throbber

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`THIS OPINION IS NOT A
`PRECEDENT OF THE TTAB
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`Mailed: December 29, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`Trademark Trial and Appeal Board
`_____
`JIPC Management, Inc.
`v.
`Incredible Pizza Co., Inc.
`________
`Opposition No. 91170452
`against Serial No. 78575077
`
`Cancellation No. 92043316
`against Registration No. 2500872
`_______
`Anne W. Glazer of Stoel Rives LLP for JIPC Management, Inc.
`Mary M. Clapp of Clapp Business Law LLC for Incredible Pizza Co., Inc.
`_______
`Before Kuhlke, Shaw, and Larkin, Administrative Trademark Judges.
`Opinion by Shaw, Administrative Trademark Judge:
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`

`

`Opposition No. 91170452 and Cancellation No. 92043316
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`Incredible Pizza Co., Inc. (“IPC” or Respondent) is the owner of Registration No.
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`25008721 for the mark:
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`for “Restaurant services” in International Class 42. IPC has disclaimed “Pizza Co.”2
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`IPC also owns Application Serial No. 785750773 for the mark:
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`for services identified as “Restaurant franchising; franchising, namely consultation
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`and assistance in business management, organization and promotion; franchising,
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`namely, offering technical assistance in the establishment and/or operation of
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`restaurants” in International Class 35. IPC has disclaimed “America’s” and “Pizza
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`Company.” The mark is described as follows: “The mark consists of a sector with the
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`1 Issued October 23, 1999; renewed.
`2 After registration, IPC amended its drawing under Section 7 of the Trademark Act, 15
`U.S.C. § 1057(e), to, inter alia, substitute the word “Company” for “Co.” The amendment was
`accepted and a new certificate of registration was issued with the mark shown above. The
`disclaimer, however, was not amended to conform to the new drawing.
`3 Filed February 25, 2005, based on Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a),
`with a claimed date of first use anywhere and in commerce of April 20, 2004.
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`2
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`

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`Opposition No. 91170452 and Cancellation No. 92043316
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`words ‘America’s’ ‘Incredible Pizza Company’; rectangular background with the
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`words ‘Great Food, Fun, Family, & Friends’; checkerboard design; and ribbon design.”
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`In its petition for cancellation and notice of opposition, JIPC Management, Inc.
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`(Petitioner) alleges priority of use and likelihood of confusion with its marks, as well
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`as fraud on the USPTO in connection with Respondent’s applications to register its
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`marks. Petitioner claims ownership of the following relevant registrations:
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`• Registration No. 3025377 for the mark JOHN’S INCREDIBLE PIZZA CO.
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`in standard characters for services identified as “Restaurant services” in
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`International Class 43, issued December 13, 2005 and claiming a date of
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`first use in commerce and anywhere as early as September 1997, “PIZZA
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`CO.” disclaimed; and
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`• Registration No. 3058427 for the mark JOHN’S INCREDIBLE PIZZA CO.
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`in standard characters for services identified as “Entertainment services,
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`namely, providing play areas, miniature golf, laser tag, bumper cars, arcade
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`games, prize redemption games, and arcade rides; providing coin operated
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`video games in the nature of an amusement arcade; providing continuous
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`music video pre-recorded video broadcasts via television” in International
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`Class 41, issued February 14, 2006 and claiming a date of first use in
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`commerce and anywhere as early as September 1997, “CO.” disclaimed.
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`3
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`

`

`Opposition No. 91170452 and Cancellation No. 92043316
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`I. Procedural History
`Because of the lengthy history of these proceedings we first provide a summary of
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`them. The petition to cancel Registration No. 2500872 was filed on May 21, 2004.4
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`The Notice of Opposition against Application Serial No. 78575077 was filed on April
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`19, 2006.5 The proceedings were consolidated by the Board on December 4, 2006 upon
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`Petitioner’s motion.6 After the close of the testimony periods, briefing was completed,
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`with the final brief being filed on July 10, 2008.7 During the briefing, however,
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`Petitioner filed a civil action alleging trademark infringement and unfair competition
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`in the U.S. District Court for the Central District of California. Shortly after the
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`briefing concluded, Respondent filed a motion to suspend the Board proceedings
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`pending the outcome of the district court case.8 The Board granted the motion and
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`suspended the proceedings on November 24, 2008, noting that “inasmuch as the civil
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`action clearly involves the same parties and the same marks, it appears that the civil
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`action will likely ‘have a bearing’ on the case before the Board.”9 Proceedings
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`remained suspended until the completion of the district court case, whereupon
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`proceedings resumed and supplemental briefing was ordered to address any issues
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`determined in the civil action.10 Supplemental briefing was completed on October, 6,
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`4 Cancellation No. 92043316, 1 TTABVUE.
`5 Opposition No. 91170452, 1 TTABVUE.
`6 10 TTABVUE. All further references to the record are to Opposition No. 91170452.
`7 57 TTABVUE.
`8 60 TTABVUE.
`9 63 TTABVUE 3.
`10 77 TTABVUE.
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`4
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`

