(TTAB 2024); Orange Bang, Inc. v. Olé Mexican Foods, Inc., No. 91189001, 2015 WL 5675641,
at *5 n.16 (TTAB 2015).
45 Id. at 2015-2161.
46 Id. at 2163-65.

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Respondent submitted a second Notice of Reliance attaching more legible copies
of certain of the materials attached to its first Notice of Reliance.47 Respondent also
re-submitted the declaration of Charlotte Peel, this time designated as testimony.48
During its rebuttal period, Petitioner submitted a Rebuttal Notice of Reliance
attaching, inter alia, the deposition transcripts of Ryan Ashby, John Arsenault, and
Nadav Aschner (all with exhibits) and a rebuttal declaration from Dan Studney.49
II. Petitioner is statutorily entitled to pursue this cancellation
proceeding
Before we begin, we need to make sure the relevant statute authorizing us to
decide petitions to cancel registrations entitles Petitioner to have instituted and
prosecuted this proceeding. Otherwise, we lack authority to rule on the various issues
the case raises. Section 14 of the Trademark Act, 15 U.S.C. § 1064, authorizes
petitions for cancellation to be filed “by any person who believes that he is or will be
damaged … by the registration of a mark.” To be so entitled, a party petitioning for
cancellation of a registration must plausibly allege and demonstrate: (1) an interest
within the zone of interests protected by the cancellation statute, i.e., a direct and
personal stake in the outcome of a cancellation proceeding; and (2) a reasonable belief
in damage proximately caused by registration of the mark in violation of the statute.
Curtin v. United Trademark Holdings, Inc., 137 F.4th 1359, 1364-65, 1367 (Fed. Cir.
47 See 40 TTABVUE.
48 See 39 TTABVUE. The exhibits to this version are largely more legible than the version
appearing in 36 TTABVUE.
49 See 54 & 55 TTABVUE.

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2025) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 120-
37 (2014)).
Neither party’s trial brief addresses statutory entitlement. But just because they
don’t address it doesn’t mean we can assume it. Cf. Wirecard AG v. Striatum Ventures
B.V., No. 92069781, 2020 WL 973179, at *3 n.6 (TTAB 2020) (“parties may not
stipulate to a plaintiff’s [statutory entitlement] in the absence of supporting facts”).
Our examination of the pleadings and the record discloses that Petitioner is
statutorily entitled to pursue this proceeding. In particular, the Petition alleges that
Petitioner seeks cancellation under Trademark Act Section 14 of Respondent’s
registration based on its prior common law rights in a mark identical to Respondent’s
registered mark.50 Petitioner also alleges that its ’937 application for the mark
REEFER MADNESS has been refused in-part, due to Respondent’s registration and
has made of record the prosecution history of the ’937 Application, including the
refusal based on Respondent’s registration.51 That suffices to show Petitioner’s
entitlement to have instituted and maintained this statutory cancellation proceeding.
See, e.g., Life Zone Inc. v. Middleman Grp. Inc., No. 91160999, 2008 WL 2781162, at
*6 (TTAB 2008) (suspension of opposer’s pending trademark application based on the
applicant’s application sufficient); see also Lipton Indus. Inc. v. Ralston Purina Co.,
670 F.2d 1024, 1029 (CCPA 1982) (“rejection of [the plaintiff’s] application during
prosecution” in light of defendant’s registration sufficient to invoke cancellation
50 See 1 TTABVUE 7-9.
51 See 33 TTABVUE 1472-1617.

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proceeding). Petitioner also has pleaded ownership and use of its alleged common law
mark REEFER MADNESS and has submitted evidence in support of these
allegations. This independently suffices to demonstrate entitlement to petition to
cancel under Section 14. See, e.g., DeVivo v. Ortiz, No. 91242863, 2020 WL 1227592,
at *2 (TTAB 2020).
III. Evidentiary objections
Respondent purports to “object[ ] to numerous submissions offered under Fancy
Talk’s Notice of Reliance as incompetent, irrelevant, immaterial, and hearsay,”
asserting in generalized terms that “the evidence fails to comply with the Board’s
procedural rules, lacks foundation and/or proper authentication” and is also subject
to “substantive objections.”52
Such broadbrush, wholesale objections are inappropriate and unhelpful to the
Board. “We will not fill in the void” for a party who does not, for example, “explain
how the evidence is irrelevant.” State Permits, Inc. v. Fieldvine, Inc., No. 92075095,
2024 WL 3825297, at *4 (TTAB 2024) (citation omitted). “Moreover, as decisions of
the Board often point out, Board proceedings are heard by Administrative Trademark
Judges, not lay jurors who might easily be misled, confused, or prejudiced by
irrelevant evidence.” Id. “The Board is capable of weighing the relevance and strength
or weakness of the objected-to testimony and evidence, including any inherent
limitations, and keeping in mind the various objections raised by the parties” in
52 64 TTABVUE 10-11. Respondent lists the declarations of America Olivo Campbell,
Christian Campbell, Craig Coursey, Kristen Bell, Linda Tritten, Lydia Nightingale, Pamela
Hirsch, Shoshana Feinstein, Nicole Hanson, Anthony Schrock, and Gail L. Woerner. See id.

