Attorney advertising. Prior results do not guarantee a similar outcome.
On October 6, 2026, the Trademark Trial and Appeal Board granted a petition to cancel two registrations for STORYTELLER OVERLAND for clothing. In Overland Sheepskin Co., Inc. v. Storyteller Overland, LLC, Cancellation No. 92082396 (not precedential), the Board held that the registrant had not shown it was using the marks in commerce on the listed goods when it filed its use-based applications. Jason R. Sytsma and Kevin J. Caster of Shuttleworth & Ingersoll, PLC represented the petitioner, Overland Sheepskin Co., Inc. This summary relies only on the Board’s public opinion. It is general information, not legal advice, and it does not create an attorney-client relationship.
The registrations and the claims
Storyteller Overland, LLC owned Reg. No. 6045485 for STORYTELLER OVERLAND in standard characters and Reg. No. 6053520 for a logo with those words. Both covered “Clothing, namely, hats, caps, and T-shirts; hiking apparel, namely, hiking vests, hiking jackets, hiking coats, hiking scarves, and hiking socks” in Class 25. Both came from applications filed in May 2019 under Section 1(a), the use-based filing basis, and both claimed first use on November 30, 2018.
The petition asserted likelihood of confusion under Section 2(d), nonuse at filing, and abandonment. The Board decided the case on nonuse and did not reach the other two claims.
Some goods were deleted before trial
The registrant admitted it had not used the marks on hiking vests, coats, scarves, or socks when it filed. Based on those admissions, the Board earlier granted partial summary judgment and ordered those items deleted. Trial focused on the remaining goods: hats, caps, T-shirts, and hiking jackets.
That sequence matters. The admitted items were deleted; they did not, on their own, void the registrations. The registrations fell because the Board found no proven use on any of the remaining goods as of the filing dates. Under the Federal Circuit law the Board applied, a use-based application with no bona fide use in commerce on any of the identified goods at filing is void ab initio, meaning void from the beginning.
What the Board found on use
The Board found the petitioner entitled to bring the case based on its registered OVERLAND marks and a plausible likelihood-of-confusion claim, which also let it pursue nonuse and abandonment.
The record held no pre-filing orders, invoices, or receipts for the remaining goods, and the registrant did not dispute that. The Board held this made a prima facie case of nonuse, so the registrant had to come forward with rebuttal evidence.
The registrant relied almost entirely on testimony from its founder, which the Board found “vague, speculative, and inconsistent” and uncorroborated. The Board concluded that:
- Social media posts teasing gear “about to launch” were advertising, which alone is not use in commerce.
- A supplier’s price quote for caps was not an invoice and showed no sale.
- Promotional boxes sent to prospective vehicle dealers, and shirts sent to a friend of the company, were not bona fide use in the ordinary course of trade for clothing. Those shirts also did not appear to bear the registered logo, and nothing showed they crossed state lines.
- Employees wearing patched vests as a company uniform was internal use.
- Testimony about sales at a May 2019 expo did not help, because nothing showed the expo came before the May 1 and May 8, 2019 filing dates.
The Board also treated as a key gap the lack of testimony from the two people the founder named as most involved, including the employee responsible for merchandising.
Why the laches defense failed
The registrant’s answer stated, in one sentence: “Registrant pleads the affirmative defenses of unclean hands, laches, estoppel, and acquiescence.” It pursued only laches at trial, forfeiting the rest. The Board rejected laches for three independent reasons:
- Inadequate pleading. Naming a defense without facts doesn’t give fair notice. The Board called the list “patently insufficient.”
- No implied consent. The registrant didn’t raise laches at summary judgment and first developed it in its trial brief. The petitioner objected at its first chance.
- No proof on the merits. Delay runs from registration. The petition came less than three years after the May 2020 registrations, within Section 14(1)’s five-year window, while the petitioner was pursuing other parties. The Board found no economic or evidentiary prejudice tied to the delay and cited the public interest in removing void registrations.
Lesson 1: In a use-based application, list only what you already sell
A Section 1(a) application includes a verified statement that the mark is already in use in commerce on the listed goods or services. If you sell T-shirts and caps today but are only planning jackets, the use-based application should cover the shirts and caps. For products not yet launched, a Section 1(b) intent-to-use application locks in a filing date now, with proof of use due before registration. Our step-by-step guide to registering a trademark in Iowa explains both filing bases.
Keep records, too. What the Board found missing here were dated records of sales or shipments of the goods to the public.
Lesson 2: Plead your defenses with facts
If you’re defending a registration, affirmative defenses like laches, estoppel, or acquiescence need facts behind them in the answer. The Board also noted that “reserving the right” to add defenses is improper and that failure to state a claim isn’t an affirmative defense.
Auditing an existing registration
- Check your registration’s filing basis in the USPTO’s TSDR system.
- For a 1(a) filing, match each listed item to dated records from before the filing date.
- If an item was never in use, ask counsel about options such as deleting it. The Board noted that Section 14(1) allows a petition to cancel within five years of registration, and that the same five-year period governs USPTO ex parte reexamination for nonuse at filing.
Key takeaways
- Both registrations were cancelled because no use was proven on any remaining listed goods by the filing dates.
- List only goods already in use in a 1(a) application; use 1(b) for planned products.
- Advertising, promotional giveaways, and internal use were not use in commerce on this record.
- Plead affirmative defenses with facts; a one-word defense can be rejected.
- The decision is not precedential.
FAQ
If I list one product I don’t sell yet, does my whole registration fail?
Not necessarily. Here, the admitted unused goods were deleted; the registrations were cancelled because no use was proven on any remaining goods at filing. Outcomes depend on the facts.
Do giveaways or Instagram posts count as use?
Not in this decision. The Board treated the posts as advertising and held that promotional items sent to prospective dealers and friends weren’t bona fide use in the ordinary course of trade.
Is this decision final?
Not yet. The opinion was mailed October 6, 2026. Parties generally may request reconsideration within one month, or seek review in the Federal Circuit or a federal district court within 63 days. TTABVUE lists the case as awaiting expiration of the appeal period.
Sources: the Board’s October 6, 2026 opinion (PDF) and the TTABVUE docket for Cancellation No. 92082396.
Jason R. Sytsma is a registered patent attorney at Shuttleworth & Ingersoll, PLC in Cedar Rapids. Read more about Jason or see his firm bio. For trademark help, see trademark services and registering a trademark in Iowa, or contact the office to request a consultation. Any engagement is subject to conflicts review and an engagement agreement.
Attorney advertising. Prior results do not guarantee a similar outcome. This article is general information, not legal advice, and reading it does not create an attorney-client relationship.
Jason R. Sytsma, Shuttleworth & Ingersoll, PLC, 235 6th St SE, Suite 600, Cedar Rapids, IA 52401 · (319) 365-9461