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`Opposition No. 91170452 and Cancellation No. 92043316
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`2016,11 and the case has been submitted on brief. The district court case is discussed
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`infra.
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`II. Evidentiary Objections
`Each party has filed a number of objections against certain testimony and
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`evidence introduced by its adversary. We have considered each objection. Ultimately,
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`the Board is capable of weighing the relevance and strength or weakness of the
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`objected-to testimony and evidence in this case, including any inherent limitations,
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`which preclude the need to strike the challenged testimony and evidence if the
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`objection is well-taken. Given the circumstances, we choose not to make specific
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`rulings on each and every objection. We have accorded the testimony and evidence
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`whatever probative value it merits, keeping the parties’ objections in mind, and
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`comment as needed on its probative value elsewhere in the opinion. See Alcatraz
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`Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1755 (TTAB 2013),
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`aff’d mem., 565 Fed. Appx. 900 (Fed. Cir. 2014); Kohler Co. v. Baldwin Hardware
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`Corp., 82 USPQ2d 1100, 1104 (TTAB 2007). See also Krause v. Krause Publ’ns Inc.,
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`76 USPQ2d 1904, 1907 (TTAB 2005) (“Where we have relied on testimony to which
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`respondent objected, it should be apparent to the parties that we have deemed the
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`material both admissible and probative to the extent indicated in the opinion.”).
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`III. The Record
`The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
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`37 C.F.R. § 2.122(b), the file of the involved registration and application. In addition,
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`11 87 TTABVUE.
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`5
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`

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`Opposition No. 91170452 and Cancellation No. 92043316
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`the parties introduced the following items into evidence, either by stipulation or by
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`notice of reliance.
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`Petitioner’s Evidence:
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`1. The deposition testimony of John Parlet, Petitioner’s founder and CEO,
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`with exhibits thereto;
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`2. The deposition testimony of Richard Barsness, Respondent’s founder and
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`CEO, with exhibits thereto;
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`3. The deposition testimony of Cheryl Barsness, the wife of Richard Barsness
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`and co-owner of Respondent, with exhibits thereto;
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`4. Petitioner’s notice of reliance, including, inter alia, status and title copies
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`of Petitioner’s trademark registrations, news articles, customer emails and
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`business
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`records,12 discovery
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`responses,
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`third-party
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`trademark
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`registrations purporting to show the relatedness of the parties’ services,
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`and documents from unrelated litigation involving Respondent; and
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`5. The declaration of Steven E. Klein, Petitioner’s attorney, regarding the
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`California district court case, with exhibits attached thereto, including,
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`inter alia, copies of the parties’ pleadings, orders of the district court, trial
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`transcripts, and Findings of Fact and Conclusions of Law.
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`Respondent’s Evidence:
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`1. The deposition testimony of Larry Abbe, Respondent’s President, with
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`exhibits thereto;
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`12 Exhs. P-171-P-189, stipulated into the record. 15 TTABVUE 9-11.
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`6
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`

