American Pie Pizza & Salads, Inc.v.Holtan Holdings, Inc.

Trademark Trial and Appeal Board

Jun 9, 2014

No. 91199243 (T.T.A.B. Jun. 9, 2014)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: June 9, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ American Pie Pizza & Salads, Inc. v. Holtan Holdings, Inc. _____ Opposition No. 91199243 _____ Dan Kwiatkowski, President of American Pie Pizza & Salads, Inc., pro se. Robert A. Gust of Bernick Lifson P.A. for Holtan Holdings, Inc. _____ Before Lykos, Gorowitz and Hightower, Administrative Trademark Judges. Opinion by Gorowitz, Administrative Trademark Judge: Holtan Holdings, Inc., (Applicant or HHI), filed an Application to register the mark AMERIPIE PIZZA for “café-restaurants,” in Class 43.1 The Application was opposed by American Pie Pizza Inc. (Opposer or APPI). The ESTTA2 coversheet indicated the following grounds for opposition: 1 Application Ser. No. 85148199, filed October 8, 2010, based on an intent-to-use the mark, pursuant to Section 1(b) of the Trademark Act. Opposition No. 91199243 2 - immoral and scandalous matter, deceptiveness, and false suggestion of a connection based on Section 2(a) of the Trademark Act; - geographic indication which, if used on or in connection with wine or spirits, identifies a place other than the origin of the goods, based on Section 2(9) of the Uruguay Round Agreements Act; - priority and likelihood of confusion, based on Section 2(d) of the Trademark Act; and - fraud. The Notice of Opposition, however, alleges only a claim of likelihood of confusion based on APPI’s ownership of the following Registrations: • Reg. No. 2253641 for the mark AMERICAN PIE and design (as set forth below) for “restaurant and [cocktail lounges]” in Class 42 ;3 • Reg. No. 2503631 for the mark AMERICAN PIE in standard characters for “restaurant and bar services” in Class 42;4 and 2 ESTTA is an acronym for “Electronic System for Trademark Trials and Appeals.” ESTTA is the system for filing papers electronically with the Board. 3 Issued June 15, 1999, renewed. 4 Issued November 6, 2001; cancelled for failure to file a Section 8 Declaration during the pendency of this action. On May 6, 2014, the Board issued an Order to Show Cause why judgment should not be entered against APPI. In its response filed on May 19, 2014, APPI established that the failure to renew the Registration was the result of inadvertence and mistake. By Order dated May 23, 2014, this Board found good cause, discharged the May 6, 2014 Order, and gave HHI time to inform this Board whether it wanted to go forward with its Counterclaim to cancel the Registration. HHI responded on June 3, 2014 and advised this Board that it did want to go forward with the Counterclaim. Accordingly, the Counterclaim to cancel Reg. No. 2503631 is considered in this decision. Opposition No. 91199243 3 • Reg. No. 3696370 for the mark AMERICAN PIE and design (as set forth below) for “pizza buffet restaurant” in Class 43 .5 None of the other claims listed on the ESTTA cover sheet were pleaded. Although the content of the ESTTA cover sheet is read in conjunction with the Notice of Opposition as an integral component,6 with the exception of oppositions against Section 66(a) applications, the mere mention of a ground therein is insufficient. Cf. Melwani v. Allegiance Corp., 97 USPQ2d 1537 (TTAB 2010). Accordingly, the only ground at issue in this Opposition is likelihood of confusion. HHI filed an Answer and Counterclaims. HHI specifically denied the grounds for opposition.7 HHI asserted the affirmative defense of laches8 and also counterclaimed to cancel each of the pleaded Registrations. APPI filed an Answer denying all salient allegations in the Counterclaims. The Parties. In the Notice of Opposition, Opposer/Counterclaim Defendant identified itself as American Pie Pizza, Inc. (APPI). However, the documents made of record by APPI, including Articles of Incorporation, trademark registrations, and assignment documents, indicate that the actual legal name of APPI is “American Pie Pizza & 5 Issued October 13, 2009 6 PPG Industries Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1928 (TTAB 2005). 7 The Notice of Opposition filed by APPI did not contain any numbered paragraphs. Instead, APPI asserted, that “the mark AmeriPie # 85148199 is:” and then listed all of the du Pont factors. 