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determining the probative value of objected-to testimony and evidence.” Id. (cleaned
up; citations omitted). We therefore will not strike any of the listed declarations based
on these generalized objections, but we will accord them whatever probative value we
deem appropriate. See id.53
IV. Analysis54
A. Section 2(d) generally
There are two elements to a claim under Section 2(d). “[A] party petitioning for
cancellation under section 2(d) must show [1] that it had priority and [2] that
registration of the mark creates a likelihood of confusion.” Herbko Int’l, Inc. v. Kappa
Books, Inc., 308 F.3d 1156, 1162 (Fed. Cir. 2002) (bracketed numbers added); see also
Hornby v. TJX Cos., No. 92044369, 2008 WL 1808555, at *9 (TTAB 2008) (“In order
to prevail on her claim of likelihood of confusion (Section 2(d) of the Trademark Act),
53 We do, however, agree with Respondent’s specific objection that Exhibit O to the
declarations of America Olivo Campbell, see 33 TTABVUE 113-38, and Christian Campbell,
see id. at 268-93, is mostly illegible. If evidence is illegible, it has no probative value. See, e.g.,
In re Virtual Indep. Paralegals, LLC, No. 86947786, 2019 WL 1453034, at *8 n.23 (TTAB
2019) (“If evidence is not legible, we cannot consider it.”) (citations omitted). To the extent we
cannot discern what parts of Exhibit O say, those parts obviously play no role in our decision.
See Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., No. 92050879, 2013 WL 5407315,
at *8 (TTAB 2013) (illegible aspects of submitted documents not considered), aff’d mem., 565
F. App’x 900 (Fed. Cir. 2014).
54 In its trial brief, Petitioner asserts an unpleaded claim: that Respondent’s registration is
void ab initio because the underlying application was filed in the name of an entity that did
not exist at the time. We generally do not entertain unpleaded claims, see generally
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 314 (2025-26), but
Respondent levelled no objection to consideration of that unpleaded claim on that, or any
other, basis. Instead, Respondent’s trial brief addressed the claim head-on, thus forfeiting
any threshold objection and effectively giving its implied consent to trial of this claim. See
generally Fed. R. Civ. P. 15(b)(2). As we explain below, however, there is no need to reach
this unpleaded claim because we find in Petitioner’s favor on the pleaded Section 2(d) claim.

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petitioner must prove both the elements of priority of use and likelihood of
confusion.”). A petitioner must prove its claim by a preponderance of the evidence.
See, e.g., Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d 994, 998
(Fed. Cir. 2020); W. Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 1128 (Fed. Cir.
1994).
B. Element 1: Who has priority?
Respondent says that it is entitled to a constructive priority date of September 9,
2015, the date it filed the intent-to-use application that matured into the challenged
registration.55 Under Section 7(c) of the Trademark Act, 15 U.S.C. § 1057(c), a
registrant may rely upon the filing date of the application underlying its registration
for purposes of priority as its constructive use date. See, e.g., Look Cycle Int’l v.
Kunshan Qiyue Outdoor Sports Goods Co., No. 92079409, 2024 WL 3739358, at *4
Cent. Garden & Pet Co. v. Doskocil Mfg. Co., No. 91188816, 2013 WL 4635990 at *5
(TTAB 2013). Petitioner appears to agree.56 Petitioner, however, argues that it has
proven use of the mark REEFER MADNESS on mugs and apparel much earlier than
2015—indeed, back to 1999—by sales made by its predecessors-in-interest and by
their licensees.57
Before assessing Petitioner’s evidence of use, it is useful to limn how Petitioner
(Fancy Talk LLC) came to be the asserted holder of the purported trademark rights
55 See 64 TTABVUE 19.
56 See 69 TTABVUE 13.
57 See, e.g., 60 TTABVUE 1, 13-14, 22, 24-25, 35.

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to which it lays claim. The basic facts are these. “Reefer Madness” was the name of a
film that was released in the 1930s.58 In the late 1990s, Studney and Murphy created
a musical theater adaptation of the movie and called it “Reefer Madness.”59 They
successfully arranged for public performances of the show in Los Angeles (from 1999-
2000) and then in New York City in 2001.60 They spent the next few years making it
into a movie, which came out in 2005.61
In 2006, Studney and Murphy licensed their “Reefer Madness” rights to R&H
Theatricals (“R&H”). These rights included: the right to sublicense third-party
theater groups around the country to perform the REEFER MADNESS musical and
the right “to execute in its own name contracts granting licenses for the creation and
sale of merchandising items in connection with licensed performances of the Musical
hereunder, including, without limitation, souvenir programs, T-shirts, sweatshirts,
ceramic and glassware, and to charge reasonable fees attendant thereto (Owners
shall have the right to approve all merchandise hereunder) … .”62 In 2017, another
company (“Concord”) acquired R&H, obtaining as part of the acquisition R&H’s
58 See 37 TTABVUE 20-21 (Murphy deposition).
59 See id.
60 See id. at 22-24.
61 See id. at 24-25.
62 See, e.g., 33 TTABVUE 379, 433.

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licensed rights.63 In 2022, Studney and Murphy assigned their rights, including their
rights as Concord’s licensor, to Petitioner.64
While Respondent contests whether the rights Petitioner asserts in this case are
sufficient to support Petitioner’s Section 2(d) claim, it does not contest that Petitioner
is the successor to and proper owner of the rights that Petitioner asserts in REEFER
MADNESS.
To prove prior use of REEFER MADNESS in connection with sales of mugs and
apparel, Petitioner submitted declarations from several people attesting to sales of
mugs and apparel in connection with various performances around the country of the
REEFER MADNESS musical and other REEFER MADNESS shows. These include65:
• America Olivo Campbell, who testified, inter alia, that:
o T-shirts and other apparel were sold in connection with the 1999
performances in Los Angeles;
o T-shirts and other apparel were sold in connection with the 2001 New
York City performances;
o T-shirts were also sold in 2005 in connection with the new REEFER
MADNESS movie; and
63 See, e.g., id. at 379 n.2, 487-90.
64 See, e.g., id. at 379-80, 483-85. Studney and Murphy took a license back from Concord
giving them the right to grant sublicenses to theater groups to perform the musical and sell
merchandise in connection with licensed performances.
65 These summaries of testimony do not attempt to summarize every topic upon which each
declarant testified, but are limited to the dates and circumstances surrounding testimony
about specific instances of sales of mugs and apparel.