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`Opposition No. 91170452 and Cancellation No. 92043316
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`2. The deposition testimony of Richard Barsness, with exhibits thereto;
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`3. Respondent’s notice of reliance, including, inter alia, discovery responses,
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`trademark registrations and other evidence purporting to show third-party
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`use of the term “incredible” in connection with food as well as restaurant
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`and entertainment services; and
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`4. The Declaration of Mary Clapp, Respondent’s attorney, regarding the
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`California district court case, with exhibits attached thereto, including,
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`inter alia, trial exhibits and transcripts.
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`IV. The Parties
`The parties are restaurant companies operating all-you-can-eat pizza buffets
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`within entertainment complexes featuring video games, miniature golf, and bumper
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`cars. John Parlet is the founder and CEO of Petitioner. Richard Barsness is the
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`founder of Respondent. Prior to either parties’ opening of their current pizza and
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`entertainment complexes, Parlet and Barsness had a business relationship and
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`cooperated in other restaurant-related ventures. Following the opening of their pizza
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`and entertainment complexes, however, Parlet’s and Barsness’ relationship soured
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`due to the present trademark dispute.
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`V. The District Court Case
`Before turning to the merits of this proceeding, and because the present record
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`includes evidence, findings, and rulings made in the district court case (see
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`Trademark Rule 2.122(f)), it is necessary to review the course of the district court
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`case which relates to the issues involved herein. As discussed supra, Board
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`proceedings were suspended pending the final outcome of the civil action between
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`7
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`Opposition No. 91170452 and Cancellation No. 92043316
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`Petitioner and Respondent. The district court case involved, in relevant part, a jury
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`trial on trademark infringement, and a bench trial on Respondent’s affirmative
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`defenses of unclean hands and trademark misuse, as well as damages and attorney’s
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`fees.13
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`The jury trial resulted in a verdict in Petitioner’s favor on the claim of
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`infringement with damages awarded in the amount of $112,500.14 However,
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`inasmuch as the parties’ overlapping use of their marks occurred only for a limited
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`period of time in limited geographic regions, the jury was instructed to consider
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`infringement only as to the time period after March 2008 in the states of California,
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`Nevada, Arizona, Oregon, and Washington.15 In addition, Respondent’s use of the
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`mark involved only franchising services because Respondent did not operate
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`restaurants in California, Nevada, Arizona, Oregon, and Washington.16 Thus, the
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`issues before the district court jury, particularly those relating to the parties’ use of
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`their marks, were significantly narrower than those before us.
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`Following the jury’s verdict, a bench trial was held on Respondent’s affirmative
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`defenses of unclean hands and trademark misuse, as well as damages and attorney’s
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`fees, after which the court issued its Findings of Facts and Conclusions of Law. The
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`court found, inter alia, that Petitioner’s first John’s Incredible Pizza Co. restaurant
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`opened in Victorville, California in September 1997, that Petitioner owns service
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`mark registrations for JOHN’S INCREDIBLE PIZZA CO., that Respondent failed to
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`13 Final Pretrial Order, pp. 37-38, 81 TTABVUE 141-42.
`14 Id. at 81 TTABVUE 255-57.
`15 Trial Transcript, pp. 244-45, 81 TTABVUE 244-45.
`16 Id. at 81 TTABVUE 245.
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`8
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`

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`Opposition No. 91170452 and Cancellation No. 92043316
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`prove its affirmative defenses of unclean hands and trademark misuse, and that
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`additional damages and attorney’s fees were not called for.17
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`During the bench trial, Petitioner also sought, under Federal Rule of Civil
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`Procedure 54(c), to have Respondent’s trademark registration cancelled. Rule 54(c)
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`provides that “a final judgment should grant the relief to which each party is entitled,
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`even if the party has not demanded that relief in its pleadings.” The court recognized
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`that the Trademark Act allows district courts to resolve registration disputes,
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`however, the court declined to grant cancellation stating:
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`Here, the jury’s verdict only reflects a likelihood of
`confusion
`in certain states. Furthermore, Plaintiff
`conceded that it had no claim for infringement until 2008,
`while Defendants’ federal registration was issued in 2001.
`The Court therefore finds that Plaintiff has not established
`a valid ground for cancellation of the trademark, and the
`request for trademark cancellation is denied.18
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`Significantly, in a footnote, the court recognized that:
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`Plaintiff did not plead a claim for trademark cancellation
`or request cancellation in its prayer for relief. The Court
`only discusses the request in light of Federal Rule of Civil
`Procedure 54(c), which provides that a Court grant relief to
`which a party is entitled, even if the party has not
`demanded that relief.19
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`Respondent’s position here is that Petitioner may not now seek cancellation of
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`Respondent’s registration because the district court decided the issue of cancellation
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`in Respondent’s favor. In particular, Respondent states that “JIPC specifically
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`17 Findings of Fact and Conclusions of Law, pp. 2, 6, and 8-9, 81 TTABVUE 273, 277, and
`279-280.
`18 Id. at 81 TTABVUE 279. See 15 U.S.C. § 1119.
`19 Findings of Fact and Conclusions of Law, p. 8, 81 TTABVUE 279, n.5.
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`9
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`

