Overland Sheepskin Company v. Storyteller Overland, LLC

OCR transcription for search; preserved printed pages are authoritative

This opinion is not a
precedent of the TTAB

Mailed: October 6, 2026

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

Overland Sheepskin Co., Inc.
v.
Storyteller Overland, LLC

Cancellation No. 92082396

Jason R. Sytsma and Kevin J. Caster, of Shuttleworth & Ingersoll, PLC,
for Overland Sheepskin Co., Inc.

Nathaniel T. Quirk and Ellen T. Mathews, of Burr & Forman, LLP,
for Storyteller Overland, LLC.

Before Pologeorgis, Casagrande, and Lavache,
Administrative Trademark Judges.

Opinion by Casagrande, Administrative Trademark Judge:

This case presents claims of likelihood of confusion, nonuse, and abandonment, as
well as a laches defense. We reject the laches defense and grant the Petition to Cancel
based on the nonuse claim. We do not reach the other two claims.

I. Background

Storyteller Overland, LLC (Respondent) owns Registration No. 6045485, issued

on the Principal Register, for the standard-character mark STORYTELLER

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OVERLAND for goods identified as “Clothing, namely, hats, caps, and T-shirts;
hiking apparel, namely, hiking vests, hiking jackets, hiking coats, hiking scarves, and
hiking socks,” in International Class 25.1 Respondent also owns Registration No.
6053520 for the mark for the same goods.2
Petitioner, Overland Sheepskin Co., Inc., has petitioned to cancel both
registrations. The Second Amended Petition to Cancel,3 which is Petitioner’s
operative pleading, asserts three claims: Count I is under Trademark Act Section 2(d)
for likelihood of confusion;4 Count II asserts that Respondent had not yet used the
marks for the identified goods at the time Respondent filed its used-based
1 This registration matured from a use-based application filed under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), on May 8, 2019. The registration issued on May 5, 2020.
The registration lists November 30, 2018, as the date of first use anywhere and in commerce.
2 This registration matured from a use-based application filed under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), on May 1, 2020. The registration issued on May 12,
2020. It, too, lists November 30, 2018, as the date of first use anywhere and in commerce.
Respondent describes the registered mark as follows: “The mark consists of an oval
containing a mountain range with a road going up into it, above which are three stars and a
crescent moon. Beneath the mountain range are words ‘STORYTELLER’ and ‘OVERLAND’
with a line between the words.” Color is not claimed as a feature of the mark.
3 See 26 TTABVUE. In the original Petition to Cancel (1 TTABVUE) and First Amended
Petition to Cancel (6 TTABVUE), Petitioner identified itself as Overland Sheepskin
Company.
“TTABVUE” refers to the Board’s electronic docket system. Citations to the record in this
case will cite to TTABVUE. In the citations, the number preceding “TTABVUE” represents
the docket number assigned to the cited filing in TTABVUE, and any number immediately
following “TTABVUE” identifies any specifically-cited page(s).
4 We do not list the particulars of Petitioner’s asserted registrations because, as noted
above, we reach only the claim in Count II that Respondent did not use the marks in
commerce for the identified goods before filing its use-based applications.

Cancellation No. 92082396
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applications, thus rendering the applications void ab initio under Section 1(a) of the
Act, 15 U.S.C. § 1051(a); and Count III claims under Trademark Act Section 14(3), 15
U.S.C. § 1064(3), that Respondent has abandoned the registered marks.5
In its Answer to the First Amended Petition to Cancel (a prior, superseded
pleading), Respondent admitted, inter alia, that it had not used its marks as to
“hiking vests,” “hiking coats,” “hiking scarves,” or “hiking socks” at the time it filed
its two applications.6 It repeated those admissions in its Answer to the Second
Amended Petition to Cancel.7 But Respondent otherwise denied the salient
allegations concerning Petitioner’s priority and likelihood of confusion claim, as well
as Respondent’s nonuse and abandonment claims, as to the other identified goods.8
Under the heading “Affirmative Defenses,” Respondent asserted: “Registrant pleads
the affirmative defenses of unclean hands, laches, estoppel, and acquiescence.”9
5 See 26 TTABVUE.
6 See 12 TTABVUE 5-6. On this basis, the Board granted partial summary judgment in
Petitioner’s favor on the nonuse claim as to those particular goods. See 25 TTABVUE 11-12
(“Petitioner’s cross-motion for summary judgment on its pleaded nonuse claim is therefore
GRANTED as to hiking vests, hiking coats, hiking scarves, and hiking socks. These goods
will be deleted from Respondent’s registrations in due course.”) (citations omitted). Those
goods thus are not now at issue.
7 See 27 TTABVUE 6-7. Respondent also admitted that Alabama is its principal place of
business and state of incorporation, and admitted that Petitioner owns the marks it asserts
as the basis of its Section 2(d) claim, Respondent’s ownership of the challenged registrations,
and a few other non-determinative factual allegations.
8 See 27 TTABVUE.
9 See id. at 7. Under that same heading, Respondent made a number of other statements,
none of which are affirmative defenses. Some were mere amplifications of denials; another
asserted that the Second Amended Petition failed to state a claim. Neither type of statement
is an affirmative defense. See Shenzhen IVPS Tech. Co. v. Fancy Pants Prods., LLC, No.
91263919, 2022 WL 16646840, at *1 n.5 (TTAB 2022). Yet another was that the Second
Amended petition was “too vague and indefinite” to answer. We construe that as a motion for
a more definite statement under Fed. R. Civ. P. 12(e), which must be made before answering,

Cancellation No. 92082396
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Both parties submitted evidence during their respective trial periods. Both filed
trial briefs, and Petitioner filed a reply brief.10
The case is now ready for decision.
II. The record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the entire files of Respondent’s two registrations. In addition,
Petitioner submitted the following during its trial period:
• Transcript of trial testimony by deposition of Roger Leahy, CEO of Petitioner;11
• Transcript of trial testimony by deposition of Gabriel Openshaw, President of
Petitioner;12
• Exhibits to the testimony of Messrs. Leahy and Openshaw;13
which Respondent did not do. So, any objection to that alleged defect is forfeited. Finally,
Respondent “reserve[d] the right” to add additional defenses. This, too, is improper. See Made
in Nature, LLC v. Pharmavite LLC, No. 91223352, 2022 WL 2188890, at *3 (TTAB 2022).
10 See 46 TTABVUE (Petitioner’s Trial Brief); 47 TTABVUE (Respondent’s Trial Brief); 50
TTABVUE (Petitioner’s Corrected Trial Brief); 51 TTABVUE (Petitioner’s Reply Brief).
Petitioner moved, with Respondent’s consent, to be allowed to file a Corrected Trial Brief. See
50 TTABVUE 2. We grant the motion. We will cite to the Corrected Trial Brief in this order.
In its trial brief, Respondent objects to a table appended to Petitioner’s trial brief that
summarizes the evidence in the record concerning Petitioner’s efforts to enforce its
trademarks. See 47 TTABVUE 55-56 (objecting to 50 TTABVUE 46-56). Petitioner says it’s
just a table citing the various instances of enforcement with cites to where the documents
relating to those instances are in the trial record and, as such, is just argument. 51 TTABVUE
15 n.3. We agree it’s not evidence, just argument, so there’s no need to rule on the objection.
We note that Respondent’s trial brief cites about a dozen nonprecedential Board decisions
and filed an appendix printing them out. See 48 TTABVUE. This is unnecessary and
counterproductive. Between the body of Federal Circuit and CCPA decisions and the body of
TTAB precedents, there’s plenty of precedential decisions for just about any legal issue likely
to come up in a case like this.
11 29 TTABVUE 90-149 (sic) (pagination, starts at 90, not 1).
12 Id. at 150-278 (sic).
13 Id. at 279-1559 (sic).

Cancellation No. 92082396
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• Trial Declaration of Jason Sytsma (Petitioner’s attorney) attaching documents
including objection letters sent on Petitioner’s behalf to third parties regarding
Petitioner OVERLAND trademarks and various agreements between third
parties and Petitioner concerning Petitioner’s marks;14
• A Notice of Reliance attaching Respondent’s Rule 26(a)(1) Initial Disclosures
and “First Amended Objections and Responses to Overland Sheepskin Co.,
Inc.’s Interrogatories”;15
• A Notice of Reliance attaching its own registrations consisting of or containing
the word OVERLAND, the file history of Respondent’s standard-character
registration, and several third-party registrations;16 and
• Three videos.17
During its trial period, Respondent submitted:
• The transcript of the February 7, 2025, trial deposition of Jeffrey Hunter
(Founder, chairman, CEO of Respondent) with exhibits 1-21;18
• The Declaration of Ellen T. Mathews (Respondent’s attorney) attaching list of
third-party uses of OVERLAND “to sell clothing”;19
14 30 TTABVUE. Respondent objects to “Overland Trial Exhibit 63,” which is a table
summarizing Petitioner’s enforcement efforts. See 47 TTABVUE 54-55 (objecting to 29
TTABVUE 1637-42). The objection is moot because, as we noted supra when discussing the
similar table appended to Petitioner’s brief, we do not treat this summary as evidence. To the
extent we have assessed Petitioner’s enforcement efforts, we’ve consulted only the
authenticated copies of correspondence in the trial record, not the summary table.
15 33 TTABVUE.
16 34 TTABVUE.
17 See 32 TTABVUE, 35 TTABVUE (referring to the videos). These submissions did not
reference testimony or a notice of reliance to which they relate.
18 37 TTABVUE.
19 38 TTABVUE 3-30.

