Tito’s Vodka Rival Loses Trademarks After Flaunting TTAB Orders

The maker of Tito’s Vodka won a bid to knock out registered and proposed trademarks of a competitor that repeatedly failed to obey a trademark tribunal’s orders.

Titomirov Vodka LLC misrepresented facts and failed to make witnesses available during Fifth Generation Inc.'s administrative challenges to its trademarks, the Trademark Trial and Appeal Board said Oct. 31. The board threw out the trademarks, saying Titomirov’s “dubious filings” and “willful evasion” were evidence that a lesser sanction wouldn’t suffice.

The precedential decision shows the board’s authority to grant one party a victory regardless of the merits of the case if the other party disregards orders. The board in its decision said it “does not negotiate compliance with its orders,” and previous sanctions against Titomirov “have had limited effect.”

Fifth Generation filed its first challenge to a Titomirov trademark in 2016, the board said. The case expanded until it included a bid to cancel “Lucky Vodka by Alex Titomirov” and reject applications for “Titomirov Vodka” and “Titomirov Alkaline Martini.” Fifth Generations claimed priority over the marks, and argued the marks would confuse consumers and that Titomirov had no intent to use them in commerce.

Durring the TTAB proceeding, Titomirov said Alex Titomirov was the company’s only officer and lived in Monaco, the board said. But Fifth Generation convinced the board to re-open discovery in 2017 by establishing that U.S.-based individuals had represented themselves as company officers. Titomirov denied the relationship, but failed to provide any supporting evidence or produce the witnesses, the board said.

Fifth Generation later requested sanctions against Titomirov, including judgment or an order to produce requested witnesses. Titomirov requested a phone conference to discuss the sanctions, but the board said it would not handle potentially decisive motions by phone conference.

Titomirov continued to fail to make make identified individuals available for deposition, and “continues to misrepresent Alex Titomirov’s presence in the United States,” the board said

The board decision was signed by Administrative Trademark Judges Peter W. Cataldo, Marc A. Bergsman, and Linda A. Kuczma.

The case is Fifth Generation Inc. v. Titomirov Vodka LLC, TTAB, Opposition Nos. 91226034 and 91235263, and Cancellation No. 92066395, 10/31/19