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`Opposition No. 91170452 and Cancellation No. 92043316
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`requested the Court rule on the issue of cancellation; the Court denied cancellation;
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`and JIPC never appealed the Court’s ruling. As such, JIPC has no further recourse
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`on its claim for cancellation, whether in court or before this Board.”20
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`Citing Bd. of Trs. of the Univ. of Ala. v. Houndstooth Mafia Enters. LLC, 163 F.
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`Supp. 3d 1150, 1153 (N.D. Ala. 2016), Respondent first argues that “the [district
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`court’s] holding that JIPC is not entitled to cancellation of IPC’s federal registration
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`is dispositive of that issue and binding on the Board.”21 This argument is unavailing.
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`In the Houndstooth Mafia case, the district court specifically ordered the Board to
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`vacate its earlier decision regarding the opposition: “[a]s part of that judgment, and
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`due to the parties’ express settlement terms, the court ordered that the TTAB’s
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`decision ‘is VACATED.’” Houndstooth Mafia, 163 F. Supp. 3d at 1154. Here, the
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`district court has not issued an order to the Board regarding cancellation. Rather, the
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`district court simply found—on a much narrower set of facts—that petitioner did not
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`establish a valid ground for cancellation. Moreover, unlike the district court in the
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`Houndstooth Mafia case, the California district court was not reviewing a decision of
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`the Board and thus it was not “acting as a court of appellate jurisdiction over the
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`TTAB.” Id. at 1156.
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`From the district court’s language, supra, it is clear not only that the district court
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`did not issue an order to the Board but also that cancellation of Respondent’s
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`registration was not an issue tried by the parties. Instead, it was raised in the bench
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`trial only in the context of the scope of possible discretionary relief to be granted to
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`20 Respondent’s Supplemental br., p. 3, 84 TTABVUE 4.
`21 Id. at 84 TTABVUE 12.
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`10
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`Opposition No. 91170452 and Cancellation No. 92043316
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`Petitioner under Rule 54(c). The fact that the court declined to grant particular relief
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`under Rule 54(c) does not elevate its order denying that relief to an order directed to
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`the Board, particularly if that relief was not demanded in the pleadings.
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`Respondent also argues that Petitioner’s claim for cancellation is barred by res
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`judicata. Under the doctrine of res judicata or claim preclusion, “a judgment on the
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`merits in a prior suit bars a second suit involving the same parties or their privies
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`based on the same cause of action.” Jet Inc. v. Sewage Aeration Sys., 55 USPQ2d 1854,
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`1856 (Fed. Cir. 2000) (quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n.5
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`(1979)). Even “[a] default judgment can operate as res judicata in appropriate
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`circumstances.” Id. at 1378 (citing Morris v. Jones, 329 U.S. 545, 550-51 (1947)).
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`However, “[f]or claim preclusion based on a judgment in which the claim was not
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`litigated, there must be: 1) an identity of the parties or their privies, 2) a final
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`judgment on the merits of the prior claim, and 3) the second claim must be based on
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`the same transactional facts as the first and should have been litigated in the prior
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`case.” Sharp Kabushiki Kaisha v. ThinkSharp, Inc., 79 USPQ2d 1376, 1378 (Fed. Cir.
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`2006).
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`When we compare the district court case and this proceeding, there is no debate
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`as to the first two factors: the parties are the same and there was a final judgment
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`on the merits of the case. As in Jet, Inc., however, the critical issue is the third factor,
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`requiring an analysis of the transactional facts involved in the two causes of action.
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`The likelihood of confusion issues presented in this cancellation proceeding differ
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`from the infringement claims presented in the district court case. Indeed, the Federal
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`11
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`Opposition No. 91170452 and Cancellation No. 92043316
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`Circuit has held that the “array of differences in transactional facts conclusively
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`demonstrates that claim preclusion cannot serve to bar a petition for cancellation
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`based upon an earlier infringement proceeding.” Jet Inc., 55 USPQ2d at 1857.
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`Moreover, the facts in the district court infringement case were significantly different
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`from the facts in this proceeding. In the district court case, (1) Respondent’s services
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`offered in California were limited to restaurant franchising services, not, as here, the
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`operation of restaurants; (2) the infringement action was based on Respondent’s
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`franchising services conducted after 2008 and not, as here, the offering of any
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`restaurant services, at any time, including before then; (3) Respondent was not
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`required to plead ownership of its marks in order to defend the district court case,
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`and (4) the infringement claim did not determine the registrability of Respondent’s
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`mark.22 See id. (“[C]ancellation requires the respondent ( i.e. , the party in the position
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`of defendant) to hold a federally registered mark, infringement does not; [and]
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`cancellation requires inquiry into the registrability of the respondent’s mark,
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`infringement does not.”).
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`For the foregoing reasons we find that res judicata does not bar Petitioner’s claim
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`for cancellation of Respondent’s mark because Petitioner’s claim is not based on the
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`same transactional facts as the infringement claim.
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`By contrast, we may and do rely on findings of fact by the district court under the
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`doctrine of collateral estoppel or issue preclusion. The doctrine can bar relitigation of
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`the same issue in a second action. See Mayer/Berkshire Corp. v. Berkshire Fashions
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`22 Findings of Fact and Conclusions of Law, p. 8, 81 TTABVUE 279, n.5.
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`12
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`