Cancellation No. 92082396
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• The Declaration of Joseph Michael Dipiazza (“E-Discovery Senior Project
Manager with the law firm of Burr & Forman, LLP”) attesting to the
“screencapture” means for Respondent’s Internet exhibits;20
• A Notice of Reliance attaching Petitioner’s Interrogatory responses;21
• A Notice of Reliance attaching the December 6, 2023, discovery deposition
transcript of Respondent’s Rule 30(b)(6) witness (Jeffrey Hunter) with exhibits,
and of the January 24, 2024, deposition of Petitioner’s Rule 30(b)(6) witness
(Gabriel Openshaw) with exhibits;22 and
• A Notice of Reliance attaching printed third-party websites and publications:
(1) from overlandstyle.com, overlandapparel.co, shopoverlandapparel.com, and
other websites purportedly offering clothing using OVERLAND and
OVERLAND-formative words/marks, (2) from WHOIS domain name
ownership reports for websites with OVERLAND in it; and (3) pages from
Respondent’s website.23
During its rebuttal period, Petitioner submitted:
• A Rebuttal Notice of Reliance attaching USPTO records relating to third-party
apps/regs containing OVERLAND;24
20 Id. at 31-32. We note that the Depiazza Declaration gives exhibit numbers (e.g., “output
files marked as Trial Exhibits 35-67, 69-115, and 151”) but neither attaches those documents
nor identifies where in the electronic TTABVUE record, if anywhere, they may be found.
21 39 TTABVUE.
22 40 TTABVUE. The provisions of Trademark Rule 2.120(k)(1) & (k)(2), 37 C.F.R.
§ 2.120(k)(1) & (k)(2), provide that only an adverse party may offer the transcript of a party’s
Fed. R. Civ. P. 30(b)(6) deposition representative into evidence. Here, Respondent offered the
Rule 30(b)(6) transcript of its own representative. But not only did Petitioner not object,
Petitioner’s trial brief repeatedly cited and relied upon testimony from this deposition
transcript several times. Accordingly, we consider it to be of record.
23 41 TTABVUE. We note that, if a party wants to rely on its own website pages for the truth
of what they say, they cannot be submitted by notice of reliance. Rather, they must be
authenticated by a witness with personal knowledge of the website. Otherwise, such
screenshots are considered only for what they show on their face. See, e.g., WeaponX
Performance Prods. Ltd. v. Weapon X Motorsports, Inc., No. 91221553, 2018 WL 1326374, at
*4 (TTAB 2018).
24 42 TTABVUE.

Cancellation No. 92082396
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• A Rebuttal Notice of Reliance attaching screen captures of third-party
websites;25
• Rebuttal deposition testimony transcript of Gabriel Openshaw with exhibit
listing “Infringing uses of ‘overland’ Summary,” TM Coexistence Agreement
with Hiline Productions, LLC;26 and
• Rebuttal Declaration of Jason Sytsma (Petitioner’s attorney) attaching copies
of trademark objection letters sent to third parties.27
III. Entitlement to pursue this statutory cancellation proceeding
Before addressing the merits of the claims and defenses, we must assure ourselves
that Petitioner has the right to invoke our statutory authority to cancel registrations.
See, e.g., Meenaxi Enter., Inc. v. Coca-Cola Co., 38 F.4th 1067, 1071-72 (Fed. Cir.
2022) (“As a threshold matter, we must address whether [the petitioner] has a
statutory cause of action to challenge [the respondent’s] trademark registration[ ]
… .”) (citation omitted). 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.” Such a person must have: (1) an interest
within the zone of interests protected by the cancellation statute, i.e., a “real interest”
or “direct and personal stake in the outcome of the 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. 2025) (citing, inter alia, Lexmark Int’l, Inc. v. Static Control Components,
25 43 TTABVUE.
26 44 TTABVUE.
27 45 TTABVUE.

Cancellation No. 92082396
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Inc., 572 U.S. 118, 129-37 (2014)) (further citations omitted), cert. denied, 146 S. Ct.
2564 (2026).
These two requirements are “element[s] of the cause of action under the statute”
and, “like any other element of a cause of action, [they] must be adequately alleged
at the pleading stage in order for the case to proceed.” Lexmark, 572 U.S. at 134 n.6
(citations omitted); accord Australian Therapeutic Supplies Pty. v. Naked TM, LLC,
965 F.3d 1370, 1378 (Fed. Cir. 2020). Not only must entitlement be adequately
pleaded, it must be proved at trial like the other elements of a claim. See, e.g.,
Australian Therapeutic, 965 F.3d at 1378; Ritchie v. Simpson, 170 F.3d 1092, 1099
(Fed. Cir.1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1028 (CCPA
1982) (“The facts regarding [statutory entitlement], we hold, are part of a petitioner’s
case and must be affirmatively proved.”).
Here, Petitioner submitted the status and title copies from USPTO records of
several of its registrations for marks consisting of or containing the word
OVERLAND.28 Petitioner also alleges and plausibly argued at trial that Respondent’s
registered marks are likely to confuse consumers in view of Petitioner’s registered
marks. This establishes that Petitioner is entitled under 15 U.S.C. §§ 1052(d) and
1064 to seek cancellation of Respondent’s registrations. See, e.g., Look Cycle Int’l v.
Kunshan Qiyue Outdoor Sports Goods Co., No. 92079409, 2024 WL 3739358, at *3
(TTAB 2024); Made in Nature, 2022 WL 2188890, at *9. Entitlement to pursue
cancellation due to an alleged likelihood of confusion also entitles Petitioner to pursue
28 See 34 TTABVUE 7-113.

Cancellation No. 92082396
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its other claims (nonuse and abandonment). See, e.g., Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 1377 (Fed. Cir. 2012) (once an opposer demonstrates
entitlement to oppose registration on one ground, it “is entitled to rely on any of the
grounds set forth in section 2 of the Lanham Act which negate applicant’s right to its
subject registration”) (citations omitted).
IV. Petitioner’s nonuse claim
We begin with Petitioner’s nonuse claim.
A. General standards
Under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), a mark in a use-
based application may not be registered unless it has been “used in commerce.” See,
e.g., Tao Licensing, LLC v. Bender Consulting Ltd., No. 92057132, 2017 WL 6336243,
at *7 (TTAB 2017). Section 45 of the Trademark Act, 15 U.S.C. § 1127, defines “use
in commerce” to mean “the bona fide use of a mark in the ordinary course of trade,
and not made merely to reserve a right in a mark.” A trademark is used 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 … and the goods
are sold or transported in commerce.” Id. The goods identified in a use-based
trademark application must have been sold or transported in commerce before the
filing of the application. Christian Faith Fellowship Church v. Adidas AG, 841 F.3d
986, 989 (Fed. Cir. 2016). If, at the time an applicant files a use-based application, it
has not made bona fide use of its mark in commerce in connection with any of the

Cancellation No. 92082396
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identified goods or services, the application (and any resulting registration) is “void
ab initio.” Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1357 (Fed. Cir. 2009).29
Petitioner must prove nonuse as of the filing dates by a preponderance of the
evidence. See, e.g., U.S. Shoe Corp. v. J. Riggs W., Inc., No. 91066132, 1984 WL
63103221, at *2 (TTAB 1984); see generally Eastman Kodak Co. v. Bell & Howell Doc.
Mgmt. Prods. Co., 994 F.2d 1569, 1575 (Fed. Cir. 1993) (“[T]he challenger’s burden of
proof in both opposition and cancellation proceedings is a preponderance of the
evidence.”) (citation omitted). The first step in fulfilling that burden is to make out a
prima facie case of whatever ground of invalidity the challenger is asserting (here,
nonuse). See, e.g., Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d
1352, 1358 (Fed. Cir. 2009) (“the party seeking cancellation also bears the “burden to
establish a prima facie case” that the registration is invalid”) (citation omitted).
Acknowledging that proving nonuse is essentially “prov[ing] a negative,” which can
be challenging, the Federal Circuit has held that “direct evidence” is not required to
make out a prima facie case: it is perfectly appropriate to rely on “proper inferences”
from indirect evidence. See Cerveceria Centroamericana v. Cerveceria India, Inc., 892
F.2d 1021, 1024-25 (Fed. Cir. 1989) (“Especially when a party must prove a negative,
as in proving abandonment through nonuse, without resort to proper inferences the
burdened party could be faced with an insurmountable task.”).
29 “Void ab initio” means void from the beginning. See Aycock, 560 F.3d at 1357 n.9.