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o T-shirts were offered online in connection with a licensed Minnesota
production of the musical in 2022;66
• Christian Campbell, who performed in the 1999 – 2001 Los Angeles and New
York City runs of the musical, who testified essentially to the same effect as
America Olivo Campbell;67
• Caroline Barnard, a Senior Vice President at Concord, who testified that local
theaters who are licensed to perform the musical traditionally do sell
promotional merchandise on-site;68
• Paul Nygro, who performed in the musical from 1999-2001, testified to sales of
apparel and mugs and other merchandise during those performance runs;69
• Robert Torti, who also performed in the musical from 1999-2001, testified
similarly to Mr. Nygro as to sales of apparel and mugs and other merchandise
during those performance runs;70
• Craig Coursey, who testified that “[i]n 2001, Broadway New York, Inc., DBA
Broadway New York, located at 1535 Broadway, sold t-shirts from the Off-
Broadway Musical ‘Reefer Madness”’;71
• Kristen Anne Bell, who testified that “[a]s part of the promotion and marketing
for the [2001 NYC] Stage Production, branded goods bearing the REEFER
MADNESS Trademarks, including show posters, bumper stickers, t-shirts,
66 33 TTABVUE 29-31 (and associated exhibits), 70-71 (2022 online order form). We note
that, for many of the instances regarding REEFER MADNESS apparel, Ms. Campbell (and
Christian Campbell) testify that such apparel was “sold and/or distributed.” Use in
connection with sales is trademark use, but we don’t precisely know what these two
declarants mean by “distributed.” If the distribution was not to, or perceived by, the public,
then it might not count as trademark use. See generally Morgan Creek Prods., Inc. v. Foria
Int’l, Inc., No. 91173806, 2009 WL 1719597, at *10-11 (TTAB 2009). We therefore have
somewhat less confidence in statements using the potentially ambiguous phrase “sold and/or
distributed.” Thus, we list above and rely on the instances where the declarant said “sold”
without the “and/or distributed.”
67 Id. at 184-86 (and associated exhibits).
68 Id. at 675-79.
69 Id. at 715-17.
70 Id. at 719-21.
71 Id. at 723-24.

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sweatshirts, and CDs, were sold to the general public via a merchandise stand
in the Variety Arts Theater”;72
• Linda Noveroske-Tritten, who testified that she worked at the theatre in Reno,
NV, that was licensed in 2007 to perform the musical, and that “branded goods
bearing the REEFER MADNESS mark (including t-shirts) were made and sold
to the public” at those shows;73
• Lydia Nightingale, who testified that she acted in a licensed production of
Reefer Madness at Paper Rain Laboratory Theatre at SUNY New Paltz in 2009
and that, “[a]s part of the promotion and marketing for the production, branded
goods bearing the mark REEFER MADNESS, including t-shirts, were made
and offered for sale to the public at the theatre”;74
• Michael McKelvey, Producing Artistic Director at Doctuh Mistuh Productions,
which operates three theater companies, testified that his company was
licensed from 2013-17 and during that time sold around 250 REEFER
MADNESS t-shirts;75
• Pamela Hirsch, the co-founder of Baby Quest Foundation, a nonprofit that was
the beneficiary of licensed benefit performances at New World Stages (2014)
and 54 Below (2015), testified that Reefer Madness t-shirts and mugs were
auctioned off in connection with those benefit performances;76
• Nicole Hanson testified that she is “the owner of Spirited Designs, a company
engaged in the business of making, designing, and producing t-shirts,” that she
“made and sold approximately 30 t-shirts for the fully licensed productions of
Reefer Madness (the ‘Production’), produced by Art Centre Theatre, which was
held in Plano Texas in April 2016 and again in April 2017;” and that, “[a]s part
of the promotion, marketing, and revenue for the Production, branded goods
bearing the mark REEFER MADNESS, including the REEFER MADNESS t-
72 Id. at 727-29.
73 Id. at 731. An exhibit to the Studney Declaration corroborates the theater’s license. See
id. at 443 (listing Bruka Theatre as a 2007-08 licensee).
74 Id. at 735-36. An exhibit to the Studney Declaration corroborates the theater’s license.
See id. at 450 (listing Paper Rain Laboratory Theatre as a 2009 licensee).
75 Id. at 741-43. An exhibit to the Studney Declaration corroborates that Doctuh Mistuh
Productions was a licensee during that period. See id. at 452, 453, 495.
76 Id. at 783-84. Shoshana Feinstein testifies to the same effect as Ms. Hirsch. See id. at
791-92. An exhibit to the Studney Declaration corroborates that New World was authorized,
id. at 534, as was 54 Below, id. at 452.