`

`Opposition No. 91170452 and Cancellation No. 92043316
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`Inc., 424 F.3d 1229, 76 USPQ2d 1310, 1312 (Fed. Cir. 2005). Issue preclusion is
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`applicable where: (1) there is an identity of an issue in a prior proceeding, (2) the
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`identical issue was actually litigated, (3) the determination of the issue was necessary
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`to the judgment in the prior proceeding, and (4) the party defending against
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`preclusion had a full and fair opportunity to litigate the issue in the prior proceeding.
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`See Jet Inc. v. Sewage Aeration Sys., 55 USPQ2d at 1859.
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`All of these elements are present with regard to the district court’s determination
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`of Petitioner’s first use of its JOHN’S INCREDIBLE PIZZA CO. mark, Petitioner’s
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`ownership of its service mark registrations, the similarity of the parties’ services, and
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`the resolution of Respondent’s affirmative defenses. That is, in order for the district
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`court to address Petitioner’s narrower infringement claims, the court determined
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`each of these issues. Respondent is precluded from re-litigating these issues here.
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`VI. Standing
`Standing is a threshold issue that must be proven by the plaintiff in every inter
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`partes case. Any person who believes that it is or will be damaged by registration of
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`a mark has standing to file a petition for cancellation under Section 14, 15 U.S.C.
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`§ 1064. Our primary reviewing court has enunciated a liberal threshold for
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`determining standing, namely that a plaintiff must demonstrate that it possesses a
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`“real interest” in a proceeding beyond that of a mere intermeddler, and “a reasonable
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`basis for his belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753
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`F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (quotation omitted). A “real
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`interest” is a “direct and personal stake” in the outcome of the proceeding. Ritchie v.
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`Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026 (Fed. Cir. 1999). A claim of likelihood
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`13
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`

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`Opposition No. 91170452 and Cancellation No. 92043316
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`of confusion that “is not wholly without merit,” including prior use of a confusingly
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`similar mark, may be sufficient to establish a reasonable basis for a belief of damage.
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`Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
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`1982).
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`Petitioner has made of record status and title copies of its two relevant
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`registrations for JOHN’S INCREDIBLE PIZZA CO.23 Respondent argues that
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`Petitioner “failed to establish a proper chain of title” for its marks.24 However, as
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`discussed supra, the district court found that Petitioner properly proved ownership
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`of the claimed marks, therefore, Respondent’s arguments against Petitioner’s
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`standing are unavailing.25 Moreover, the district court’s finding of Petitioner’s
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`ownership of the marks comports with the current title listed in the status and title
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`copies of the pleaded registrations. In view of the district court’s decision and the
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`pleaded and proven registrations, we find that Petitioner has established a real
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`interest in the outcome of this proceeding and has standing.
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`VII. Priority
`In view of the pleaded and proven registrations, priority is not an issue in the
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`opposition proceeding. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
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`182 USPQ2d 108, 110 (CCPA 1974). In a cancellation proceeding, such as this one, in
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`which both parties own registrations, Petitioner must, in the first instance, establish
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`prior rights in the same or similar mark. Trademark Rule 2.122(b)(2) provides that
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`23 15 TTABVUE 21-25.
`24 Respondent’s br., p. 24, 53 TTABVUE 25.
`25 Findings of Fact and Conclusions of Law, p. 2, 81 TTABVUE 273.
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`14
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`