Cancellation No. 92082396
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B. Petitioner has made out a prima facie case of nonuse
Petitioner here has pointed to the fact that there are no pre-filing date orders or
sales invoices or receipts—indeed, no documentation at all that Respondent made
any sales of the remaining identified goods to the public as of the May 1 and May 8,
2019, filing dates of the applications (the “Relevant Dates”).30 Respondent, for its
part, does not contest that it has no documentation showing sales as of the Relevant
Dates.31 This is sufficient to discharge Petitioner’s initial burden to make out a prima
facie case of nonuse. See United Global Media Grp., Inc. v. Tseng, No. 91200786, 2014
WL 5035517, at *8 (TTAB 2014) (“Through discovery, opposer was unable to obtain
any evidence documenting applicant’s use of her mark BeauTV, and based on the
discovery requests and responses that opposer made of record, opposer has made out
a prima facie showing of nonuse by applicant.”).
C. Respondent’s rebuttal evidence
Respondent, in rebuttal, relies nearly exclusively on the testimony its founder,
Mr. Hunter, provided during discovery and then at trial. Indeed, Respondent offers
no other witness’s testimony on the issue of use as of the Relevant Dates. So, we will
go through this testimony in some detail. But first, a little background helps to set
the stage. As Respondent’s brief lays out, Respondent:
is primarily known as a purveyor of “adventure vehicles.”
… Specifically, [Respondent], through a dealer network,
30 See 50 TTABVUE 39-40.
31 See 47 TTABVUE 50-53 (tacitly acknowledging the lack of documentation); see also 40
TTABVUE 63-64 (Respondent’s founder’s testimony that Respondent has “no evidence of
orders that are older than October 30” of 2020).

Cancellation No. 92082396
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offers design, upfitting, and kitting of overland and vanlife
vehicles. Generally speaking, [Respondent’s] vehicles are
upfitted with all of the features necessary for a person to
live and/or work full time in the vehicle. …
In late 2018, [Respondent’s] team was working to build out
the “core custom/camper van offering,” but was also
“conceiving and exploring opportunities in the apparel and
gear and merch side of the business….” … [Respondent]
had its eyes set on launching its vehicle product in March
2019 at the RVX Expo.32
According to Respondent, as it was trying to get its first vehicle product to market,
it was also “developing like gear, merch, apparel to go along and live in service to that
vehicle strategy… .”33 “By the mid-November 2018 time frame, [Respondent’s]’s VP
of Brand Merchandising was “iterating on some types of merch like hats and … shirts
…, sweatshirts, all of it.”34
The testimony, however, of Mr. Hunter (the founder, chairman, and CEO of
Respondent)35 about when Respondent first used the marks in commerce was vague
and uncertain. Below are some examples:
Q. When was the first record of selling clothing under the Storyteller Overland
trademark?
A. First record? I don’t know.
32 47 TTABVUE 11-12 (citing, inter alia, Hunter’s testimony in 37 & 40 TTABVUE).
33 See id. at 12.
34 See id. Mr. Hunter identified “Jen Matthews” as the VP in question. See 37 TTABVUE
32; 40 TTABVUE 52. At his December 6, 2023, discovery deposition, Mr. Hunter testified
that Ms. Matthews “no longer with us but is still affiliated with the company and does
business with the company periodically.” 40 TTABVUE 19. At his February 7, 2025, trial
deposition, Mr. Hunter testified that although Ms. Matthews is “no longer with” Respondent,
“she is very friendly to the company” and that “I [Mr. Hunter] have access to her . …” 37
TTABVUE 58.
35 See id. at 9.

Cancellation No. 92082396
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Q. When was the first sale of clothing under the Storyteller Overland
trademark?
A. The first transaction of that type probably would have been maybe even
October-ish or November-ish [of 2018], but I’m not sure how far and wide that
would have been. …
Q. When was the first sale of clothing under your trademark?
A. In a one-off kind of way, that would have been in the time frame of October
or November, somewhere in there, when we first started having those things
printed. Well, in significant quantities. … Because articles of clothing had
existed largely not for sale but for iteration throughout multiple points of 2018.
Around October or November is probably the first time that it would have been
in a form that we were happy with on a material that we were happy with.36
* * *
Q. Fair to say that in November of 2018 to May of 2019, Overland I’m sorry –
Storyteller Overland did not have a shop on its website through which people
could purchase gear, merchandise or clothing?
A. I don’t know that that’s fair to say, but I know that it would have been – if
we would have had a Shopify store or anything like that, it would have been
very rudimentary at best. But we did not have a sophisticated e-commerce
setup at that point, no.37
* * *
Q. Now I’m asking you about the first sale of clothing under the trademark.
And for this question I just want to know the first sale of trademarked clothing
to anyone, whether they’re in Birmingham or anywhere else. When was the
first sale of clothing under your trademark?
A. In a one-off kind of way, that would have been in the time frame of October
or November, somewhere in there, when we first started having those things
printed. … it was – It wasn’t the significant focus of our business at any point
during that time. It was being developed as an intentional part of our future
business. So first sale on a microlevel probably would have been in October or
November. … But I suspect the first rudimentary transaction for somebody
36 40 TTABVUE 65-66.
37 Id. at 59.

Cancellation No. 92082396
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who wanted to buy one of our caps or T-shirts was probably in the October,
November of 2018 range. …
Q. Do you have any records of the – what you refer to as rudimentary
transaction in the October, November or December time frame in 2018?
A. I do not. I suspect it would have just been some like cash transaction of
here’s $30, here’s a T-shirt and a cap at the time.
Q. And to whom would that transaction have been made?
A. More than likely to, you know, close associates of the company who were
just excited about what we were building. … [J]ust probably friends and family
of the business who were getting increasingly excited about what we were
building.
Q. Can you identify anyone to whom clothing was sold in 2018 under the
trademark Storyteller Overland?
A. Exactly personally by name, I personally cannot. But I have reason to
suspect that it was happening at the time.38
Mr. Hunter’s testimony about selling apparel items in the early months of 2019 is
equally fuzzy. Talking about this period, he testified:
Q. And so T’s and patches and stickers, if someone had direct messaged
Storyteller Overland at the time and asked to buy T’s, would those have been
available to sell to people?
A. Uh-huh.
Q. Or give away to people?
A. Yes.39
* * *
A. So this would have been during the season where we basically had, as I
recall, had three waves of kind of introductory promotional printed materials
and complimentary merch and promotional items that went out to the same
38 Id. at 66-68.
39 37 TTABVUE 68-69.

Cancellation No. 92082396
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group, the same audience in three separate waves across three months leading
up to the RVX Expo that we were talking about earlier.
Q. And that was happening in March of ’19?
A. March of ’19.
Q. If someone wanted to buy like a T-shirt or a hat at this period of time from
Storyteller Overland, would there have been a way to do that other than a cash
transaction?
A. With – just in person or through the site or just in general –
Q. Not through the site, in person, in a face to face transaction?
A. Yeah. All of this would have been primarily like cash, you know, if somebody
was coming by our shop. I do believe we had set up by this point, it would have
been like square or like stripe accounts.
Q. And what are those, what are square and stripes?
A. It is a little point of purchase thing that is software and a plug in device that
let’s – if you don’t have like a sophisticated point of purchase site network, a
way to take credit card or debit card payments.40
* * *
Q. Do you know if the square or stripe records went back all the way to 2019?
A. I don’t think they – the accounts that we were able to access, I don’t think
they showed going back to the earliest days of the open account.41
* * *
Q. I believe you said the people might come by the shop. Did you say that?
A. Yeah, that was probably the primary means that people would pick stuff
up.42
40 Id. at 76-77.
41 Id. at 78.
42 Id. at 83.

Cancellation No. 92082396
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* * *
Q. And if somebody came by and asked for a T-shirt or a hat, would you have
given it to them?
A. Yeah, for sure. And in a lot of cases they would have, of course, protested
and not allowed us to give it to them, but that was how that was done.43
This testimony is liberally infused with a lot of “would have been’s” and sprinkled
with a few “probably’s”. There are no corroborating records, no specifics about what
was sold, no specifics about whether the goods had the words STORYTELLER
OVERLAND or the registered logo on them, no specific customers the items were sold
or given to.44 And in 2023, when Mr. Hunter was asked at his discovery deposition
whether he had any evidence of orders earlier than October 2020, rather forthrightly
admitted: “What I don’t know is whether Jen had sold any – anything previously for
cash or taken payment, you know, for anything prior to that.”45
Nor does the sketchy documentation Respondent offers show the sale or interstate
transport of any clothing items to the general public as of the Relevant Dates. The
first specific instances of the existence of clothing that Mr. Hunter pointed to were
in connection with two Instagram posts comprising posts made on Respondent’s
account on December 9 and December 10, 2018. The December 9 post depicted a man
wearing logo t-shirt:
43 Id. at 84.
44 Later, we’ll discuss later testimony about two shirts provided to Mari Beth Ellis, the wife
of a co-worker of Hunter’s from his previous company and a friend and supporter of
Respondent.
45 40 TTABVUE 64.

Cancellation No. 92082396

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Uvere Alto. La Altagracia, Dominican Republic

storytelleroverland 249w
Alright weekend warriors... what's your next adventure going to be??

storytelleroverland 249w
#livefree #exp) #gather fexplore 1

#wanderlust #homeiswhereyouparkit #sprintercampervan #vanlove #vanlife i #vanlife
#mercedessprinter #overland

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72 likes

DECEMBER 9, 2018

The December 10, 2018, post depicted a woman at a beach:

46 37 TTABVUE 215.

-17-

Cancellation No. 92082396
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47
47 Id. at 212. Mr. Hunter identified the woman in Exhibit 7 as Jen Matthews, id. at 52-53,
who was, at the time, Respondent’s Vice President of Branding and Merchandising. There is
also another Instagram post from December 6, 2018, depicting Ms. Matthews sitting on a
wall in a tropical setting, but neither the registered logo or mark are visible, nor does it
contain any text referring to clothing. See id. at 218.