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shirts manufactured by Spirited Designs for the Production, were made and
sold to the public at the theatre and online”;77 and
• Gail Woerner testified that she is “the 2nd Vice Chairman at Somerset County
Cultural Arts Center, operating as Brook Arts Center,” that “BACCP is a
sublicensee of … Concord … and has sublicensed the REEFER MADNESS
Trademarks … in 2023,” that “BACCP has used the REEFER MADNESS
Trademarks in connection with Reefer Madness musical performances …
taking place in Bound Brook, NJ,” and that “BACCP sold goods bearing the
REEFER MADNESS Trademarks, including on t-shirts, mugs and ashtrays,”
amounting to sales of “approximately 60 t-shirts, mugs and ashtrays bearing
the REEFER MADNESS Trademarks.”78
These declarations provide specific and credible testimony that authorized sales
of REEFER MADNESS apparel occurred in 1999-2001, 2005, 2007, 2009, 2013-17,
2022, and 2023. There is specific and credible testimony of mug sales during 1999-
2001, 2014 & 2015, and thereafter. We reject Respondent’s argument that this
evidence is not set forth with “meaningful specificity or detail.”79 And Studney’s and
Murphy’s testimony more generally attests to sales of such merchandise throughout
that entire period by at least some of the hundreds of local theaters that put on
licensed performances of the musical.
77 Id. at 824-25. An exhibit to the Studney Declaration corroborates that Art Center Theatre
was authorized. See id. at 453.
78 Id. at 832-34.
79 See 64 TTABVUE 22. We also reject Respondent’s argument that Petitioner’s evidence is
insufficient because it does not reflect a “continuous offering or sales” See id. The evidence
clearly belies such a characterization. And in any event, “continuous use is not required to
establish Petitioner’s priority.” Kemi Organics, LLC v. Gupta, No. 92065613, 2018 WL
2230555, at *7 (TTAB 2018). Even “sporadic use” may suffice if it is credible. Id.; cf. Person’s
Co. v. Christman, 900 F.2d 1565, 1571 (Fed. Cir. 1990) (stating “[t]here is also no rule of law
that the owner of a trademark must reach a particular level of success, measured either by
the size of the market or by its own level of sales, to avoid abandoning a mark” and affirming
summary judgment of nonabandonment notwithstanding that sales “were often
intermittent”).

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Prior use may be established even by the testimony of one credible witness. See,
e.g., Powermatics, Inc. v. Glebe Roofing Prods. Co., 341 F.2d 127, 130 (CCPA 1965)
(“oral testimony, if sufficiently probative, is normally satisfactory to establish priority
of use in a trademark proceeding”); Kohler Co. v. Baldwin Hardware Corp., No.
92041434, 2007 WL 117575, at *8 (TTAB 2007) (same). Here, we have the testimony
of multiple witnesses. In addition, some witnesses provided documentary evidence
corroborating their testimony. Finally, some testimony is corroborated by documents
consistent with testimony Studney and Murphy supplied about various performances
they produced and the specific licensed local theaters that performed the musical.
See, e.g., Elder Mfg. Co. v. Int’l Shoe Co., 194 F.2d 114, 118 (CCPA 1952) (“Oral
testimony is obviously strengthened by corroborative documentary evidence.”).
Respondent suggests that Petitioner “abandoned” its rights in the mark for mugs
and apparel because the license Studney and Murphy granted to R&H (to which
Petitioner succeeded) did not specifically mention trademark rights or specify
quantities.80 Trademark licenses don’t have to be explicit or in formalized, written
form, however; they can be implied by the circumstances. See, e.g., McCoy v.
Mitsuboshi Cutlery, Inc., 67 F.3d 917, 920 (Fed. Cir. 1995); see also Sock It to Me, Inc.
v. Fan, No. 91230554, 2020 WL 3027605, at *5 (TTAB 2020) (even without a formal
written agreement, a license can be implied by conduct; it can also be an oral license).
Here, the evidence discloses circumstances from which it requires no leap to infer a
trademark license. In particular, while it doesn’t use the formal term “trademark
80 See 64 TTABVUE 15-17, 24-26.

Cancellation No. 92079575
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license,” the written agreement Studney and Murphy entered into with R&H
contained provisions which plainly imply, and come close to explicitly reciting, a
trademark license covering sales of REEFER MADNESS merchandise by the theatre
groups that obtained sublicenses to perform the musical:
• One of the purposes of the agreement was for R&H “to acquire certain exclusive
rights to the Musical and Owners [Studney and Murphy] wish to grant said
rights to R&H”;81
• One of the rights Studney and Murphy granted to R&H was “the right … to
execute in its own name contracts granting licenses for the creation and sale
of merchandising items in connection with licensed performances of the
Musical hereunder, including, without limitation, souvenir programs, T-shirts,
sweatshirts, ceramic and glassware … (Owners shall have the right to approve
all merchandise hereunder)”;82 and
• The royalties due Studney and Murphy under this license were based on a
formula that took into account “all amounts paid to R&H Theatricals pursuant
to licenses issued by it for the right to create and sell merchandise in
connection with licensed performances of the Musical.”83
The clear import of these provisions was that Studney and Murphy’s license to
R&H contemplated that R&H would in turn allow parties it contracted with to create
and sell REEFER MADNESS merchandise, including shirts, ceramic ware, and
glassware, in connection with promoting sublicensees’ performances of the musical.
Respondent also quibbles that Petitioner “never exercised sufficient control over
the licensees.”84 But, as we just summarized, the license agreement provided for the
licensors’ right to approve all merchandise. Respondent’s conclusory argument cites
81 33 TTABVUE 583.
82 Id. at 589.
83 Id. at 591.
84 See 64 TTABVUE 26.