8 Since the laches defense was not argued in HHI’s brief, it is deemed waived. Opposition No. 91199243 4 Salads, Inc.” There is no evidence that there is another Michigan corporation with the name American Pie Pizza, Inc. and the misidentification appears to be a mistake. Since the entity named is not a different legal entity, we will permit the correction of APPI’s legal name. Cf. Custom Computer Services Inc. v. Paychex Properties Inc., 337 F.3d 1334, 67 USPQ2d 1638 (Fed. Cir. 2003) (The Court determined that the misidentification of the entity seeking a request for extension of time to file an opposition as Custom Computer Services, Inc. constituted a mistake as to the form of the correct entity and not an attempt to substitute one entity in place of a different existing legal entity; and filing of the opposition in the name of The Payroll People, Inc. was timely and acceptable.). As discussed above, the Applicant/Counterclaimant is Holtan Holdings, Inc., which misidentified itself as “Holding Holdings, Inc.” in its Application. This misidentification also appears to be a mistake since all of the documents of record, including a Minnesota court order, refer to HHI as Holtan Holdings, Inc. The USPTO records have been updated to correct the misidentification of HHI’s name.9 The Record. By rule, the record includes the file of the opposed Application, the files of the Registrations at issue in the Counterclaims, and the pleadings. Trademark Rule 2.122(b). APPI did not submit any other evidence during its testimony period in the case-in chief; however, APPI submitted the following documents by Notice of 9 The parties’ names are correct in the case caption of this Decision. Opposition No. 91199243 5 Reliance during its rebuttal testimony period, which coincided with its testimony period as Defendant in the Counterclaims: • Articles of Incorporation of American Pie Pizza & Salads, Inc.; • Assignment documents and documents related to assignment to APPI of pleaded Reg. Nos. 2253641, and 2503631;10 • TESS records of third-party applications for the mark AMERICAN PIE and TSDR records reflecting the abandonment of such applications; • Documents regarding an unrelated restaurant in Atlanta called American Pie, including a menu, gift certificate, coupon, and photographs; • USPTO records; • Email communications; • Photographs of an unrelated restaurant called American Pie Pizza Company; • HHI’s answers to APPI’s discovery; and • Webpages regarding Domino’s Pizza and TGI Friday’s. (APPI’s NOR). Pursuant to the May 24, 2013 Board Order, the transcript of the testimony of Mary Wansley, CEO of Unihost, from an unrelated bankruptcy proceeding, Hospitality Innovations LLC v. Corey Owen Balzer, Case No. 6:10-bk-15814-ksj Chapter 7, United States Bankruptcy Court for the Middle District of Florida, is of record. (Wansley Test.) 10 As discussed below, APPI obtained these Registrations by assignment from Unihost. Opposition No. 91199243 6 HHI submitted the following evidence by Notice of Reliance during its testimony period: • Articles of Incorporation for American Pie Pizza, a Minnesota corporation and assumed name filings by HHI and its predecessor, Danny Clarkson; • File history of HHI’s abandoned application for the mark AMERICAN PIE & design; • Internet Archive copies of webpages from Unihost’s website; • APPI’s responses to HHI’s discovery requests; • Webpages from APPI’s website; and • Discovery deposition of Dan Kwiatkowski, President of APPI (Kwiatkowski Dep.). (HHI’s NOR). HHI also submitted the following testimony depositions: • Todd Holtan, officer of HHI (Holtan Test.); • Corey Balzer, owner of a Florida restaurant (Balzer Test.); and • Daniel Zeh, technology expert who generated websites from Internet archives (Zeh Test.). Procedural Issue. HHI has requested that the Opposition be dismissed because APPI did not offer evidence during its testimony period. HHI’s request is denied. While HHI is correct in its assertion that APPI did not offer any evidence during its testimony period, the pleaded Registrations are of record by virtue of HHI’s filing of Counterclaims to cancel said Registrations. We have noted that Opposition No. 91199243 7 [i]n the typical case, a plaintiff's registrations are not considered part of the record by virtue of Trademark Rule 2.122(b)(1). That provision makes of record applications or registrations which are subject to the opposition or cancellation, i.e., those belonging to the defendant. But in this case, each party is in the position of both plaintiff and defendant. Accordingly, each application or registration opposed or sought to be cancelled is of record pursuant to Trademark Rule 2.122(b)(1). Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1137 n.8 (TTAB 2013). Therefore, the Registrations upon which APPI bases its rights constitute sufficient evidence to maintain the Opposition. Findings of Fact. 1. Opposer/Counterclaim Defendant, American Pie Pizza and Salads, Inc. is a Michigan corporation. (APPI’s NOR, Exhibit 1, 26 TTABVUE at 6). 2. Applicant/Counterclaimant, Holtan Holdings Inc. is a Minnesota Corporation, doing business as American Pie Pizza. (HHI’s NOR, Exhibit 3, 22 TTABVUE at 9). 3. APPI filed Application Ser. No. 77243899 for the mark for a pizza buffet restaurant on August 1, 2007, based on intent-to-use. (Registration File for Reg. No. 3696370). 4. Registration of Ser. No. 77243899 was refused on the ground of likelihood of confusion with the following registrations owned by Unihost, Inc.: Reg. Nos. 2253641 for the mark for “restaurant and bar services,” Reg. No. 2503631 for the mark AMERICAN PIE in standard characters for “restaurant and bar services,” Opposition No. 91199243 8 and Reg. No. 1517602 for the mark for “restaurant and bar services.” (Unihost’s Registrations), (Registration File for Reg. No. 3696370 - Office Action dated November 7, 2007). 5. To overcome the refusal based on Unihost’s Registrations, APPI filed a response with which it submitted an article about the American Pie restaurant, which was the subject of the Registrations. The article, which was entitled Bye bye American Pie by Katie Fallon, was dated November 30, 2007 and appeared in the Sandy Springs Report, states: “American Pie, the archetypal restaurant and bar that served as a prime weekend party spot in Sandy Hills for 21 years closed on Nov. 30.” Richard Tyre, the owner of American Pie, was interviewed for the article, which stated “though his American Pie venture was an overall success, Tyre he [sic] does not plan to open another restaurant or recreate the American Pie atmosphere elsewhere. ‘No, I’m finished,’ he said. ‘I’m primarily a hotel developer and that’s the main source of income. I’m just going to go out and build some additional hotels.’” (Katie Fallon, Bye bye American Pie, Sandy Springs Report November 30, 2007 - Registration File for Reg. No. 3696370 -Response April 1, 2008). 6. As of January 2008, Unihost did not have any open bars or restaurants using the name “American Pie.” (Wansley Test. - Chapter 7 Bankruptcy Proceeding, Case No. 6:10-bk_18514-KSJ, United States Bankruptcy Court, Middle District of Florida, Orlando Division). 7. On July 1, 2008, Unihost assigned all of its right, title, interest, and goodwill in the Unihost Registrations for the marks AMERICAN PIE & star design, AMERICAN PIE in standard characters, and AMERICAN PIE FOR NON- MEMBERS ONLY (in stylized form) to APPI for $20,000. (APPI’s NOR, Exhibits 2 - 3, 26 TTABVUE at 7-17). 8. The refusal was withdrawn and Ser. No. 77243899 was published for opposition on December 30, 2008. (Registration File for Reg. No. 3696370 - Notice of Publication mailed December 10, 2008). Opposition No. 91199243 9 9. In the Statement of Use filed on July 17, 2009, APPI asserted November 1, 2006 as its date of first use anywhere and date of first use in commerce. (Registration File for Reg. No. 3696370 - Statement of Use filed July 17, 2009). 10. Reg. No. 3696370 issued on October 13, 2009 (Registration File for Reg. No. 3696370). 11. In 2005, Todd Holtan, officer of HHI invested in a business operating under the name American Pie Pizza, which was located in Minnesota and was owned by Danny Clarkson. The investment was in the form of a personal loan. (Holtan Test. 3:25 - 4:10 and 6:16 -7:9, 24 TTABVUE at 6-9). 12. Todd Holtan, his wife Jody Holtan, and Holtan Holdings sued Danny Clarkson for “failure to make payments.” (Holtan Test. 8:3-11, 24 TTABVUE at 10.). 13. On August 25, 2008, the Hennipen County District Court issued Findings of Fact, Conclusions of Law, Order for Judgment, and Judgment in Holtan’s case against Clarkson, captioned Holtan v. Clarkson, et.al. 27-CV-0815608, Minnesota District Court, Hennipen County, Fourth Judicial District. (Holtan Test., 8:15 - 9:25 and Exhibit 5 thereto, 24 TTABVUE at 10-11 and 59-66). 