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This post contains text teasing the future sale of clothing, saying “What?! Yes! First
legit Storyteller gear! We’ll have some fun stuff sneaking out soon so keep an eye
out.”48 Mr. Hunter testified that Exhibit 7:
looks like social media posts that we were making at the
time of some of the things that we were iterating through
and some of the things that Jenn [sic] toyed around with
for us and getting ready to try to launch into the market
and to try to use as promotional materials and the like .”
…
We had this and a couple of other versions of some T-shirts
that were printed up right about the same time, but yes. …
Probably a baker’s dozen of each initially. It was just a low
kind of minimum order quantities. But this was during the
time where Jenn was testing out what we could do locally
versus what we wanted to do ultimately.49
Then comes a December 20, 2018, Instagram post with photo of woman wearing
logo t-shirt and “#beachwear” as one of many hashtags, but no text mentioning the
offering of clothing:
48 Id. (emphasis added).
49 Id. at 52-53.

Cancellation No. 92082396
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50
These Instagram posts do not evidence the sale or distribution of clothing at that
time. They are at most simply a form of free advertising using social media, as
Respondent notes in its brief.51 Mere advertising of goods, by itself, is not use in
50 See id. at 221 (depo. Exh. 8). Mr. Hunter identified the woman as Ms. Matthews. Id. at
54.
51 See 47 TTABVUE 13 (“In the fall/early winter of 2018, STO began advertising t-shirts
and hats on its Instagram page.”)

Cancellation No. 92082396
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commerce. See, e.g., Avakoff v. S. Pac. Co., 765 F.2d 1097, 1098 (Fed. Cir.1985);
Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127, 130 (CCPA 1965); In re
Kohr Bros., Inc., No. 85430114, 2017 WL 665718, at *2 (TTAB 2017); Clorox Co. v.
Salazar, No. 91198922, 2013 WL 5498171, at *5 (TTAB 2013).
The next document to mention an identified good is a January 22, 2019, “Quote”
from a custom apparel company in Birmingham, AL, sent by email to
jen@storytelleroverland.com, for caps (no other clothing items mentioned). The
document gives price quotes that vary depending on volume and states: “This quote
is valid for 30 days.”
52
52 See id. at 223-24 (depo. Exh. 9).

Cancellation No. 92082396
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Mr. Hunter testified that this is an “invoice,”53 but on its face, it’s a “quote” listing
prices for a future order, not an invoice.54 Mr. Hunter also testified that Respondent
purchased “goods” from this company,55 but he didn’t say when or what or how much,
and Respondent submitted no invoice for any such purchase(s).
Next is a January 30, 2019, Instagram post on Mr. Hunter’s account with a photo
of one or two t-shirts bearing what appears to be the word mark STORYTELLER
OVERLAND, though in a different design than Respondent’s design registration, that
are resting in a pizza-box-style container:
53 See id. at 54-55.
54 Respondent’s lawyer’s follow-up questioning about this document referred to it as a
“quote.” See id. at 56.
55 See id. at 56.

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56
The text of the post with text “Watch out y’all … There is some Storyteller Overland
Love about to be shipping up outta this joint with stuff and things for the people
all across the land!”57 In the background appears to be a US Post Office drop box. Mr.
56 Id. at 225.
57 Id. (emphasis added). We observe that the design on the t-shirts, though not fully visible,
does not appear to be the same design Respondent registered. There’s no surrounding oval,
“Overland” is typed parallel to Storyteller, not in a curved line, and there are horizontal
colored stripes framing the mountain design. The differences can be seen side-by-side in the
photograph appearing id. at 232, which depicts two women wearing the shirt juxtaposed next
to a photograph depicting the oval patch, which accurately depicts Respondent’s design mark.

Cancellation No. 92082396
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Hunter’s testimony about this photo was inconsistent. At his 2023 deposition, he
testified these “were some packages that were put up to go out to some of the dealer
partners we were courting, some of the media contacts we had already established
and some of the early influencers who were already becoming involved with the
emergence of the brand.”58 Later, at his 2025 trial deposition, he testified that this
package went to Mari Beth Ellis, the wife of a co-worker of Hunter’s from his previous
company and a friend and supporter,59 and her daughter.60 Mr. Hunter also testified
that, at this time, “we had multiple versions and iterations that we were just kind of
testing out to see which one was the best vibe.”61
There is a photograph dated “February 2,” with no mention of the year, on what
appears to be an Instagram account for mari.beth.ellis. The photo depicts two women
wearing the t-shirts that look similar to the t-shirts in the pizza box we just discussed:
58 40 TTABVUE at 56-57 (exhibit at 40 TTABVUE 116-18).
59 See 37 TTABVUE 71-72 (Mr. Hunter’s testimony that Ms. Ellis was a “supporting fan” of
the fledgling vehicle business).
60 Id. at 62, 64-65. He doesn’t remember if Ms. Ellis paid for it or he gave it to her. Id. at 65-
66; see also id. at 130.
61 Id. at 66-67.

Cancellation No. 92082396
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62
Mr. Hunter identified one of the women as Mari Beth Ellis.63 The location listed as
“Rocky Hollow, Alabama.”64
62 Id. at 230. The graphics on the t-shirts are not the same as that of Respondent’s registered
logo mark.
63 Id. at 69.
64 Respondent admitted in its Answer to the Second Amended Petition that it “is an
Alabama company with limited liability located at 109 West Park Drive, Birmingham,
Alabama.” See 26 TTABVUE 8 ¶ 9 (allegation); 27 TTABVUE 3 (admission). Thus, it would
appear that, if the shirts the two women are wearing were the ones depicted in the preceding
photo, they were shipped within the State of Alabama.

Cancellation No. 92082396
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Next, chronologically, is February 3, 2019, post depicting some patches (which are
not identified in either challenged registration and so are not at issue), along with
the text “Tees and patches and stickers, oh my! Get some – rep it – tag us! Show some
!”:
65
65 Id. at 228.

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Mr. Hunter explained that “patches are like a big deal in the overland space,” and
that “something that is like a coded language for like overland travel folks is the patch
to either put on their like vest or a patch to put on the headliner of their vehicle.”66
On February 21, 2019, Respondent posted a photo on its Instagram account of
what appear to be the same two women in the February 2 Ellis post:
67
66 Id. at 68.
67 Id. at 232.

Cancellation No. 92082396
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The text of the post says: “How do you sport your Storyteller gear?? We have some
cool stuff about to launch and can’t wait to see the adventures it all gets to be a part
of!”68 Mr. Hunter conceded that this text meant there still had not been a “launch” of
the merchandise sales yet,69 though his lawyer immediately tried to rehabilitate that
concession by eliciting some fudgy qualifications.70
Next is a photograph of a stack of pizza-box-style containers, with printed
metadata that indicates the photo was taken on February 21, 2019:
71
There is no indication what, if anything, is inside the pizza boxes. Mr. Hunter’s
testimony about this photo is vague and speculative:
68 Id. (emphasis added).
69 Id. at 72.
70 See id. at 72-74.
71 Id. at 233.

Cancellation No. 92082396
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A. A big stack of what we call the pizza boxes.
Q. And what would have been in these pizza boxes?
A. Probably not universally stocked the same way, but some version of merch
or apparel or promotional items would have been getting ready to be sent out
to our potential dealers around the country and potential media partners and
potential influencers.72
Another photo (with metadata indicating it was taken on March 4, 2019) depicts
pizza-box-style containers in large cardboard boxes labeled “United States Postal
Service”:
73
72 37 TTABVUE 75.
73 Id. at 235.

Cancellation No. 92082396
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The boxes all are closed, so the contents, if any, are not visible, though they have
what seem like they might be mailing labels affixed to them. Hunter testified that “at
least some of these boxes would have had clothing items in them.”74 Mr. Hunter did
not specifically recall whether these were being sent to prospective “dealers” who
Respondent was courting to sell its vehicles or were “part of a sale campaign,”
testifying only “maybe some of both, but primarily promotional when we were
building our dealer network and our media network and our vendor network.”75 Nor
did he specify which of the clothing items identified in the registrations were
supposedly in the boxes.
There is then a March 13, 2019, Instagram post on Respondent’s account with
photo of Respondent’s employees wearing vests, lined up outside what appears to be
one of Respondent’s vehicles:76
74 Id. at 81; see also 40 TTABVUE 57 (testifying about “the box of boxes,” he stated: “Many,
if not most, of which contained some aspect of apparel, whether it was a T-shirt or a cap or
something like that.”).
75 40 TTABVUE 60.
76 The text of the post indicates that this was taken on the floor of the RVX EXPO in Salt
Lake City where Respondent launched its “Storyteller Overland MODE 4X4” vehicle.

Cancellation No. 92082396
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77
The vests appear to have an emblem or patch on them. Mr. Hunter testified that
it was a patch.78 The photo, however, is not clear enough to make out what is on the
emblem or patch, but it seems likely that it is Respondent’s registered logo design. In
any event, Respondent admitted in it Answer to the Second Amended Petition to
77 37 TTABVUE 236.
78 Id. at 87. He also testified that the employees were wearing shirts that said
STORYTELLER OVERLAND on the sleeves, id. though that is not discernible because the
photo is not crisp enough.