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no evidence showing that Petitioner (or its predecessors in interest) failed to exercise
sufficient control and the record, which shows that the licensors carefully tracked the
licensing activity generally, supports a contrary finding.85
We therefore find that Petitioner has shown that its REEFER MADNESS mark
was, in the language of Section 2(d), “previously used in the United States … and not
abandoned.”
Because Petitioner has proved priority of use of REEFER MADNESS in
connection with mugs and apparel by a preponderance of evidence, we now turn to
whether Respondent’s use of the same mark on the same types of goods is likely to
cause consumer confusion.86
C. Element 2: Is confusion likely?
Section 2(d) of the Trademark Act prohibits registration of a mark that “so
resembles a mark registered in the Patent and Trademark Office … as to be likely,
when used on or in connection with the goods of the applicant, to cause confusion, or
to cause mistake, or to deceive.” 15 U.S.C. § 1052(d). We determine whether confusion
is likely by analyzing all probative facts in evidence relevant to the likelihood-of-
confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
85 See 69 TTABVUE 17 (citing Barnard testimony about Concord’s quality oversight, 40
TTABVUE 326-29, and Studney Rebuttal Dec., 55 TTABVUE 495-607).
86 Because we have found that Petitioner has proved prior use of REEFER MADNESS as to
goods identical to those in the challenged registration, we can limit our assessment of
likelihood of confusion to those identical goods. Thus, we need not consider Petitioner’s
alternative theory that Respondent’s use of the mark for mugs and apparel is likely to cause
consumer confusion in light of Petitioner’s prior use of the mark for musical theatre
performance and various other services.

Cancellation No. 92079575
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1361 (CCPA 1973). See, e.g., In re Charger Ventures LLC, 64 F.4th 1375, 1379 (Fed.
Cir. 2023). Though du Pont lists thirteen numbered factors (some with subparts), we
generally address only those that are relevant and material to the case before us, see,
e.g., Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238, 1241 (Fed. Cir. 2004); Octocom
Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 943 (Fed. Cir. 1990)—
typically the factors that the parties address and on which there is relevant evidence
in the record. See, e.g., Dollar Fin. Grp., Inc. v. Brittex Fin., Inc., 132 F.4th 1363,
1371-72 (Fed. Cir. 2025); Cunningham v. Laser Golf Corp., 222 F.3d 943, 946-47 (Fed.
Cir. 2000). We then weigh together our findings on these factors to determine if, on
balance, they indicate that confusion is likely. See, e.g., Charger Ventures, 64 F.4th
at 1381; In re Majestic Distilling Co., 315 F.3d 1311, 1319 (Fed. Cir. 2003).
1. The marks are identical
The first likelihood-of-confusion factor assesses “[t]he similarity or dissimilarity
of the marks in their entireties as to appearance, sound, connotation and commercial
impression.” du Pont, 476 F.2d at 1361. This is always an important inquiry. See, e.g.,
Herbko Int’l, 308 F.3d at 1165; Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 1103 (CCPA 1976). Here, Petitioner asserts that the marks are identical,
an obvious fact that Respondent does not contest. When marks are identical, this fact
“weighs heavily” in favor of a likelihood of confusion. Tiger Lily Ventures Ltd. v.
Barclays Cap. Inc., 35 F.4th 1352, 1362 (Fed. Cir. 2022); Majestic Distilling, 315 F.3d
at 1315.

Cancellation No. 92079575
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2. The goods are identical
The second-listed confusion factor in du Pont is “[t]he similarity or dissimilarity
and nature of the goods … as described in … [a] registration” and “in connection with
which a prior mark is in use.” 476 F.2d at 1371. Where, as here, the marks are
identical, “even … goods or services [that] are not competitive or intrinsically related
… can lead to the assumption that there is a common source.” Majestic Distilling, 315
F.3d at 1315 (citations and internal quotation marks omitted). Thus, “where ... the
goods at issue are identical, the degree of similarity necessary to support a conclusion
of likely confusion declines.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373 (Fed.
Cir. 2018). Here, however, we not only have identical marks, but identical goods as
well: mugs and apparel vs. mugs and apparel.
3. The trade channels overlap.
The third-listed factor in du Pont is “[t]he similarity or dissimilarity of
established, likely-to-continue trade channels.” 476 F.2d at 1371. Respondent’s
registration contains no restriction on trade channels. See, e.g., Stone Lion Cap.
Partners v. Lion Cap. LLP, 746 F.3d 1317, 1324 (Fed. Cir. 2014) (what is recited in
the registration determines the scope of the registration). Thus, by definition,
whatever means Petitioner employs to sell its identical goods are within the scope of
Respondent’s registration, which excludes no trade channels. See, e.g., Narita Export
LLC v. Adaptrend, Inc., No. 92074784, 2022 WL 15328960, at *10 (TTAB 2022)
(“Respondent’s unrestricted identification of goods is not limited by channels of trade,
Respondent’s goods are presumed to travel in all ordinary channels of trade which