14. In or around 2003, Clarkson began operating a pizza take-out and delivery restaurant in Richfield, Minnesota called “American Pie.” Effective as of the end of 2004, he incorporated the business as “American Pie Pizza Corporation.” (Holtan Test., Exhibit 5 -Findings of Fact, par. 8, 24 TTABVUE at 60). 15. As of May 28, 2008, Todd Holtan, Jody Holtan, and Holtan Holdings became the rightful owners of all of American Pie’s tangible and intangible assets, but not its liabilities. (Holtan Test., Exhibit 5 - Order for Judgment, par. 5, 24 TTABVUE at 67). 16. Subsequent to the court order, Todd Holtan, Jody Holtan and/or HHI have been operating the business of American Pie in Minnesota. (Holtan Test., 10:1-5, 24 TTABVUE at 12.). Opposition No. 91199243 10 Standing. With respect to the case-in chief, since APPI’s pleaded Registrations are of record, APPI has established that it has a real interest in this proceeding and a reasonable basis for believing that it would suffer damage if the mark AMERIPIE PIZZA is registered, and thus APPI has established its standing. See Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). With respect to the Counterclaims, HHI has standing based on APPI's assertion of its Registrations against HHI in the Opposition. See Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458 (TTAB 2014) and Ohio State University v. Ohio University, 51 USPQ2d 1289, 1293 (TTAB 1999) (“[A]pplicant's standing to assert the counterclaim arises from applicant's position as a defendant in the opposition and cancellation initiated by opposer.”). Counterclaims. We first address HHI’s Counterclaims to cancel APPI’s pleaded Registrations. Cancellation of Reg. Nos. 2253641 and 2503631. HHI asserts that these Registrations should be cancelled because: the marks were abandoned by the prior owner, Unihost, Inc.; the assignment from Unihost to APPI was an assignment in gross; and the current use is functional. Opposition No. 91199243 11 • Unihost abandoned the marks and AMERICAN PIE. “A mark shall be deemed ‘abandoned’ … (1) when its use has been discontinued with intent not to resume use. Intent not to resume may be inferred from circumstances.” Section 45 of the Trademark Act, 15 U.S.C. § 1127. “A public announcement of intent to discontinue the sale of a product may be a circumstance from which an intent to resume may be inferred.” Hiland Potato Chip Co. v. Culbro Snack Foods, Inc., 585 F. Supp. 17, 221 USPQ 142, 146 (S.D. Iowa 1982), aff’d on point, 720 F.2d 981, 222 USPQ 790 (8th Cir. 1983). An article dated November 30, 2007, which appeared in the Sandy Springs Report, publicly announced both Unihost’s closure of its only AMERICAN PIE restaurant and bar, and its intent not to open another restaurant or recreate the “American Pie atmosphere elsewhere.” Katie Fallon, Bye bye American Pie, SANDY SPRINGS REPORT, November 30, 2007 - Registration File for Reg. No. 3696370 - Response April 1, 2008). Mary Wansley, CEO of Unihost, confirmed the closure when she testified in a bankruptcy proceeding that as of January 2008, “Unihost did not have any open bars or restaurants” using the name “American Pie.” (Wansley Test.)11 11 Hospitality Innovations LLC v. Corey Owen Balzer, Case No. 6:10-bk-15814-ksj Chapter 7, in the United States Bankruptcy Court for the Middle District of Florida, 22 TTABVUE. Opposition No. 91199243 12 Based on the record, we find that Unihost abandoned the marks at issue in Reg. Nos. 2253641 and 2503631 by January 2008. • The assignment of Reg. Nos. 2253641 and 2503631 was an assignment in gross. An abandoned mark cannot be assigned. Auburn Farms Inc. v McKee Foods Corp., 51 USPQ2d 1439, 1444 (TTAB 1999) (“Campbell’s abandonment of the mark JAMMERS a number of years prior to the assignment resulted in an invalid assignment (that is, an assignment in gross) since an abandoned trademark is not capable of assignment.”) (quoting Money Store v. Harriscorp Finance, Inc., 689 F.2d 666, 216 USPQ 11, 19 (7th Cir. 1989)); and Parfums Nautee Ltd. v. American International Industries, 22 USPQ2d 1306, 1309 (TTAB 1992). On July 1, 2008, Unihost assigned all of its right, title, interest, and goodwill in the marks AMERICAN PIE & star design and AMERICAN PIE in standard characters, and the Registrations thereof (Reg. Nos. 2503631 and 225364112) to APPI. (APPI’s NOR, Exhibits 2 - 3, 26 TTABVUE at 7-17). Since the marks AMERICAN PIE & star design and AMERICAN PIE in standard character were abandoned prior to their assignment on July 1, 2008, the assignment is considered an assignment in gross and thus, is invalid. 