November 30, 2022

Volume XII, Number 334

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The Saddest Hour? Closing Time for Trademark Cancellation Petition

In a precedential decision, the Trademark Trial & Appeal Board (Board) denied a petition to cancel a trademark registration based on priority. The Board explained that the petitioner bears a higher burden of proof to show prior use when it has amended its trademark application during prosecution to allege an earlier use date. JNF LLC v. Harwood Int’l Inc., Cancellation No. 92070634 (TTAB Sept. 21, 2022) (Wellington, Greenbaum, Heasley, ATJ)

On October 6, 2014, Harwood International applied to register the standard character mark HAPPIEST HOUR on the Principal Register for “bar and restaurant services.” The application matured into a registration on July 26, 2016. Almost two years later, on May 1, 2018, JNF applied to register the mark THE HAPPIEST HOUR in standard characters on the Principal Register for “restaurant and bar services.” In its application, JNF claimed to have first used the mark anywhere and in commerce “at least as early as 10/00/2014.” The examining attorney assigned to JNF’s application issued an office action citing Harwood’s HAPPIEST HOUR registration as a bar to registration. JNF then amended its claimed date of first use to September 7, 2014. JNF subsequently filed a petition to cancel Harwood’s registration and further requested suspension of its application pending disposition of the cancellation proceeding. Harwood answered the petition and admitted that its registered mark HAPPIEST HOUR was cited as confusingly similar to JNF’s THE HAPPIEST HOUR application but denied that JNF had established prior rights to the mark.

The Board explained that for priority purposes, Harwood may rely on the filing date of the underlying application that matured into its involved registration. The Board further explained that JNF bears the burden of proving that its mark was “previously used in the United States,” before Harwood’s constructive filing date of October 6, 2014. The Board also noted that while a petitioner must ordinarily prove its priority entitlement by a preponderance of the evidence, in the circumstances of this case, the burden was heavier. Because JNF alleged a first use date of “at least as early as 10/00/2014” when it filed its application to register THE HAPPIEST HOUR, the date presumed for purposes of examination was the last day of the month, October 31, 2014—several weeks after Harwood’s constructive use date of October 6, 2014.

As the Board explained, although JNF subsequently amended its date of earliest use, that amendment came with a cost. The Board explained that where an applicant has stated an earliest use date under oath but then amends the oath and attempts to show an earlier date, the applicant is under a heavier burden of proof: clear and convincing evidence. Citing to Federal Circuit precedent, the Board further explained that the original allegation of first use date may be considered to have been made against interest at the time of filing. The Board found that this rationale applied with even greater force in the current situation because the alleged dates were very close to Harwood’s constructive use date and because JNF only sought to amend its date when confronted with Harwood’s registration bar.

The Board conceded that clear and convincing evidence may consist of declaration testimony, but only if it is sufficiently probative. JNF relied on two testimonial declarations from its CEO, Jon Neidich, and his friend from college, John Fitzgerald. Neidich testified that while the grand opening of THE HAPPIEST HOUR didn’t occur until October 2014, the restaurant and bar had a soft opening on September 7, 2014, and served guests, including Fitzgerald, under THE HAPPIEST HOUR brand. To corroborate these statements, JNF submitted press releases, magazine articles and draft menus from August and September 2014. Both Neidich and Fitzgerald’s deposition testimony and later declarations, however, were “marred by [] gaps” and failed to maintain a consistent story, according to the Board. The Board concluded that “oral testimony given long after the date sought to be proved must be carefully scrutinized.” Harwood argued, and the Board agreed, that Neidich’s testimony was “full of holes and bereft of the indicia that would usually accompany a restaurant that was actually doing business.” The Board also found that JNF’s assertion that it displayed THE HAPPIEST HOUR in external signage “crumbled” during Neidich’s cross examination, finding that the alleged display of the mark during the soft opening was inconsistent, contradictory and indefinite.

The Board also explained that mere advertising without rendering services under the mark (e.g., the alleged soft opening) would not constitute technical trademark use sufficient to support registration of the mark. The Board therefore denied JNF’s petition to cancel.

© 2022 McDermott Will & EmeryNational Law Review, Volume XII, Number 279
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About this Author

Timothy M. Dunker IP Attorney McDermott Will

Timothy M. Dunker focuses his practice on intellectual property matters. He handles potential patent assertions, claim construction matters, as well as petitions for certiorari relating to Fourth Amendment probable cause.

While in law school, Tim served as a staff editor for the AIPLA Quarterly Journal. He was a judicial extern for the Honorable Kara F. Stoll in the US Court of Appeals for the Federal Circuit.

202 7568537
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