In 2010, Marcus Bender visited a TAO restaurant or nightclub in an attempt to sell Kia Vodka. After that attempt failed, Bender Consulting Ltd. (Bender), which Mr. Bender owned, filed an intent-to-use trademark application on TAO VODKA for alcoholic beverages other than beer, which later registered.
TAO Licensing, LLC, petitioned to cancel the TAO VODKA registration. TAO owns several restaurants and nightclubs named TAO in cities, such as New York, and Las Vegas. TAO alleged that the registration was not valid because Bender did not use the mark in commerce prior to the deadline to file a statement of use, among other reasons.
Bender asserted that its registration was valid based on one sample case of Vodka shipped to Mr. Bender from a Vietnamese distillery. Mr. Bender allegedly provided samples, at no charge, to three entities: (1) a shareholder of Kia named J.M. Stevens & Associates, (2) a restaurant across the street from Mr. Bender’s office in Hawaii named Tango Contemporary Cafe, and (3) a distributor named Northern Wine & Spirits.
First, none of these three purported distributions was supported by corroborating documentation. This is a problem. The testimony of one witness without any corroboration is usually a very weak position on the issue of priority or first use. This is why it is important to keep documentary evidence of your first sale or shipment under a trademark.
The shipment of the samples to Mr. Bender from the factory was not a use in commerce because the shipment was to the trademark owner and did not make the goods available to the purchasing public.
Each of the distributions also failed to be a use in commerce because they were not a bona fide use in the ordinary course of trade. J.M. Stevens was a shareholder of Kai, a related company of Mr. Bender’s. Bender could not sell the vodka directly to The Tango Cafe because Bender was not a legally authorized distributor. And Northern Wine & Spirits never expressed any interest in the product and there was no written follow-up from either side.
Further Bender did not make any sales of the product for 2 1/2 years after receiving the samples. The board concluded that “sharing of these samples with the three parties was more in the nature of a preliminary advisory consultation than a bonafide use of the  mark…”
Another fun bit that makes Mr. Bender’s position suspect is that Bender “proposed a business relationship” with TAO in May 2012 seeking a six figure some of money to sell the TAO VODKA registration to TAO, despite having no sales of the product to that date. Its hard to sell a trademark when you have no sales under it.
This case appears to again demonstrate the principle that speculating in trademarks is usually fruitless, and rights only attach on the bona fide use of a trademark.
TAO Licensing, LLC v. Bender Consulting Ltd., Cancelation No. 92057132 (TTAB 2017).