12 Unihost also assigned its rights in Reg. No. 1517602 for the mark AMERICAN PIE FOR NON-MEMBERS ONLY (in stylized form). The registration was cancelled and thus was not asserted in the Opposition. Mr. Kwiatowski testified that he acquired the registration from Unihost, but that he “let it go.” Kwiatowksi Dep., 102:15-23; 22 TTABVUE at 219. Opposition No. 91199243 13 • Conclusion. Accordingly, the Counterclaim for cancellation of Reg. Nos. 2503631 and 2253641 is granted.13 Cancellation of Reg. No. 3696370. HHI asserts that this Registration should be cancelled because: it was procured pursuant to an assignment in gross; in the context of a pizza restaurant located in the United States, “American Pie” is merely descriptive; “American” is merely a designation of origin and adding “Pie” does not make it sufficiently distinct in the context of a pizza restaurant; and it conflicts with a mark already in use at the time it was adopted. • Procurement of the Cited Registrations does not invalidate Reg. No. 3696370. The Unihost Registrations were cited as bars to registration of APPI’s application, Ser. No. 77243899.14 To overcome the refusal, APPI’s President testified that “I purchased the name that stood in my way.” Kwiatkowski Dep., 38:4.15 As a result of the transfer, the refusal on the basis of the cited Unihost Registrations was withdrawn.16 As asserted by HHI and established by record evidence discussed supra, the assignment of the Unihost Registrations was invalid because the marks had been 13 In light of our finding, it is not necessary for us to reach a decision on HHI’s Counterclaim that APPI’s “current use is functional.” 14 Registration File for Reg. No. 3696370 - Office Action dated November 7, 2007. 15 HHI’s NOR, 22 TTABVUE at 38. 16 Registration File for Reg. No. 3696370 -Notice of Publication mailed December 10, 2008. Opposition No. 91199243 14 abandoned by Unihost prior to the transfer. HHI argues that “an invalid assignment of a trademark results in the trademark rights reverting to the previous registrant.”17 Since Unihost had abandoned the use of the marks, there were no rights to revert to it. Thus, while there were no trademark rights transferred to APPI, the assignment simply stopped the Unihost Registrations from blocking APPI’s application. Contrary to HHI’s assertion, the transfer did not invalidate APPI’s Registration, which resulted from an application APPI filed on its own behalf and did not procure by any assignment, much less an assignment in gross. • The mark in Reg. No. 3696370 conflicts with a mark already in use at the time it was adopted. As its final Counterclaim, HHI asserts: “the Michigan trademark [Reg. No. 3696370] should be cancelled because it conflicts with a mark already in use at the time it was adopted.” It is not clear what claim HHI is asserting. For example, the claim can be read as an assertion of likelihood of confusion between the mark in Reg. No. 3696370 and HHI’s mark or it can be read as an assertion of likelihood of confusion between the mark in Reg. No. 3696370 and a third party’s mark. A pleading should include enough detail to give the defendant fair notice of the basis for each claim. The elements of each claim should be stated simply, concisely, and directly, and taken together “state a claim to relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 554, 570 (2007)); Fed. R. Civ. P. 8(a). 17 HHI’s Brief, p. 14, 33 TTABVUE at 18. Opposition No. 91199243 15 On its face, the pleading does not include enough detail to give APPI fair notice of the basis for such claim and is deemed an unpleaded issue. As such, we must determine whether the likelihood of confusion issue was tried by implied consent. Citing the Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 507.03(b), this Board in Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1924 (TTAB 2011) found that: Implied consent to the trial of an unpleaded issue can be found only where the nonoffering party (1) raised no objection to the introduction of evidence on the issue, and (2) was fairly apprised that the evidence was being offered in support of the issue. The evidence offered by HHI includes an August 25, 2008 order of the Hennipen County District Court in which the court found both that HHI’s American Pie pizza take-out and delivery business was started by Danny Clarkson in 200318 and that HHI and its principals, Todd