Cancellation No. 92082396
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Cancel that it “has not used the Registered Marks in connection with “hiking vests,”
… .”79 As a consequence, the Board previously entered partial summary judgment as
to “hiking vests” (and a few other items).80 Thus, the wearing of the patched vests by
Respondent’s employees—which Mr. Hunter testified were “kind of the company
uniform”81—does not qualify as bona fide use in commerce as of the filing date of the
underlying use-based applications.
The final document to which Respondent points as evidence of its use in commerce
of the mark on clothing is an April 12, 2019, photograph in an Instagram post:
79 27 TTABVUE 6 ¶¶ 31, 32.
80 See 25 TTABVUE 11-12.
81 40 TTABVUE 69. Prompted by Respondent’s attorney, Mr. Hunter testified that in the
“April 2019 time frame” Respondent had “tubs of T-shirts” to be given away at “an event like
this,” 37 TTABVUE 91-92, 96-97, but Respondent points to no documentary corroboration of
this statement.

Cancellation No. 92082396
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82
According to Mr. Hunter’s testimony, this photo depicts Respondent’s CEO, Andrew
Cooley, wearing a vest adorned with what appears to be a patch, being interviewed
at another event called the “Super B RV Show.”83 Mr. Hunter testified that “patches
and stickers and T-shirts that would have been available at this event,”84 “given
82 37 TTABVUE 237.
83 Id. at 89. As we noted concerning the immediately preceding photo, the wearing of the
vest by Mr. Cooley does not constitute pre-filing use in commerce by Respondent. Mr. Hunter
testified that the blue object in front of the van was “one of the tables that we would have
had as a part of like a pop up show.” Id. at 91.
84 Id. at 90. Patches are not among the goods identified in the registrations.

Cancellation No. 92082396
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away” as a “promotional premium thing,”85 though there is no documentation or
photographs corroborating those statements.
Mr. Hunter then testified at length about the “Overland Expo in May of ’19.”86 In
response to a leading question from his attorney, he testified that Respondent sold
“clothing items” at this show:
Q. Do you recall having a table with clothing items on it at the Overland Expo?
A. For sure.87
Mr. Hunter, however, does not remember which day(s) in May 2019 this Expo took
place.88 That’s a problem for Respondent, because the Relevant Dates for the nonuse
claim are the filing dates of the two applications, which are May 1, 2019, and May 8,
2019. He also testified that Respondent had a portable credit card reader at the event
to take payment,89 but there is no documentation of any such sales anywhere in the
record. In fact, when asked about an order form for apparel items dated October 30,
2020 (which does not appear in the trial record), Mr. Hunter could not identify any
earlier evidence of any orders:
Q. Do you have any evidence of orders that are older than October 30 is [sic] of
2020?
85 Id. at 92.
86 Id. at 92. In his earlier discovery deposition, he testified: “I believe [the Overland Expo]
was in May or otherwise of 2019.” 40 TTABVUE 64.
87 37 TTABVUE 92-93.
88 Id. at 127-28.
89 Id. at 94-95.

Cancellation No. 92082396
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A. Evidence – I don’t know that we can provide this … . What I don’t know is
whether Jen had sold any – anything previously for cash or taken payment,
you know, for anything prior to that.90
D. Respondent has failed to rebut the prima facie case of nonuse
As we see it, here is what the evidence just laid out reflects as to whether
Respondent used the marks in commerce before the Relevant Dates:
• The only testimony offered in support of Respondent’s arguments that it used
the marks in commerce as of the Relevant Dates is that of Respondent’s
founder, chairman, and CEO—someone interested in an outcome favorable to
Respondent91—and it is riddled throughout with vagueness and speculation,
as well as inconsistent in a few places.
• Respondent offered no corroborative testimony from two witnesses who figure
prominently in Mr. Hunter’s testimony on the issue of use as of the relevant
dates, Jen Matthews (who Respondent concedes was “a key employee involved
in the merchandise launch”92) and Mari Beth Ellis, even though Mr. Hunter
testified that he has “access” to Ms. Matthews and that “she is very friendly to
the company” and that Ms. Ellis is a “supporter” of Respondent.93
90 40 TTABVUE 64.
91 In assessing testimony, the Board, in its factfinding role, routinely takes into account the
degree of interest testifying witnesses have in the outcome of a case. See, e.g., L. & J.G.
Stickley, Inc. v. Cosser, No. 92040202, 2007 WL 117567, at *3 n.6 (TTAB 2007); E. M. Bailey
Distrib. Co. v. Petro-Vend, Inc., 1980 WL 30151, at *7 (TTAB 1980); Tex. Gas Transmission
Corp. v. Chemplex Co., 1972 WL 17750, at *7 (TTAB 1972); Norwich Pharmacal Co. v.
Salsbury Labs., 1970 WL 9971, at *6 (TTAB 1970); McQuay-Norris Mfg. Co. v. H-P Tool Mfg.
Corp., 1964 WL 7843, at *3 (TTAB 1964).
92 See 47 TTABVUE 31.
93 The Board has held that, where it is within a party’s power to produce testimony to
corroborate an asserted fact, and the party does not do so, a tribunal is permitted to draw the
inference that the asserted fact is unsupported or untrue. See Stawski v. Lawson, No.
94002621, 2018 WL 6921710, at *10 (TTAB 2018). There, the Board found it significant that:
Applicant had the opportunity to provide specific, probative,
credible evidence documenting dates, quantities, and recipients of
goods distributed, and the way his marks were displayed in
connection therewith. We would be further remiss if we did not note
that Applicant’s relationship with Ms. Malone, as husband and wife,
certainly made the task of obtaining this information easier.
Id.

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• Respondent offered no corroborative documentation of sales as of the Relevant
Dates, and the documentation that is in the record does not corroborate that
Respondent used the mark in commerce as of the Relevant Dates in connection
with any of the identified goods:
o There is no documentation of any order placed, either by Respondent from
a supplier, or by a customer purchasing an item from Respondent, for any
of the identified clothing items as of the Relevant Dates.
o There is no documentation of any sales of any of the identified clothing
items as of the Relevant Dates.
o There is no documentation that any of the identified clothing items were
shipped in interstate commerce to any consumers as of the Relevant
Dates.
o There is no documentation reflecting what was inside the pizza boxes
shown in cardboard crates at the Post Office, and Mr. Hunter’s testimony
about whether these were sent to any clothing customers, as opposed to
being sent to potential dealers being courted by Respondent for the
purpose of promoting Respondent’s vehicles, is vague and inconsistent.
o The single box that showed two t-shirts within it does not appear to bear
Respondent’s registered logo mark, and even if we credit the version of
Mr. Hunter’s testimony where he says that these were sent to Mari Beth
Ellis, this reflects a shipment to a friend who was a supporting fan of
Respondent’s fledgling vehicle business, and there’s no indication it was
sent across state lines from Alabama.
o There is no documentation that reflects that Respondent displayed, gave
away, or sold any of the identified goods at the March 2019 RVX Expo or
the April 2019 Super B RV Show.
o There is no documentation that reflects that Respondent displayed, gave
away, or sold any of the identified goods at the Overland Expo in May
2019, and no evidence that this Expo took place before May 1 or May 8 of
that year.
The documentation of the sales and giveaways to which Mr. Hunter testified is
spotty, and almost all of what sparse documentation was submitted does not actually
directly corroborate Mr. Hunter’s testimony about use of the mark in commerce. See,

Cancellation No. 92082396
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e.g., Vans, Inc. v. Branded, LLC, No. 92066859, 2022 WL 3369641, at *21-22 (TTAB
2022) (finding no bona fide use in commerce due to no “credible documentation” to
corroborate testimony where “[t]he documents Kuhlman testified about in his August
16, 2021 testimony deposition regarding sales were undated or OLD SCHOOL
clothing was not expressly identified.”) As noted above, the 2019 Instagram posts
constitute mere advertising either of hats and shirts to come or of the vehicle business
generally,94 which, as stated earlier, is not use in commerce of the identified goods.
See, e.g., Avakoff, 765 F.2d at 1098; Clorox Co., 2013 WL 5498171, at *5.
Turning to the “pizza box” photos, the two photos of multiple pizza boxes do not
reveal the contents, so they do not corroborate Mr. Hunter’s less-than-definitive
testimony that “at least some of these boxes would have had clothing items in them.”95
Mr. Hunter’s testimony about the single, open pizza box with one or two shirts in it
was inconsistent as to who received the box. We note, however, that shortly
thereafter, Ms. Ellis posted a photo on Instagram where she and her daughter are
wearing shirts that appear to have the same design.
Neither of these two photos evidence use in commerce as of the Relevant Dates.
In Morgan Creek Productions, Inc. v. Foria Int’l, Inc., No. 91173806, 2009 WL
1719597, at *10 (TTAB 2009), we held that distribution of hundreds of clothing items
“employees and friends of the company and people we want to give promotions to” in
order to promote the party’s main business (movies and entertainment services) did
94 See 47 TTABVUE 13 (“In the fall/early winter of 2018, STO began advertising t-shirts
and hats on its Instagram page.”).
95 37 TTABVUE 81.

