Henri Selmer Paris v. Karel Goetghebeur

This opinion is not a
precedent of the TTAB
Mailed: September 3, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Henri Selmer Paris, S.A.S.
v.
Karel Goetghebeur
_____
Cancellation No. 92074077
_____
Michael Culver, of Millen, White, Zelano & Branigan, P.C.,
for Henri Selmer Paris, S.A.S.
Kathleen Paisley, of JonesSpross,
for Karel Goetghebeur.
_____
Before Lykos, Cohen, and Casagrande,
Administrative Trademark Judges.
Opinion by Casagrande, Administrative Trademark Judge:
Karel Goetghebeur (Respondent) owns Registration No. 4868779 for the standard-
character mark ADOLPHE SAX & CIE for goods identified as “musical instruments,”
in International Class 15.1
1 This registration issued on December 15, 2015, on the Principal Register, based on a
November 3, 2014, request for extension of protection of International Registration No.
1228257 under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a). The registration
disclaims exclusive rights in the term “CIE,” which the registration states translates to “CO.”
The registration contains a statement that “the name(s) … shown in the mark does not

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Henri Selmer Paris, S.A.S. (Petitioner) has petitioned to cancel the registration,
claiming that Respondent abandoned the registered mark.2 In his answer,
Respondent admitted that he is a saxophone manufacturer located in Belgium with
a showroom in Bruges, but otherwise denied the salient allegations.3 Only Petitioner
submitted evidence during its trial period. Petitioner and Respondent filed trial
briefs, and Petitioner filed a Reply.4 In its Trial Brief, Petitioner limited its
abandonment claim to the period between December 15, 2015, and April 28, 2020 (the
period between the issuance of the registration and the filing of this Petition).5 The
case is ready for decision. For the reasons set forth below, we deny the Petition.
identify a particular living individual.” The USPTO accepted Respondent’s Section 71
Declarations of Use in 2022 and 2026.
2 See 1 TTABVUE 5-6 (Count II, 15 U.S.C. § 1064(3)). References to the record in this case
cite to the Board’s TTABVUE electronic docket system. 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). The Petition
attached what was alleged to be a webpage from Respondent’s website. But Petitioner did
not introduce it during its period for taking testimony, so it is not part of the trial record. See
Trademark Rule 2.122(c), 37 C.F.R. § 2.122(c).
3 See 5 TTABVUE. Under the heading “Affirmative Defenses,” Respondent asserts no
actual affirmative defenses. Respondent does state: “The allegations in the Petition fail to
state a claim for which relief can be granted.” Though a defense, this technically isn’t an
affirmative defense. Shenzhen IVPS Tech. Co. v. Fancy Pants Prods., LLC, No. 91263919,
2022 WL 16646840, at *1 n.5 (TTAB 2022). In any event, Respondent didn’t assert it at trial,
so it’s forfeited. See, e.g., Keystone Consol. Indus., Inc. v. Franklin Invest. Corp., No.
92066927, 2024 WL 3771168, at *2 (TTAB 2024).
The Answer also purports to “reserve[ ] all affirmative defenses under Rule 8(c) of the
Federal Rules of Civil Procedure and any other defense at law or at equity that may now exist
or in the future be available based on discovery and further factual investigation.” This, too,
is improper. 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 is meaningless.
4 See 83 TTABVUE (Petitioner’s Trial Brief); 89 TTABVUE (Respondent’s Trial Brief); 90
TTABVUE (Reply).
5 See 83 TTABVUE 6, 7, 10, 11. Count I of the Petition alleged that Respondent had not
used the mark “in the United States for at least the last three (3) consecutive years,” claiming