Holtan and Jody Holtan, became the rightful owner of all of American Pie’s tangible and intangible assets by May 28, 2008.19 APPI did not object to the evidence or the claim. Moreover, APPI addressed the issue. Accordingly, we find that the issue was tried by implied consent and we deem the pleadings amended to conform to the trial evidence pursuant to Fed. R. Civ. P. 15(b). There is no dispute and we find that the marks at issue are very similar (AMERICAN PIE with a pizza design and AMERICAN PIE PIZZA and design) and the services are closely related, if not legally identical (“pizza buffet restaurant” and “carry-out restaurants and restaurants featuring home delivery”), 18 Holtan Test., Exhibit 5 -Findings of Fact, par. 8, 24 TTABVUE at 60. 19 Holtan Test., Exhibit 5 - Order for Judgment, par. 5, TTABVUE at 67. Opposition No. 91199243 16 there is a likelihood of confusion and the only remaining issue is a determination of which party has priority. In its brief, APPI argues that “Applicant does not have a better claim to the ‘American Pie’ trademark.”20 APPI bases this argument on its assertion that it can rely on Unihost’s first use of the mark AMERICAN PIE and star design in 1999,21 which predates the 2005 date of first use asserted in what APPI claims is HHI’s abandoned application (Ser. No. 78796788).22 As established, supra, APPI cannot claim rights based on Unihost’s use of its marks since Unihost abandoned the marks prior to the transfer to APPI, and thus no rights were transferred to APPI. The only rights APPI can claim are based on its constructive use date, i.e. the filing date of the underlying application (Ser. No. 77243899), which was August 1, 200723 or the actual date of first use, which APPI alleged was November 1, 2006.24 Thus, if proven, the earliest possible date upon which APPI can rely on to establish priority is November 1, 2006. As discussed, supra, APPI argues that HHI’s rights date back to 2005, the year of first use set forth in what APPI claims is HHI’s 20 APPI’s Brief in Response to Counterclaims, p. 15, 39 TTABVUE at16. 21 Id., at 16. 22 Application Ser. No. 78796788, was filed on January 23, 2006 by American Pie Pizza Corporation, a Wisconsin corporation. The application was based on Section 1(a) of the Trademark Act and alleged May 31, 2005 as the date of first use anywhere and in commerce. The application was abandoned on February 13, 2007. (APPI’s NOR, 26 TTABVUE at 44). American Pie Pizza Corporation was the corporation formed by HHI’s predecessor, Danny Clarkson on December 30, 2004. (HHI’s NOR, 22 TTABVUE at 7). As of May 28, 2008, Todd Holtan, Jody Holtan, and Holtan Holdings became the rightful owners of all of American Pie’s tangible and intangible assets. (Holtan Test., Exhibit 5 - Order for Judgment, par. 5, 24 TTABVUE at 67). 23 Registration File for Reg. No. 3696370. 24 Registration File for Reg. No. 3696370 -Statement of Use filed July 17, 2009. Opposition No. 91199243 17 abandoned application Ser. No. 78796788.25 Therefore, based on APPI’s own argument, HHI has established priority.26 Accordingly HHI’s Counterclaim for cancellation of Reg. No. 3696370 is granted.27 Opposition. As discussed, supra, APPI did not proffer any evidence during its testimony period. APPI’s motion to re-open testimony was denied.28 The only evidence of record supporting the Opposition was the Unihost Registrations, which were the subject of the Counterclaims, pursuant to which said Registrations were cancelled. Accordingly, since the burden of proving likelihood of confusion is on APPI and there is no evidence supporting APPI’s claim, the Opposition is dismissed. Decision: The Opposition to Application Ser. No. 85148199 is dismissed. The Counterclaims to cancel Reg. Nos. 2253641 and 2503631, and 3696370 are granted. The Registrations will be cancelled in due course. 25 APPI’s NOR, 26 TTABVUE at 44. 26 The 2005 date of use is two years after the date of first use that the Hennipen County District Court attributed to HHI through its predecessor. See n.17 supra. 27 In light of our finding, it is not necessary for us to reach a decision on HHI’s Counterclaims that “in the context of a pizza restaurant located in the United States, “American Pie” is merely descriptive”; and “American is merely a designation of origin and adding “Pie” does not make it sufficiently distinct in the context of a pizza restaurant.” 28 Board Order dated March 3, 2014.