Cancellation No. 92082396
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not constitute use of the trademark in commerce. See id. at *10. The Board explained
that the promotional clothing items were not distributed to the relevant consumers
for clothing: the general public. See id. at *10-11. So, too, here. Even if we were to
assume that the closed pizza-style boxes at the Post Office contained some or all of
the identified goods, that evidence, at best, reflects the sending of unidentified types
of clothing to potential dealers of Respondent’s vehicles and two shirts to friends of
the company. That is not bona fide use of the marks for clothing in the ordinary course
of trade. See Foria, 2009 WL 1719597, at *10.
None of the documentary evidence thus can bear the corroboratory weight
Respondent places on it, and there is no corroborating testimony from Ms. Matthews,
Ms. Ellis, or anyone else, for that matter. 96 So what we’re left with is Mr. Hunter’s
testimony, and that testimony is vague, speculative, and inconsistent. In these
96 As previously mentioned, Respondent admitted, in its answers to both the First and
Second Amended Petitions, that it hasn’t used the marks on vests (and some other identified
clothing items). On that basis the Board granted partial summary judgment in Petitioner’s
favor on its nonuse claim as to vests. See 25 TTABVUE 11-12. Those admissions also means
that the two photos of Respondent’s employees/officers wearing patched vests at pre-
Relevant-Dates exposition events do not reflect use in commerce. See 27 TTABVUE 6, ¶¶ 31,
32.
We further note that Mr. Hunter testified that the vests were essentially “the company
uniform,” 40 TTABVUE 69, and such intra-company use does not show use in commerce.
“[T]here has to be an ‘open’ use, that is to say, a use has to be made to the relevant class of
purchasers or prospective purchasers since a trademark is intended to identify goods and
distinguish those goods from those manufactured or sold by others. There was no such ‘open’
use[;] rather the use can be said to be an ‘internal’ use, which cannot give rise to trademark
rights.” Sterling Drug Inc. v. Knoll A.G. Chemische Fabriken, 1968 WL 8198, at *4 (TTAB
1968)) (citations omitted), cited with approval in Tao Licensing, 2017 WL 6336243, at *10;
see also McQuay-Norris, 1964 WL 7843, at *2 (“It is apparent, however, that opposer’s prior
shipments and promotional activities under the mark in December 1960 were entirely
between and within opposer’s organizations and therefore did not constitute a public use of
the mark. Thus, such activities cannot be relied upon for any purpose herein.”). So
Respondent’s admissions are in line with our precedents.

Cancellation No. 92082396
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respects, this case seems to have more than a little in common with three Board
precedents: Vans, Inc., 2022 WL 3369641; Stawski, 2018 WL 6921710; and NASDAQ
Stock Mkt., Inc. v. Antartica, S.R.L., No. 91121204, 2003 WL 22021943 (TTAB 2003).
We already addressed Stawski in a footnote, supra, in which we discussed the
significance of Respondent’s failure to offer corroborating testimony from Ms.
Matthews. To recap, in Stawski we found that the party seeking to prove prior use
through distributing promotional samples “had the opportunity to provide specific,
probative, credible evidence documenting dates, quantities, and recipients of goods
distributed, and the way his marks were displayed in connection therewith” but,
despite being in a position to be able to pull such evidence together, did not do so.
2018 WL 6921710, at *10. We further noted that “when it is within a party’s power
to produce a certain kind of persuasive testimony or documentary evidence on an
urged factual finding, and it fails to do so, a tribunal is at least permitted—perhaps
even compelled—to draw the inference that that fact is unsupported and/or untrue.”
Id. (citations omitted).
Here, the failure to offer Ms. Matthews as a corroborating witness is even more
stark, because Mr. Hunter admitted having little to do with developing, ordering, or
selling clothing. For instance, Mr. Hunter repeatedly pointed to Jen Matthews, who,
in 2018 and 2019 (i.e., in the run-up to the filing of the applications), was

Cancellation No. 92082396
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Respondent’s “Vice President of Branding and Merchandising,”97 as being primarily
responsible for Respondent’s activities relating to clothing:
Q. And who would be the primary person that was gathering quotes and
holding on to receipts and invoices and things at that time?
…
Q. For clothing?
A. Like, for clothing and anything gear related or anything brand related or
whether it was intended for sale or promotion, that would have been Jen who
was wearing about 47 hats at the time.98
He also pointed to Ms. Matthews as the person who would have gathered quotes (from
suppliers), and kept invoices and receipts of clothing sales.99 And he contrasted Ms.
Matthews’s responsibility over clothing and other merchandising with his own
different focus at the time: “My attention was largely on driving the prototyping of
the vehicle and Jen would have largely been the one who would have been having
those conversations” with alleged recipients of clothing items.100
And what testimony Mr. Hunter did offer was vague, imprecise, and shifting. In
both Vans, Inc. and NASDAQ, the Board, in finding that a party had not proved use
by a particular date, found it significant that the party’s case relied on testimony that
97 See 37 TTABVUE 41; 40 TTABVUE 52. Mr. Hunter explained that “merchandising”
concerned things “not specifically vehicle related or things that were supplemental to the
vehicle for the more lifestyle gear, apparel, merch.” 37 TTABVUE 42.
98 37 TTABVUE 58; see also id. at 53 (“But the main, I guess, person who was building those
relationships and booking those orders [for clothing] for us would have been Jen at the
time.”); id. at 49, 52, 56, 58, 60, 61, 98, 131; 40 TTABVUE 19, 21, 23-25, 64; 68-69.
99 See id. at 58; see also id. at 56.
100 See id. at 131.

Cancellation No. 92082396
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was vague, imprecise, and/or inconsistent on sales before the date in issue, without
any credible corroborating documentation. See Vans, Inc., 2022 WL 3369641, at *21-
22; NASDAQ, 2003 WL22021943, at *8-9; see also CDS, Inc. v. I.C.E.D. Mgmt., Inc.,
No. 94001250, 2006 WL 1968616, at *10 (TTAB 2006) (“The evidence of CDS’s activity
in these five states consists almost entirely of the testimony of its principals. … In
this case, we cannot say that the testimony of Mr. Wolfe and Mr. McGinnis is free of
indefiniteness. On the contrary, it simply does not carry the conviction of accuracy
and applicability. On the basis of the record before us, we find that CDS has not
established its use in the five states] … .”). That is the situation here as well.
The Federal Circuit has likened assessing evidence of prior use to putting together
a jigsaw puzzle, where it is often the case that, while no individual piece proves prior
use, sometimes the pieces viewed together bring the prior-use picture into focus. See
W. Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 1125-26 (Fed. Cir. 1994). Here,
however, there are just too many missing pieces for us to complete the puzzle the way
Respondent urges us to do. Key gaps include missing documentary corroboration of
Mr. Hunter’s vague and imprecise (and keenly-interested) testimony and the lack of
any corroboratory testimony from the two people implicated by name in Mr. Hunter’s
testimony. On the evidence before us, we find that Respondent has not overcome
Petitioner’s prima facie case of nonuse as of either relevant date. So, unless
Respondent can establish its affirmative defense of laches, this will require
cancellation of Respondent’s registrations as to the remaining clothing articles. It is
to that defense we now turn.

Cancellation No. 92082396
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V. Respondent’s laches defense
In its trial brief, Respondent argues that laches precludes Petitioner’s claims.101
As explained below, we reject the defense for three reasons.
A. Respondent did not adequately plead laches
First, laches was inadequately pleaded. In its operative answer, Respondent
asserted: “Registrant pleads the affirmative defenses of unclean hands, laches,
estoppel, and acquiescence.”102 That’s it. The bare recitation of the names of four
equitable affirmative defenses in one short sentence is patently insufficient. What the
Board said, upon its own discretionary review of a one-sentence recitation of the
names of five alleged affirmative defenses in NPG Records, LLC v. JHO Intellectual
Property Holdings LLC, No. 91269739, 2022 WL 3701446 (TTAB 2022), seems spot-
on here:
A legally sufficient pleading of each defense must include
enough factual detail to provide [the opposer] fair notice of
the basis for the defense. Applicant has done no more than
list these defenses by name, and has provided no further
facts upon which they might plausibly be based.
Id. at *12 (citations omitted). The Board then struck the defenses. Id. at 13.
In its reply brief, Petitioner objected to Respondent’s assertion of laches, asserting
that Respondent’s pleading did not provide Petitioner “fair notice of the basis for the
defense … which prevented [Petitioner] from the opportunity to disclose additional
101 See 47 TTABVUE 27-31.
102 27 TTABVUE 7. Because Respondent pursued only laches at trial, it forfeited the defenses
of unclean hands, estoppel, and acquiescence. See, e.g., Double Coin Holdings Ltd. v. Tru
Dev., No. 92063808, 2019 WL 4877349, at *1 (TTAB 2019).