`

`Opposition No. 91170452 and Cancellation No. 92043316
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`“[t]he allegation . . . in a registration[] of a date of use is not evidence on behalf of the
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`. . . registrant; a date of use of a mark must be established by competent evidence.”
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`Petitioner’s founder and CEO, John Parlet, has testified that he opened the first
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`JOHN’S INCREDIBLE PIZZA CO. restaurant in Victorville, California in September
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`of 1997 and that it is still operating.26 Petitioner then opened other JOHN’S
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`INCREDIBLE PIZZA CO. restaurants in the California cities of Bakersfield, Fresno,
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`Stockton, and Modesto, among others.27 Petitioner introduced financial statements
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`showing revenues from the Victorville restaurant dating back to 1997, as well as
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`photographs showing the front of the Victorville restaurant in 1997.28 Further, the
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`parties have stipulated to Petitioner’s claimed date of first use of September, 1997.29
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`The district court also made the following finding of fact:
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`The first John’s Incredible Pizza Co. restaurant opened in
`Victorville, California in September 1997. It was owned
`and operated by John’s Incredible Pizza Co., Inc., until
`Parlet formed plaintiff JIPC, which then assumed
`management of the store. Since then, JIPC has
`continuously managed each of the John’s Incredible Pizza
`Co. stores from the date the store opened to the present,
`under agreements with the separate entities that own the
`stores. (Internal citations omitted).30
`The earliest date Respondent may claim to have used its mark is the September
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`21, 1999 filing date of the application that matured into the challenged registration,
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`which is Respondent’s date of constructive use under Section 7(c) of the Trademark
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`26 Parlet test., pp. 10-11, 19 TTABVUE 12-14.
`27 Id.
`28 Parlet test., pp. 15-17, 19 TTABVUE 18-20; Exhs. P-103 and P-104, 19 TTABVUE 140-43.
`29 15 TTABVUE 5.
`30 Findings of Fact and Conclusions of Law, p. 2, 81 TTABVUE 273.
`
`15
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`

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`Opposition No. 91170452 and Cancellation No. 92043316
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`Act, 15 U.S.C. § 1057(c). In October of 1999, Respondent opened its Amarillo, Texas
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`INCREDIBLE PIZZA COMPANY restaurant.31
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`Based on the record, including the findings of the district court, the testimony of
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`John Parlet with related deposition exhibits, the testimony of Richard Barsness, and
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`stipulations of the parties, Petitioner has proven by a preponderance of the evidence
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`its prior use as early as September 1997 of its mark JOHN’S INCREDIBLE PIZZA
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`CO. in connection with restaurant and entertainment services.
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`VIII. Likelihood of Confusion
`Our determination of the issue of likelihood of confusion is based on an analysis
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`of all the probative facts in evidence relevant to the factors set forth in In re E. I. du
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`Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re
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`Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any
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`likelihood of confusion analysis, two key considerations are the similarities between
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`the services and the similarities between the marks. See Federated Foods, Inc. v. Fort
`
`Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental
`
`inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential
`
`characteristics of the goods [or services] and differences in the marks.”). The relevant
`
`du Pont factors in the proceeding now before us are discussed for each of the marks
`
`below.
`
`
`31 Respondent’s br., p. 12, 53 TTABVUE 13; Barsness test., p. 69, 40 TTABVUE 59. Petitioner
`disputes Respondent’s rights in the Amarillo restaurant because Respondent sold the
`restaurant to a business associate around the same time that the restaurant opened.
`Regardless, Respondent’s date of first use is later than Petitioner’s.
`
`16
`
`

`

`Opposition No. 91170452 and Cancellation No. 92043316
`
`A.
`
`Registration No. 3682041
`We begin with Petitioner’s allegation of a likelihood of confusion with the mark in
`
`Respondent’s Registration No. 2500872:
`
`
`for “Restaurant services” in International Class 42.
`
`We focus our analysis on Petitioner’s Registration No. 3025377 because the
`
`identified services are the same as Respondent’s services. If we do not find a
`
`likelihood of confusion with respect to this registered mark and its services, then
`
`there would be no likelihood of confusion with the mark in Petitioner’s other
`
`registration. See In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
`
`The similarity of the services, trade channels and conditions of sale
`We first consider the du Pont factors regarding the similarity or dissimilarity of
`
`the parties’ respective services, their channels of trade and conditions of sale. Both
`
`Respondent’s and Petitioner’s services are identical, namely “restaurant services.”
`
`Where, as here, the parties’ services are identical, we must presume that the
`
`channels of trade and classes of purchasers for those services are the same as well.
`
`See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even
`
`though there was no evidence regarding channels of trade and classes of consumers,
`
`the Board was entitled to rely on this legal presumption in determining likelihood of
`
`confusion).
`
`17
`
`