Cancellation No. 92079575
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include Petitioner’s proven channel of trade”) (citation omitted), aff’d sub nom.
Adaptrend, Inc. v. Stewart, No. 23-1195, 2025 WL 313179 (Fed. Cir. Jan. 28, 2025)
(unpublished); see also Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d
1335, 1337 (CCPA 1981) (alleged different trade channels “irrelevant” where an
unrestricted application at issue); Glamorene Prods. Corp. v. Procter & Gamble Co.,
538 F.2d 894, 896 (CCPA 1976) (same). Thus, the trade channels overlap.
4. The customer classes overlap too.
du Pont tells us that we should also assess the “buyers to whom” sales are made,
476 F.2d at 1371. As noted in the previous subsection, the lack of any restrictions in
Respondent’s registration means that the registration covers “all prospective
purchasers” of mugs and apparel. See, e.g., Coach Servs., 668 F.3d at 1370. Mugs and
apparel are ubiquitous, basic consumer goods that are purchased by all classes of
consumers, including people who attend local theater productions. And several people
testified that attendees of performances of Petitioner’s REEFER MADNESS musicals
include consumers interested in cannabis,87 which Respondent sells. Thus, there is
overlap in consumer classes.88
87 See, e.g., America Olivo Campbell Decl. (id. at 39); Studney Decl. (id. at 384); Murphy
Decl. (id. at 540); Nygro Decl. (id. at 716); McKelvey Decl. (id. at 744); Woerner Decl. (id. at
834).
88 du Pont’s fourth-listed factor also mentions the “conditions under which” sales are made,
highlighting whether the conditions might concern ‘“impulse’ vs. careful, sophisticated
purchasing.” Though Petitioner’s brief asserts that consumers of apparel and mugs exhibit
such low “consumer care” that purchaser (un)sophistication should favor it, we do not view
the evidence as indicating that purchaser care or sophistication in this case is so low or high
(pun unintended) that it tips in either party’s favor.

Cancellation No. 92079575
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5. du Pont factor 10(d)
Although du Pont lists thirteen numbered factors (some with variables within
them), the only du Pont factor that Respondent discusses is factor 10(d). To set this
factor in context, here is how du Pont recites it:
(10) The market interface between applicant and the owner of a prior mark:
(a) a mere “consent” to register or use.
(b) agreement provisions designed to preclude confusion, i. e. limitations on
continued use of the marks by each party.
(c) assignment of mark, application, registration and good will of the related
business.
(d) laches and estoppel attributable to owner of prior mark and indicative
of lack of confusion.
476 F.2d at 1371.
Factor 10 thus looks at the “market interface” between the senior and junior
parties, and sub-factor (d) gives, as an example of such interface, “laches and estoppel
attributable to owner of prior mark and indicative of lack of confusion.” Id. Laches
and estoppel are commonly asserted as equitable affirmative defenses. Laches
requires proof of undue delay and prejudice to the party asserting the defense. See,
e.g., Brooklyn Brewery Corp. v. Brooklyn Brew Shop, 17 F.4th 129, 141-42 (Fed. Cir.
2021). Equitable estoppel requires: “(1) misleading conduct, which may include not
only statements and action but silence and inaction, leading another to reasonably
infer that rights will not be asserted against it; (2) reliance upon this conduct; and (3)
due to this reliance, material prejudice if the delayed assertion of such rights is
permitted.” Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes, Inc., 971 F.2d 732, 734

Cancellation No. 92079575
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(Fed. Cir. 1992) (citation omitted). But when asserted as a factor bearing on whether
confusion is likely under the du Pont framework, there is another requirement: that
the delay, or the facts allegedly supporting the estoppel be “indicative of lack of
confusion.” 476 F.2d at 1371; see Keystone Consol. Indus., Inc. v. Franklin Invest.
Corp., No. 92066927, 2024 WL 3771168, at *26 (TTAB 2024) (“Nor is there evidence
establishing that Petitioner’s lack of contact with Respondent after its Red, White
and Blue Fence Post Mark registered and its lack of action towards Respondent’s
registration prior to May 30, 2017 was because Petitioner assumed or believed that
confusion was unlikely to result (as such facts, if proven, would weigh against a
finding of likelihood of confusion in this case).”).
Here, Respondent’s trial brief asserts that an entity called Tilted Windmills
Theatricals LLC filed a cancellation proceeding against Respondent in 2018 and then
stipulated to a voluntary dismissal of it without prejudice in December 2019.89
Respondent pins this dismissal on Petitioner, arguing that Petitioner thus sat on its
rights until it decided again to petition to cancel in April 2022. Respondent’s brief,
however, points us to no evidence that would show that Tilted Windmills is
Petitioner’s predecessor in interest or in some other way is in privity with
Respondent. The only evidence we found that could support Respondent’s argument
is an interrogatory answer in which Petitioner stated that Tilted Windmills was one
of its predecessors.90
89 See 64 TTABVUE 32.
90 See 40 TTABVUE 694. Respondent’s trial brief similarly does not direct us to a copy in
the record of Tilted Windmills’ petition or the stipulation of voluntary dismissal. However, in