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trial evidence that would bear on this issue.”103 We agree. Respondent’s grossly
insufficient pleading of laches by itself warrants rejection of the defense.104
B. Laches was not tried by implied consent
Second, without the parties’ express or implied consent, the Board does not allow
the assertion at trial of unpleaded claims or defenses—and we consider Respondent’s
one-word recitation of the word “laches” to be the equivalent of an unpleaded defense.
It is well settled that:
Implied consent to the trial of an unpleaded issue can be
found only where the nonoffering party (1) raised no
objection to the introduction of evidence on the issue, and
(2) was fairly apprised that the evidence was being offered
in support of the issue. Fairness considerations are
paramount in assessing whether an issue has been tried by
implied consent—there must be an absence of doubt that
the non-offering party is aware that the issue is being tried.
Iron Balls Int’l Ltd. v. Bull Creek Brewing, LLC, No. 92079099, 2024 WL 2844425, at
*10 n.52 (TTAB 2024) (citations omitted); accord M/S R.M. Dhariwal (HUF) 100%
EOU v. Zarda King Ltd., No. 91231033, 2019 WL 1915763, at *4 (TTAB 2019);
Morgan Creek, 2009 WL 1719597, at *4-5.
Petitioner was not fairly apprised that Respondent was going to raise the defense
of laches at trial. Indeed, earlier in the case, in defending against Petitioner’s cross-
103 See 51 TTABVUE 24-25 n.5.
104 For this reason, this patently insufficient recitation of the names of defenses could have
been stricken sua sponte. See Fed. R. Civ. P. 12(f)(1); see also NSM Resources Corp. v.
Microsoft Corp., No. 92057932, 2014 WL 7206403, at *11 n.19 (TTAB 2014); Am. Vitamin
Prods. Inc. v. Dowbrands Inc., No. 92019036, 1992 WL 88051, at *2 (TTAB 1992).

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motion for summary judgment of nonuse,105 Respondent said not a word about laches,
defending itself only on the merits of the nonuse claim.106 This had the natural effect
of lulling Petitioner into thinking Respondent’s one-word incantation of “laches” in
its Answer—assuming Petitioner even noticed it—was a throwaway. In its reply
brief—the first chance Petitioner had to confront the defense—Petitioner objected to
the belated insertion of laches into the case.107 We therefore think it entirely unfair
for Respondent to have developed the defense for the first time in its defending trial
brief. We do not consider the defense to have been tried by implied consent.
C. Respondent did not prove laches
Petitioner, playing it safe, also addressed laches on the merits in its Reply Brief,
arguing that it should be rejected on the facts of record.108 As Petitioner did, we, too,
will alternatively address the merits. And on the merits, we agree with Petitioner
that the defense fails on the merits, providing the third reason why Respondent may
not avail itself of this defense.
1. General principles
Section 19 of the Trademark Act, 15 U.S.C. § 1069, provides that in “all inter
partes proceedings equitable principles of laches, estoppel, and acquiescence, where
applicable, may be considered and applied.” To prevail on a laches defense, the
105 See 13 TTABVUE.
106 See 22 TTABVUE.
107 See 51 TTABVUE 22-23 n.5.
108 See id. at 22-25. We note that, in view of Petitioner’s objection, this does not constitute
consenting to trial of the defense. See, e.g., Double Coin, 2019 WL 4877349, at *20-21; Nextel
Commc’ns, Inc. v. Motorola, Inc., No. 91164353, 2009 WL 1741923, at *19 n.16 (TTAB 2009).

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defendant must demonstrate (1) undue or unreasonable delay by the plaintiff in
asserting its rights, and (2) prejudice to the defendant resulting from the delay. See,
e.g., Bridgestone/Firestone Rsch., Inc. v. Auto. Club De L’Ouest De La France, 245
F.3d 1359, 1361 (Fed. Cir. 2001). Delay in petitioning to cancel a registration is
generally measured by how much time elapses after a registration issues. See, e.g.,
Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes, Inc., 971 F.2d 732, 734 (Fed. Cir.
1992); Nat. Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1581
(Fed.Cir.1991). “Two general categories of prejudice 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 (citation omitted). And any prejudice “must
be tied to a party’s registration of a mark, not to a party’s use of the mark.” Lincoln
Logs, 971 F.2d at 734 (citations omitted).
Once the “factual premises” of laches—undue delay and prejudice—“are
established, the [tribunal] weighs the equities in order to assess whether laches
should apply to bar those damages that accrued prior to suit.” State Contracting &
Eng’g Corp. v. Condotte Am., Inc., 346 F.3d 1057, 1065 (Fed. Cir. 2003) (citation
omitted); Kemi Organics, LLC v. Gupta, No. 92065613, 2018 WL 2230555, at *13
(TTAB 2018) (“We do not determine laches by “by adherence to rigid legal rules;
rather, we analyze laches by a consideration of the specific facts and a balancing of
the respective interests and equities of the parties, as well as of the general public.”)
(citation omitted). The Board has held that the equitable defense of laches generally

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is not available against a nonuse claim because “it is within the public interest to
have registrations which are void ab initio stricken from the register and that this
interest or concern cannot be waived by the inaction of any single person or concern
no matter how long the delay persists.” Maids To Order of Ohio, Inc. v. Maid-to-Order,
Inc., No. 92040571, 2006 WL 936993, at *5 (TTAB 2006) (quoting W. D. Byron & Sons,
Inc. v. Stein Bros. Mfg. Co., 1965 WL 7807, at *4 (TTAB 1965), aff’d, 377 F.2d 1001
(CCPA 1967)). We don’t apply this rule unswervingly, however. Rather, we exercise
discretion, applying it in each case against the backdrop of the equities. See CeramTec
GmbH v. Coorstek Bioceramics LLC, 124 F.4th 1358, 1368 (Fed. Cir. 2025).
2. Delay
First, we disagree with Respondent’s insistence that Petitioner’s alleged “delay”
was undue or unreasonable. Respondent bears the burden of proving laches. See, e.g.,
Bridgestone/Firestone, 245 F.3d at 1361 (“Bridgestone, as the party raising the
affirmative defense of laches, bears the burden of proof.”) (citations omitted). As to
whether Respondent has established that Petitioner’s alleged delay was
unreasonable, we note that Respondent’s failure to provide notice of basic facts
underlying its defense in its Answer to the Second Amended Petition likely has
hampered Petitioner in addressing the defense on the merits. Petitioner was required
to submit its trial evidence and its trial brief before Respondent fleshed out, in its
answering brief, the metes and bounds of its laches defense.
But even with that handicap, we cannot say that Petitioner’s delay was
unreasonable. As noted earlier, the time runs from when the registrations issued

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(May 2020). See, e.g., Lincoln Logs, 971 F.2d at 734. And Section 14(1) of the
Trademark Act provides that “[a] petition to cancel a registration of a mark … may
… be filed … [w]ithin five years from the date of the registration of the mark.” 15
U.S.C. § 1064(1).109 The filing of a petition to cancel a registration less than three
years after issuance falls comfortably within the time allowed under Section 14(1).
As a result, Respondent faces more of a challenge to paint this alleged delay as undue
or unreasonable than it would have been if Petitioner had waited to file until, for
example, a month before the five-year cancellation period expired.
We take notice that the period of alleged delay coincided with the period when the
effects of COVID-19 and the steps countries were taking to deal with the pandemic
were mostly acutely impacting the world. Even so, Respondent acknowledges receipt
of Petitioner’s cease-and-desist letter concerning Respondent’s mark in April 2022,
less than two years after registration,110 which put Respondent on notice of
Petitioner’s objection. Petitioner also says in its reply brief, without support, that it
subsequently engaged in negotiations with Respondent. But that’s not evidence. See,
e.g., Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1371 (Fed. Cir. 2018) (an assertion of
a fact in a brief “is not evidence under any of the relevant rules”) (citation omitted);
Christiane E, LLC v. Int’l Expeditions, Inc., No. 92055645, 2013 WL 11066622, at *2
(TTAB 2013) (“[T]here is no evidence supporting this statement, and mere attorney
109 We note that the same five-year period governs the time for instituting an ex parte
reexamination proceeding under 15 U.S.C. § 1066b(i) for nonuse at the time of filing a use-
based application.
110 See 47 TTABVUE 29; see also 33 TTABVUE 10 (interrogatory response).

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statements in briefs or motions are not evidence.”) (citations omitted). But the lack of
testimony from Petitioner or its representatives on this may well be due to the lack
of notice provided by Respondent’s deficient pleading and belated raising of its laches
defense. Petitioner also provided evidence that it was pursuing other perceived
infringers during the period in question.111 See Cuban Cigar Brands N.V. v. Upmann
Int’l, Inc., 457 F. Supp. 1090, 1097 n.28 (S.D.N.Y. 1978) (in case where delay was
found to be excusable, court noted that “a trademark owner is not bound to take on
more than one infringer at a time”) (citations omitted), aff’d mem., 607 F.2d 995 (2d
Cir. 1979). Under these circumstances, and even without evidence of the negotiations,
we have no trouble finding that the delay was not undue or unreasonable.
3. Prejudice
Turning to the prejudice requirement, Respondent puts forth several arguments,
none supported by the evidence of record.
a. Economic prejudice
First, Respondent asserts that it suffered economic prejudice because, while
Petitioner supposedly dawdled, Respondent “significantly invested in its brand, and
built up significant good will in the STO name.”112 The few specifics Respondent offers
are unconvincing. It argues that, in late 2020 (a few months after its registration
111 See 30 TTABVUE (Decl. of Jason Sytsma and exhibits thereto, including negotiated co-
existence agreements with several third parties between April 2022 and April 2023, id. at 4-
40; enforcement letters sent between February – December 2022, id. at 100-58).
112 47 TTABVUE 30. “STO” is the shorthand by which Respondent refers to itself in its brief.