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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 entire file of Respondent’s registration. In addition,
Petitioner submitted the following during its trial period:
• The Declaration of John J. O’Malley, the attorney of record for Petitioner’s
pending Application Serial No. 79258499 filed April 4, 2019, for the mark
ADOLPHE SAX, which attaches an Office Action refusing registration
under Trademark Act Section 2(d) based on Respondent’s registration;6
• A First Notice of Reliance attaching, inter alia, a partially redacted copy of
Respondent’s Responses to Petitioner’s First Set of Requests for
Admission;7
• A copy of the transcript of the trial deposition of Respondent, with exhibits;8
• The testimony declaration of Geoffrey Soler, Managing Director of
Petitioner;9 and
• A Second Notice of Reliance attaching a partially redacted copy of
Respondent’s Answers to Petitioner’s First Set of Interrogatories Nos. 5, 27-
31, 34, and 41.10
that this, too, was a basis for cancellation under Section 1064(3). That section, however, lists
no “non-use” claim. (Section 1064(6) allows cancellation of registrations for marks that have
never been used, but Petitioner did not allege Respondent never used the mark.) In any event,
Petitioner advanced only its abandonment claim at trial, so any alternative “non-use” claim
is forfeited. See, e.g., WeaponX Performance Prods. Ltd. v. Weapon X Motorsports, Inc., No.
91221553, 2018 WL 1326374, at *2 (TTAB 2018). We note that Petitioner checked off “fraud”
on the ESTTA cover sheet for the Petition but did not assert any fraud claim.
6 See 56 TTABVUE.
7 See 57 TTABVUE.
8 See 58 TTABVUE.
9 See 59 TTABVUE.
10 See 60 TTABVUE.

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Although Respondent submitted no evidence during its trial period, the parties
jointly filed two stipulations, one of which, as we detail below, concerned
Respondent’s use of the mark.11
II. Entitlement to invoke the cancellation statute
Before we begin, we need to make sure that the cancellation statute entitles
Petitioner to have instituted and prosecuted this proceeding. Otherwise, we cannot
rule on Petitioner’s abandonment claim. 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 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 Lexmark Int’l, Inc. v. Static Control
Components, Inc., 572 U.S. 118, 120-37 (2014)).
Petitioner alleges that the USPTO refused registration of its pending Application
Serial No. 79258499 for the mark ADOLPHE SAX because of a likelihood of confusion
with Respondent’s registered mark. At trial, Petitioner submitted a declaration
attesting to that fact, attaching the Office Action refusing registration based on
11 See 79 TTABVUE. The other stipulation pertained to the re-designation of invoices as
non-confidential and publicly available.

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Respondent’s registration.12 Accordingly, Petitioner has established that it is
statutorily entitled to pursue this cancellation proceeding. See, e.g., Australian
Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 1375 (Fed. Cir.
2020) (“A petitioner may demonstrate a real interest and reasonable belief of damage
where the petitioner has filed a trademark application that is refused registration
based on a likelihood of confusion with the mark subject to cancellation.”).
III. Analysis
Under Section 14(3) of the Trademark Act, 15 U.S.C. § 1064(3), “[a] petition to
cancel a registration of a mark … may … be filed … : (3) [a]t any time if the registered
mark … has been abandoned … .” The definitional section of the Act, 15 U.S.C.
§ 1127, sets forth the definition of “abandoned”:
A mark shall be deemed to be “abandoned” if … : (1) When
its use has been discontinued with intent not to resume
such use. Intent not to resume may be inferred from
circumstances. Nonuse for 3 consecutive years shall be
prima facie evidence of abandonment. “Use” of a mark
means the bona fide use of such mark made in the ordinary
course of trade, and not made merely to reserve a right in
a mark.
“There are two elements to a claim for abandonment: (1) nonuse; and (2) intent
not to resume use.” Tiger Lily Ventures Ltd. v. Barclays Cap. Inc., 35 F.4th 1352, 1360
(Fed. Cir. 2022). Abandonment is a question of fact that a petitioner must prove by a
preponderance of evidence. See, e.g., Rivard v. Linville, 133 F.3d 1446, 1449 (Fed. Cir.
1998). But the statute gives petitioners a potential shortcut: if they can show the
12 See 56 TTABVUE.