`

`Opposition No. 91170452 and Cancellation No. 92043316
`
`Respondent admits “there is little dispute that the goods and services and
`
`channels of trade as they pertain to the marks at issue in the Cancellation are
`
`similar.”32 Accordingly, the du Pont factors relating to the similarity of the services,
`
`channels of trade, and classes of purchasers favor a finding of likelihood of confusion.
`
`The number and nature of similar marks in use on similar services
`We next consider the strength of Petitioner’s mark under the sixth du Pont factor.
`
`Du Pont, 177 USPQ at 567. If the evidence establishes that the consuming public is
`
`exposed to third-party uses of similar marks for similar services, it “is relevant to
`
`show that a mark is relatively weak and entitled to only a narrow scope of protection.”
`
`Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d
`
`1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005). Evidence of the extensive registration
`
`and use of a term by others can be “powerful” evidence of weakness. See Jack Wolfskin
`
`Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
`
`F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 982
`
`(2016); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671,
`
`1674 (Fed. Cir. 2015).
`
`Respondent focuses on the elements common to the parties’ marks, namely,
`
`INCREDIBLE PIZZA CO., and correctly notes that PIZZA and COMPANY or CO.
`
`have little or no trademark significance when used in connection with the parties’
`
`services.
`
`
`32 Respondent’s br., p. 30, 53 TTABVUE 31.
`
`18
`
`

`

`Opposition No. 91170452 and Cancellation No. 92043316
`
`Respondent argues that “[w]idespread third party use of INCREDIBLE marks for
`
`restaurant services demonstrates that the word INCREDIBLE – the only word in
`
`common that might hold any trademark value at all – is weak, and that concurrent
`
`use of INCREDIBLE by JIPCM, IPC, and others does not create any likelihood of
`
`confusion.”33 In support, Respondent introduced testimony, photographs, and third-
`
`party business documents, as well as registrations purporting to show third-party use
`
`of INCREDIBLE in connection with food and restaurants.34 Respondent submitted
`
`evidence showing the following third-party uses or registration of INCREDIBLE:
`
`• Registration Nos. 2721015, 2854562, and 2723829 for marks containing
`Incredibly Edible Delites, Inc. for various goods and services related to
`floral and edible arrangements.35
`• A Florida business named Buzzy’s Incredible Edibles, Inc. offering “bakes
`[sic] goods, candies, and cookies and other specialty foods.”36
`• A California bakery named The Incredible Cheesecake Company, Inc.37
`• A California company named The Incredible Egg Restaurant.38
`• A Michigan company doing business under the assumed name of The
`Incredible Basket.39
`• A Michigan restaurant and lounge named INGCREDIBLE.40
`• A Michigan entertainment complex named Craig’s Cruisers with a pizza
`buffet called “Craig’s Incredible Pizza Buffet.”41
`
`
`33 Respondent’s br., p. 37, 53 TTABVUE 38.
`34 We have not considered cancelled Registration Nos. 2941392 and 2980602 for POP’S
`INCREDIBLE GOURMET PIZZA. A cancelled registration is not evidence of anything except
`that it issued. See Action Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d
`1307, 1309 (Fed. Cir. 1989); TBMP § 704.03(b)(1) (June 2017).
`35 26 TTABVUE 277-89.
`36 26 TTABVUE 66-72, 31 TTABVUE 295-97.
`37 26 TTABVUE 74-76, 31 TTABVUE 274-77.
`38 26 TTABVUE 78-79.
`39 Id. at 81-84.
`40 Id. at 265-69.
`41 31 TTABVUE 264.
`
`19
`
`

`

`Opposition No. 91170452 and Cancellation No. 92043316
`
`• A California restaurant named The Incredible Café.42
`• A California restaurant named The Incredible Café Express.43
`• A Georgia retail cookie store named The Incredible Chocolate Chip Cookie
`Company.44
`• An Ohio company named Eric’s Incredible Pizza Company.45
`We do not find Respondent’s evidence of third-party registration o

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