Cancellation No. 92079575
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While Tilted Windmills may have been a predecessor of Petitioner, there is no
evidence that Tilted Windmills stipulated to dismissal of its petition to cancel because
it believed confusion unlikely. See du Pont, 476 F.2d at 1371 (factor 10(d) assesses
whether the asserted laches attributable to owner of prior mark is “indicative of lack
of confusion”). If Tilted Windmills had come to believe, after filing its petition to
cancel, that confusion was unlikely, one would expect that its dismissal of its
cancellation petition would have been with prejudice because there would be no need
to retain the option to re-file. Stipulating to a dismissal without prejudice suggests
that Tilted Windmills was not convinced that confusion was unlikely and thus wanted
to keep open the option to re-file. See Carano v. Vina Concha Y Toro S.A., No.
91125728, 2003 WL 21353890, at *4 n.4 (TTAB 2003) (dismissal of opposition without
prejudice means that the dismissing party may re-file later for cancellation); see
generally 9 FED. PRAC. & PROC. CIV. (Wright & Miller) § 2367 (4th ed. Sept. 2025
update) (discussing distinction between dismissals with and without prejudice). To
find that the dismissal of the prior proceeding without prejudice constitutes evidence
that confusion is unlikely would effectively undo the prior parties’ agreement to such
a dismissal.
our own independent review of the record, we determined that Petitioner submitted a copy
of the Tilted Windmills petition as an exhibit to the deposition transcript of Eli Slankard,
who is affiliated with Respondent. See 33 TTABVUE 1090-1110. And in its rebuttal evidence,
Petitioner submitted a copy of the deposition transcript of John Arsenault with related
exhibits, one of which was the stipulated dismissal without prejudice. See 54 TTABVUE 291-
94. We further found that Mr. Murphy was asked about Tilted Windmills in his deposition.
See 37 TTABVUE 11-203 (with no exhibits); 40 TTABVUE 463-684 (with some exhibits).

Cancellation No. 92079575
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We thus find du Pont factor “10(d)” neutral. See Keystone Consol. Indus., 2024 WL
3771168, at *27.
6. Conclusion on likelihood of confusion (weighing the
relevant factors)
In this case, the last step in the likelihood-of-confusion analysis—weighing the
findings on the relevant factors together—is straightforward. The marks are
identical. This weighs heavily in favor of a conclusion that confusion is likely. So does
the finding that the goods (mugs and apparel) are identical. The classes of customers
and trade channels add a bit more weight toward a conclusion of likely confusion.
Purchaser sophistication and factor 10(d) (“laches and estoppel … indicative of lack
of confusion”) are neutral. We easily conclude on this record that confusion is likely.
D. Respondent’s affirmative defenses
Section 19 of the Trademark Act, 15 U.S.C. § 1069, provides that “[i]n all inter
partes proceedings equitable principles of laches, estoppel, and acquiescence, where
applicable may be considered and applied.” Respondent also asserted and, at trial,
maintained, that laches and acquiescence/estoppel bar Petitioner’s Section 2(d) claim.
1. Respondent’s defenses are barred because confusion is
inevitable
Equitable defenses such as laches, estoppel, and acquiescence, even when
supported by the evidence, are not automatic bars. It is well settled that such
equitable defenses will not defeat a Section 2(d) claim where consumer confusion is
inevitable, due to the overriding concern of the Trademark Act with the public
interest. See, e.g., Swank, Inc. v. Ravel Perfume Corp., 438 F.2d 622, 624 (CCPA 1971)

Cancellation No. 92079575
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(“Where the competing marks are identical or are closely similar, the equitable
principles defined by section 19 have been held not to be applicable inasmuch as the
public interest is the dominant consideration.”) (citations omitted); accord Ultra-
White Co. v. Johnson Chem. Indus., Inc., 465 F.2d 891, 893 (CCPA 1972).
In Brooklyn Brewery, the Federal Circuit noted that “[a] showing of inevitable
confusion requires that there be no reasonable doubt as to likelihood of confusion.
Typically, only where both the goods and marks are nearly identical is that standard
satisfied.” 17 F.4th at 143 (citations omitted). In this case, we have found that the
marks and goods are identical. On top of that, and the presumptions flowing from it,
there is evidence that the parties’ trade channels and classes of customers overlap.
No factors indicate that confusion is unlikely. We have no reasonable doubt in this
case as to likelihood of confusion, i.e., it is inevitable. For this reason alone,
Respondent’s defenses of laches and acquiescence/estoppel fail. But even if this
principle did not exist or confusion was merely likely, not inevitable, Respondent’s
defenses fail on the merits, as we explain in the next two subsections.
2. Respondent’s laches defense fails
We begin with Respondent’s laches defense. When laches is asserted in its
traditional form as an equitable defense, and not as a du Pont likelihood-of-confusion
factor, there is no need for us to assess whether the delay is “indicative of lack of
confusion.” See du Pont, 476 F.2d at 1371. We need find only the two traditional
elements of a laches defense: “undue or unreasonable delay by [Petitioner] in
asserting its rights, and prejudice [to Respondent] resulting from the delay.”

Cancellation No. 92079575
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Bridgestone/Firestone Rsch., Inc. v. Auto. Club de L’Ouest de la France, 245 F.3d
1359, 1361 (Fed. Cir. 2001) (citation omitted).
First, we do not find Petitioner’s delay undue or unreasonable. According to
Respondent, Tilted Windmills dismissed its cancellation claim without prejudice in
December 2019 as the result of a settlement and joint stipulation to which
Respondent was a party. As we previously noted, “without prejudice” means that the
claimant, Tilted Windmills, was free, under the stipulation, to re-file its cancellation
claim again. Petitioner then filed this petition in April 2022, about two years and five
months later. Given Respondent’s concession that it stipulated to a dismissal in which
Tilted Windmill could re-file, we find that this period is not an undue or unreasonable
delay.91
Second, there are “two general categories of prejudice” that “may flow from an
unreasonable delay: prejudice at trial due to loss of evidence or memory of witnesses,
and economic prejudice based on loss of time or money or foregone opportunity.”
Bridgestone/Firestone, 245 F.3d at 1362. And, in the context of a proceeding where
the only relief requested is cancellation of a trademark registration, the economic
prejudice “must be tied to a party’s registration of a mark, not to a party’s use of the
mark,” see Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes, Inc., 971 F.2d 732, 734
91 Tilted Windmills’ ability to re-file was time-bounded, however, by the Trademark Act’s
express limitation that cancellation petitions (with exceptions not applicable to likelihood of
confusion claims) must be filed within five (5) years of the date of registration. See 15 U.S.C.
§ 1064(1). Respondent’s registration issued on May 9, 2017, and thus any Section 2(d)
cancellation claim was required to be filed by May 9, 2022. Petitioner instituted this
proceeding in April 2022.