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mark wasn’t used for three straight years, the law presumes abandonment, and the
mark owner has to come forward with evidence to overcome that presumption. See
On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1087 (Fed. Cir. 2000) (the
statute “create[s] a rebuttable presumption that the trademark owner has abandoned
the mark without intent to resume use. The burden then shifts to the trademark
owner to produce evidence that he either used the mark during the statutory period
or intended to resume use.”) (citations omitted). Thus, if Petitioner makes out a prima
facie case, it would need to address intent only if Respondent rebutted the prima facie
case with evidence that negated such intent. See, e.g., Rivard, 133 F.3d at 1449.
Petitioner here does not even attempt to prove the second element of an
abandonment claim (intent not to resume use), instead putting all its eggs in the
“presumption” basket. Petitioner argues that the evidence in this case “establishes
the presumption of abandonment through non-use of the mark … .”13 The wrinkle
here, however, is that there is, in fact, evidence of use in the record. As stipulated by
the parties:
The parties jointly stipulate that the registrant sold four
saxophones identified by the mark at issue to U.S.
residents from the time of the issuance of the registration
of the mark until the initiation of this cancellation
proceeding, and these four sales are represented by the
invoices found at Bates numbers KG 000286 through -289.
The parties stipulate that these sales constitute use of the
mark in commerce.14
13 See 83 TTABVUE 11; see also id. at 9.
14 See 79 TTABVUE 2; 58 TTABVUE 32-34 (attaching KG 000286-89 as exhibits to the
deposition of Respondent). KG 000286 shows an invoice dated 2019; KG 000287 shows an
invoice dated 2018; KG 000288 shows an invoice dated 2017; and KG 000289 shows an invoice
dated at the end of 2016/beginning of 2017. Interestingly, there is another invoice for one

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Notwithstanding this stipulation of use, Petitioner insists that the presumption still
applies, arguing that these instances of use do not constitute “bona fide use of such
mark made in the ordinary course of trade,” as set forth in the statutory definition of
“abandonment,” because they are “de minimis, sporadic, casual, nominal, or
isolated.”15
For support, Petitioner leans heavily on the Board’s recent precedential decision
in Adamson Sys. Eng’g, Inc. v. Peavey Elecs. Corp., No. 92076586, 2023 WL 7274674
(TTAB 2023).16 In Adamson, the issue was whether the respondent’s use of its CS
mark from 2015-2020 in connection with amplifiers constituted “bona fide use … in
the ordinary course of trade.” There, the evidence showed, inter alia, that:
• The respondent’s amplifiers were made in China since the early 1990s or
early 2000s (see 2023 WL 7274674, at *12);
• The respondent’s product catalogs stopped listing CS amplifiers after 2013
(see id.);
• In 2015, one of the respondent’s customer service reps recommended
another brand of amplifiers because the respondent was “possibly out of
stock” (see id.);
• The respondent produced no actual invoices but had spreadsheets of
domestic sales of three amplifiers in 2016 and 2017, but none in 2018, 2019,
or 2020. There was also one sold in 2021 (see id.);
• There was also a document listing “single-digit sales to two Puerto Rican
dealers—one in 2016 and the other in 2020,” but these sales weren’t on the
domestic spreadsheet (see id. at *13);
saxophone appearing at 58 TTABVUE 32 (with Bates-stamp KG 000285) that is dated 2015.
While this Bates number is outside the scope of the stipulation, it is in the record and there
is nothing indicating that it is not genuine or is disputed in some way.
15 See 83 TTABVUE 9.
16 See 83 TTABVUE 9-11; 90 TTABVUE 10-11.

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• Recent notes that were hand-written by two dealers attested that each had
one amplifier in stock (see id.);
• The respondent’s website, in February 2021, “stated that its CS amplifiers
were no longer available, and urged customers to ‘check out’ other
products.” See id.
The Board found, based largely on those facts, that the respondent’s sales of
amplifiers bearing the mark fell short of the statutory standard of “bona fide use
made in the ordinary course of trade.” See id. at *14.
While the stipulated four saxophone sales during the challenged period (2015-
2020) are on par with the sales numbers in Adamson, a few key differences in the
cases jump out. First, unlike in Adamson, there are invoices of Respondent’s U.S.
saxophone sales.17 Second, in Adamson, there was evidence that the respondent
stopped advertising the amplifiers with the mark, had a representative recommend
another brand because the amplifiers with the mark were out of stock, and stated on
its website that the amplifiers with the mark were no longer available. And third,
Respondent here is an individual, as opposed to a sizeable company.18 What is “the
ordinary course of trade” for a sizeable company is unlikely to be the same for an
individual.
Those facts in Adamson undermined the respondent’s attempt to prove that its
low number of CS amplifier sales were nevertheless “in the ordinary course of trade.”
17 See 58 TTABVUE 32-34.
18 The Petition alleges that “[t]elephone calls were placed to Registrant” at the Belgium
phone number listed on Respondent’s website and that “[a]ccording to Registrant, he makes
all ADOLPHE SAX & CIE brand saxophones himself by hand.” 1 TTABVUE 4-5. At trial,
Petitioner did not introduce evidence indicating that Respondent’s business was, in fact,
significantly larger than the Petition alleged.