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issued), it “set up an online shop” and “[d]ue to its financial success, STO was able to
bring on new team members to focus specifically on STO’s e-commerce site.”113
What we’re concerned with here is a registration for clothing, not for other goods
(or services) Respondent sells. And the record reveals no documentary evidence of the
“financial success” of the part of the business that sells clothing. As best we can
discern, there is no documentary evidence of any orders Respondent placed with
clothing manufacturers, nor does Respondent direct us to any evidence in the record
of sales receipts, invoices, or even summaries reflecting transactions with customers
who bought Respondent’s clothing. There is no evidence of any promotional
expenditures by Respondent for clothing during the alleged period of delay. See, e.g.,
Alfacell Corp. v. Anticancer Inc., No. 92032202, 2004 WL 1631116, at *8 (TTAB 2004)
“[I]t is difficult to gauge, in the absence of dollar amounts or other specific information
relative to its promotional efforts, the degree to which there has been any
detriment.”).
Putting those gaps aside, what is in the record points to sales of goods other than
clothing as the cause of whatever success Respondent may have enjoyed with the e-
commerce aspect of its business. Most notably, Mr. Hunter’s testimony directly
contradicts Respondent’s argument that any success of its “online shop”/“e-commerce”
activities was due to the growth or success in selling clothing: “And around 2020,
when we had our vehicles getting more widely distributed, we were able to bring on
new team members to specifically focus on our website, I guess. Not just our website,
113 Id.

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but our e-commerce site.”114 This not only shows no nexus between the
(undocumented) expansion of Respondent’s online sales activities and clothing, it
actually shows that any (undocumented) growth was due to something other than
the alleged delay in filing this proceeding to cancel a registration for clothing. See
Double Coin, 2019 WL 4877349, at *13 (“A nexus must be shown between the delay
in filing suit and the expenditures; the alleged infringer must change his position
because of and as a result of the plaintiff’s delay.”).
Further, Mr. Hunter testified that his e-commerce site was “staffed and ready to
actually sell” not only clothing, but “accessories and wheels and tires and
everything.”115 These accessories, wheels, and tires seem much closer to the “design,
upfitting, and kitting of overland and vanlife vehicles” that Respondent identifies as
the core of its business.116 Indeed, Mr. Hunter actually testified in February 2025
that, even at that late date, clothing has “not yet” developed into “a significant
revenue driver for the Storyteller Overland business.”117 Instead, he identified “the
vehicle portion of our business” as “the main revenue driver because they’re big-ticket
items.”118
114 40 TTABVUE 93.
115 37 TTABVUE 73; see also 40 TTABVUE 93 (mentioning “other wheels and tires and bolt-
on accessories” being sold via e-commerce).
116 See 47 TTABVUE 11-12. Mr. Hunter testified that its vehicles can cost “a quarter of a
million dollars.” 37 TTABVUE 116. He also mentioned selling “lightweight towables.” See id.
117 See 37 TTABVUE 114; see also 40 TTABVUE 80 (as of December 2023, “[t]he clothing
component … [is] insignificant with regards to revenue generation. … not a significant driver
of our business to date.”).
118 See 40 TTABVUE 88; see also id. at 82 (identifying a van called “the Mode” as “one of our
key product lines that’s our core revenue driver”). He testified that Respondent has “50-plus

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In sum, we see no economic prejudice at all, let alone economic prejudice caused
by the alleged “delay.” See, e.g., A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960
F.2d 1020, 1033 (Fed. Cir. 1992) (in banc) (“The courts must look for a change in the
economic position of the alleged infringer during the period of delay.”); Ralston Purina
Co. v. Midwest Cordage Co., 373 F.2d 1015, 1019 (CCPA 1967) (finding no “serious
effort to show prejudice” resulting from the asserted delay or acquiescence” including
“no decisions made by registrant” and “no evidence of promotional expenditure,” and
noting “[s]ales data are too imprecise even to indicate any substantial growth of
registrant’s trade” in the goods during the period at issue).
b. Evidentiary prejudice
Respondent also points to “the loss of evidence and the fading memory of
witnesses.”119 Specifically, Respondent argues that “if [Petitioner] had filed the
Petition in May 2020, the date of constructive notice, it is common sense that Mr.
Hunter’s memory of events that occurred a year prior would be much fresher.”120
Respondent further asserts: “Mr. Hunter also explained that a key employee involved
in the merchandise launch – Jen Matthews – left [Respondent] after 2019, and her
email accounts were ‘folded down’ and inaccessible by the time [Respondent] looked
in 2023.”121
dealer partners in North America” selling its vehicles, id. at 89, but that no dealer partners
sell Respondent’s clothing. See id. at 90.
119 47 TTABVUE 31.
120 Id.
121 Id.

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We are unmoved. Despite repeatedly pinning Respondent’s activities relating to
clothing during the time in question on Ms. Matthews, Respondent did not disclose
Ms. Matthews as a person having discoverable information concerning the claims and
defenses in this case.122 And Respondent did not offer any testimony from Ms.
Matthews, even though, according to Mr. Hunter, he has “access to her” and “she is
very friendly with the company.”123 Thus, it seems much more likely to us that Mr.
Hunter’s sketchy recall of events concerning clothing stems from (1) his lack of direct
involvement in merchandising and (2) his instead being locked on getting
Respondent’s first vehicle to the market, and not from any “loss of memory” that
occurred in the less-than-three-year period between the issuance of the registration
and the filing of this Petition.
Respondent also asserts the loss of documentary evidence: “Mr. Hunter explained
that Square and/or Stripe were used for sales prior to the placement of an e-commerce
shop on the website in late 2020, and that [Respondent] searched for, but was unable
to find, any Square or Stripe records because they were no longer available.”124 But
Mr. Hunter didn’t blame any of this on the relevant period of alleged delay. He blamed
it on other things. For example, he testified that the lack of documentation relating
to clothing before March 2019 was primarily because “Lee and I were doing like our
own internal bookkeeping. Tons of receipts were flying in, tons of quotes were being
122 See 33 TTABVUE 4-5.
123 See 37 TTABVUE 58. He also cryptically mentioned that she “is still affiliated with the
company and does business with the company periodically.” See 40 TTABVUE 19.
124 47 TTABVUE 31.

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done. And in the fog of that war, it is possible that we didn’t keep everything as
orderly as we should have.”125 He also noted that Respondent was not “able to access,
I don’t think they showed going back to the earliest days of the open account” with
Square or Stripe.”126
Mr. Hunter also testified that the lack of documentation, as it concerns Ms.
Matthews’s emails relating to sales and ordering of clothing during the time in
question, was the result of her leaving the company.127 Yet, as we observed above,
Respondent not only did not offer Ms. Matthews’s testimony, but makes no
representation about whether it asked Ms. Matthews to help Respondent locate these
records, even though she remains “very friendly to the company.” Further, that Ms.
Matthews left “after 2019,” does not tell us whether she left before or after, or her
email accounts were “folded down” before or after, the May 2019 issuance of the two
registrations. We’re concerned about evidentiary prejudice from the alleged delay
after the registrations issued, so with this evidentiary gap, it’s impossible to pin the
blame for alleged loss of Ms. Matthews’s emails on Petitioner. So far as we can tell,
no evidence connects Respondent’s alleged loss of documentation to any post-
registration period of delay.
So, we are unconvinced that Respondent suffered any evidentiary prejudice
attributable to the alleged delay in Petitioner instituting this proceeding.
125 37 TTABVUE 57. “Lee Conn” was one of the founding partners of Respondent. Id. at 40.
126 37 TTABVUE 78.
127 See id. at 58-59.

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4. The equities
We now turn to the equities. As noted above, proving undue delay and prejudice
are just the “factual predicates” for laches. See State Contracting & Eng’g, 346 F.3d
at 1065. A party asserting the defense must also convince us that the equities favor
application of the defense under the circumstances. See id.; Kemi Organics, 2018 WL
2230555, at *13. On this front, Respondent faces a headwind: the strong public policy
in ridding the Register of registrations found to be void ab initio. See Maids To Order,
2006 WL 936993, at *5. And there’s also the inequity of Respondent surprising
Petitioner by developing, in several pages of its trial brief, a defense it hadn’t
mentioned since asserting the word “laches” (lumped together with three other one-
word defenses) in its answer.
As we noted above, however, Respondent offers no reasons why equity favors
application of the defense in the circumstances presented here. With no equities that
we can discern favoring application of laches and two circumstances disfavoring it,
we find that the equities disfavor application of the defense.
* * *
In summary, by merely typing the word “laches” in its Answer, Respondent failed
to adequately plead this defense. This prevented Petitioner from obtaining fair notice
of the relevant facts and circumstances underlying this defense. Fleshing it out for
the first time in a trial brief after the discovery and trial periods are over is far too
late to spring the defense on an unsuspecting plaintiff. Further, the parties did not
try the defense by implied consent. And on the merits, Respondent has failed to prove

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the required factual premises of this belatedly-asserted defense or that the equities
favor application of the defense in this case. For all these reasons, we reject
Respondent’s laches defense.
Decision: We grant the Second Amended Petition for Cancellation as to both of
Respondent’s challenged registrations on the claim of nonuse.