Cancellation No. 92079575
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(Fed. Cir. 1992) (citation omitted), because we lack any authority to issue orders
about whether or how a party may use a mark.
Respondent does not mention any evidentiary prejudice. Rather, it argues,
without alerting us to any supporting evidence in the record, that it “made
meaningful and significant effort to grow its business and changed its financial
position during the delay, as shown by the expenditure it invested after the
purchase.”92 It further explains that “stripping [it] of its registration and forcing it to
start over with a new brand would wipe out years of goodwill and brand recognition
it has built.”93 We don’t see it.
First, we can’t “force” Respondent to “start over with a new brand,” nor is that a
consequence of the cancellation of a registration. Losing a registration has no effect
on Respondent’s ability to use its mark. See, e.g., Hammermill Paper Co. v. Gulf
States Paper Corp., 337 F.2d 662, 663 (CCPA 1964). We further note Respondent says
it is “engaged in the cultivation, marketing, and sale of cannabis products in the state
of Colorado, in accordance with Colorado’s laws permitting such activities.”94
Respondent’s “sole owner” Charlotte Peel avers that its two stores operate under the
name REEFER MADNESS.95 This cancellation proceeding does not involve
92 See 64 TTABVUE 34 (presumably referring to its purchase of two dispensaries operating
under the name REEFER MADNESS, see id. at 31).
93 Id.
94 39 TTABVUE 3 (Charlotte Peel Decl.).
95 Id. at 5; see also 33 TTABVUE 1047-48, 1064 (Respondent’s interrogatory answer stating
that Respondent’s cannabis dispensary does business under the name REEFER MADNESS
and photo).

Cancellation No. 92079575
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Respondent’s cannabis retail business or its use of the mark for cannabis or smoking
products.96 Respondent does not explain to us, or point to evidence that would show,
how potentially losing a registration for mugs and apparel would require its cannabis
business to re-brand when that aspect of its business is not at issue in this proceeding.
Second, the Peel Declaration provides scant support that losing the registration
for the goods identified in this proceeding would prejudice Respondent, for at most it
constitutes only 5% of Respondent’s business,97 and none of the expenditures that
Respondent avers to have made in connection with its business appear directed to the
goods in the challenged registration.98
We therefore find that Respondent has not established that any discernible
prejudice would flow from cancellation of the challenged registration for mugs and
apparel.
Because Respondent has proved neither undue or unreasonable delay nor
anything more than de minimis prejudice, we reject its laches defense.
96 Relatedly, Respondent owns another registration for REEFER MADNESS on the
Principal Register (Reg. No. 4737839, issued May 19, 2015)) for “Public advocacy to promote
awareness of the need for assuring patients safe access to affordable medicine that medical
cannabis provides; Public advocacy to promote awareness of medical cannabis,” in
International Class 35. See 39 TTABVUE 3-4, 39-40 (Charlotte Peel Decl.). That registration
is not at issue in this proceeding.
97 See 64 TTABVUE 6. We note that the 5% figure used by Ms. Peel includes goods not listed
in the challenged registration, so the 5% figure—though small to begin with—is inflated to
some indeterminate degree.
98 See id.

Cancellation No. 92079575
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3. Respondent’s acquiescence/estoppel defense fails
Respondent next attempts to dress up the same Tilted Windmill dismissal as
acquiescence or estoppel.99 The wardrobe change is unavailing. “To establish
acquiescence, the Board requires a defendant to prove that the plaintiff’s conduct
amounted to an assurance to defendant, either express or implied, that plaintiff
would not assert its trademark rights against the defendant.” Brooklyn Brewery, 17
F.4th at 141-42 (cleaned up; citations omitted). Similarly, equitable estoppel requires
proof of “misleading conduct, which may include not only statements and action but
silence and inaction, leading another to reasonably infer that rights will not be
asserted against it.” Lincoln Logs, 971 F.2d at 734. That the dismissal was without
prejudice negates, on its face, an acquiescence or estoppel defense. Such a dismissal
is the opposite of an assurance or misleading conduct indicating that the plaintiff will
not re-file because the very nature of such a dismissal allows re-filing. Respondent
points to no other “assurances” or conduct by Petitioner.
In addition, prejudice is an element of both defenses and, as we found in the
preceding subsection, Respondent has failed to prove prejudice.
We therefore reject Respondent’s acquiescence/estoppel defense.
99 Id. at 35-36. Respondent does not address the affirmative defense of equitable estoppel
separately from acquiescence. Rather, it argues them as one defense: “the defense of
acquiescence is a type of estoppel based on conduct of a plaintiff that, expressly or by clear
implication, assents to, encourages, or furthers the activity on the part of the defendant.” Id.
at 35.

Cancellation No. 92079575
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Decision: We grant the Petition for Cancellation based on Petitioner’s pleaded
Section 2(d) claim as to its prior use in connection with mugs and apparel.