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Instead, they “evince[d] a purposeful drawing-down of domestic CS amplifier sales.”
2023 WL 7274674, at *15. Here, in contrast, while the numbers are low, there’s
nothing that would show that Respondent’s U.S. sales were stopped or were
purposefully being “drawn-down.” Though Respondent himself put in no evidence,
Petitioner put in Respondent’s deposition transcript, and there is nothing in that
testimony even vaguely intimating that Respondent’s sales were made in anything
other than the ordinary course of trade. Indeed, Respondent’s testimony suggests that
his use of the mark continues as it did and there has not been any drawing-down. For
instance, he:
• agreed at his February 2024 deposition that prices for his saxophones “are
posted” on his website;19 and
• agreed when asked whether his posts about his saxophones “on social
media, including YouTube, Facebook, et cetera … [a]re intended for a
worldwide audience” that includes “the audience in the United States.”20
It is significant that this testimony is phrased in the present tense. Similarly,
Respondent was asked “do you have” employees to assist with manufacturing and
marketing—again, present tense—to which Respondent agreed that he does.21 Use of
the present tense is consistent with an ongoing musical instrument manufacturing
business, not one being drawn-down.
19 See 58 TTABVUE 10 (emphasis added).
20 Id. at 20-21. Respondent agreed that he has done no advertising on U.S. radio and
television. See id. at 23. If Respondent were a sizeable corporation, as was the respondent in
Adamson, this fact might have been significant. But Respondent is an individual, so it’s hard
to see how this moves the needle here.
21 See id. at 24-25.

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In short, the facts here differ significantly from the key facts that led the Board in
Adamson to find that the small number of sales weren’t bona fide uses of the mark in
the ordinary course of trade. Respondent’s U.S. sales are small, but, critically, they’ve
never stopped (as Petitioner concedes), and we do not see how they were made in
anything other than the ordinary course of Respondent’s modest trade. See, e.g., Tiger
Lily, 35 F.4th at 1360 (“even limited use can be sufficient to avoid a finding that use
of a mark has been ‘discontinued’ under the statute) (citing Person’s Co. v. Christman,
900 F.2d 1565, 1571 (Fed. Cir. 1990) (“Although sales … were often intermittent and
the inventory … remained small, such circumstances do not necessarily imply
abandonment. There 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.”) (citation omitted)); see also 2 J. THOMAS
MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 17:14 (5th ed.)
(June 2026 update) (“Intermittent periods of nonuse or low-level use do not result in
abandonment if the business is more or less continuous.”).
In summary, the record shows, and we find, that Respondent, at minimum, sold
one saxophone in 2016 or 2017 (that invoice spans the end of the year into the new
year), another in 2017, one in 2018, and one in 2019.22 There is no three-year
consecutive period of nonuse in the roughly four-and-a-half-year period that
Petitioner contests. Further, we find that Petitioner has not shown that Respondent’s
22 Only in 2020 did Respondent make no sales to any U.S. customer. See 57 TTABVUE 9.

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use was not “bona fide use of such mark made in the ordinary course of trade, and
not made merely to reserve a right in a mark.”
Because Petitioner has failed to show three consecutive years of nonuse or use
that was not bona fide use in the ordinary course of trade, it cannot rely on the
statute’s presumption of abandonment. And because Petitioner has not even
attempted to show the second element of abandonment (intent not to resume use), it
cannot demonstrate abandonment without the benefit of that presumption.
Decision: We deny the Petition for Cancellation.23
23 Because we deny the Petition, we do not need to address Respondent’s conditional
suggestion, in the last sentence in the brief, that “the registration could be restricted under
Section 18 to ‘musical instruments; namely saxophones.’” See 89 TTABVUE 23. We further
note that any such request would be inappropriate not only because the pleadings raise no
issue under Section 18, but also because the request comes too late. See ProQuest Info. and
Learning Co. v. Island, No. 91158016, 2007 WL 616037, at *3 (TTAB 2007); Personnel Data
Sys., Inc. v. Parameter Driven Software, Inc., No. 92018719, 1991 WL 326586, at *2 (TTAB
1991).