FCH Enterprises, Inc.v.Basile Douvris

Trademark Trial and Appeal Board

Oct 27, 2008

No. 92047334 (T.T.A.B. Oct. 27, 2008)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

JK
Mailed: October 27, 2008

Cancellation No. 92047334

FCH ENTERPRISES, INC.

v.

BASILE DOUVRIS

Before Bucher, Kuhlke, and Wellington,
Administrative Trademark Judges

By the Board:
On March 29, 2007, FCH Enterprises, Inc. (“petitioner”) filed
a petition to cancel U.S. Trademark Registration No. 1713531, which
was registered on September 8, 1992 by Basile Douvris and Spiro
Douvris (“respondents” or “respondent”), for the mark ZIPPY'S HOME
OF THE CHEEZY BEEF! and circular design, for “menus” in
International Class 16 and “T-shirts” in International Class 25.1
Petitioner seeks cancellation of the subject
registration on the ground of fraud, basing its fraud claim
on respondent’s non-use use of the mark ZIPPY'S HOME OF THE

1 Section 8 affidavit accepted and Section 15 acknowledged on
November 13, 1997; first renewal February 15, 2002. Assignment
Branch records indicate the March 14, 2002 recordation, at
Reel/Frame 2513/0457, of an assignment of the registration from
Basile Douvris and Spiro Douvris to Spiro Douvris on March 14,
2002.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Cancellation No. 92047334

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CHEEZY BEEF! in interstate commerce on menus at the time he
filed his Section 8 declaration of continuing use or his
Section 8 and 9 renewal. In its answer, respondent denied
the salient allegations of the petition to cancel.
This case now comes up for consideration of (1)
petitioner’s motion (filed March 19, 2008) for summary
judgment under Fed. R. Civ. P. 56 on the ground of fraud, as
well as (2) respondent’s cross-motion (filed April 22, 2008
via Certificate of Mailing) for summary judgment on the same
ground. Both motions are fully briefed.2
In support of its motion for summary judgment,
petitioner argues that respondent committed fraud on the
USPTO when he submitted his declarations of use under
Trademark Act Section 8 and 9 (“declarations of use”).
Specifically, petitioner alleges that respondent’s Section 8
declaration was defective inasmuch as it stated that the
mark “is being used for Interstate Commerce” (emphasis added
in motion), was signed by only one of the two joint
registrants, and did not include a specimen of use in
support of “menus” in International Class 16. Petitioner

2 Petitioner’s motion (filed March 28, 2008) for leave to pay an
additional fee, to cover the International Class 25 goods in
respondent’s Registration No. 1713531, is noted. Notwithstanding
that petitioner filed its motion in contravention to the Board’s
March 21, 2008 order suspending proceedings with respect to any
paper not relevant to the motion for summary judgment, the Board,
in its discretion hereby grants petitioner’s motion. The Office
processed the additional $300 petition to cancel fee on April 1,
2008.
Cancellation No. 92047334

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asserts that, in view thereof, respondent’s declaration of
use did not satisfy the statutory requirements therefor and
was fatally defective. Petitioner argues in its reply brief
that respondent’s use of the mark on menus at the time of
filing his declarations of use did not constitute use in
interstate commerce. Petitioner submitted as exhibits and
relies on copies of two internet articles about petitioner’s
restaurant business, as well as the USPTO application and
registration record for respondent’s subject registration.
In support of its cross-motion for summary judgment,
respondent asserts that he did not knowingly make any
inaccurate or misleading statements in his declarations of
use, that he has continuously used the mark in interstate
commerce in connection with restaurant services, menus and
T-shirts since prior to the filing date of the application
which matured into subject Registration No. 1713531, that he
has not ceased to use his mark on menus, that the Post-
Registration examiners accepted his declarations of use as
fulfilling the statutory requirements therefor, that none of
the alleged deficiencies in the Section 8 declaration
constitute fraud, and that his registration is “over five
years old” and therefore cannot be cancelled. Respondent
submitted as exhibits and relies on its own two affidavits,
and samples of use of its mark in the form of photographs of
Cancellation No. 92047334

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t-shirts, menus, a hat, a cup, outdoor signage, a business
award, a newspaper article, and his business web site.3
Analysis
A party is entitled to summary judgment when it has
demonstrated that there are no genuine issues as to any
material facts, and that it is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(c). The evidence must be
viewed in a light favorable to the nonmoving party, and all
justifiable inferences are to be drawn in the nonmovant’s
favor. Opryland USA Inc. v. The Great American Music Show,
Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
A party seeking summary judgment bears the initial burden
of demonstrating the absence of genuine issue of material
fact, and of informing the Board of the basis for its motion
by identifying those portions of the record which it believes
demonstrates the absence of a genuine issue of material fact.
See Celotex Corp. v. Catrett, 477 U.S. 317, 106 S. Ct. 2548
(1986). When the moving party’s motion is supported by
evidence sufficient, if unopposed, to indicate that there is
no genuine issue of material fact, and that the moving party
is entitled to judgment, the burden shifts to the nonmoving
party to demonstrate the existence of specific genuinely

3 We note that some of these exhibits are illegible, but hasten
to add that the illegible nature of such exhibits is immaterial
to our ruling herein on the motion and cross-motion for summary
judgment.
Cancellation No. 92047334

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disputed facts which must be resolved at trial. The nonmoving
party may not rest on mere allegations of its pleadings and
assertions of counsel, but must designate specific portions of
the record, or produce additional affidavit evidence, showing
the existence of a genuine issue of material fact for trial.
If the nonmoving party does not so respond, summary judgment,
if appropriate, shall be entered in the moving party’s favor.
See Fed. R. Civ. P. 56(e).
Initially, inasmuch as the parties have argued in favor
of and against the viability of petitioner’s fraud claim in
the context of incontestability, and to clarify any
misapprehension on the part of either party, we note that
Trademark Act Section 14(3), which states, in pertinent part
(emphasis added):
[A registration may be subject to a petition to cancel]
(3) At any time if the registered mark becomes the
generic name for the goods or services, or a portion
thereof, for which it is registered, or is functional,
or has been abandoned, or its registration was obtained
fraudulently …

allows for an incontestable registration to be cancelled on
the ground of fraud. Moreover, a registration is subject to
allegations of fraud in the securing and/or maintenance of a
registration. Cf. Maids to Order of Ohio Inc. v. Maid-to-
Order Inc., 78 USPQ2d 1899 (TTAB 2006); Volkswagenwerk
Aktiengesellschaft v. Advance Welding and Mfg. Corp., 193
USPQ 673 (TTAB 1976).
Cancellation No. 92047334

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Turning now to the merits of the motion for summary
judgment and cross-motion for summary judgment on the fraud
claim, we conclude, based on the record before us and for
reasons discussed below, that respondent has met his burden
of setting forth a prima facie showing that there are no
genuine issues of material fact remaining for trial, and
that he is entitled to judgment as a matter of law.
Fraud occurs when an applicant knowingly makes false,
material representations of fact in connection with an
application to register. The obligation to refrain from
knowingly making false, material statements applies with
equal force to renewal applications. See Torres v. Cantine
Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir.
1986). See also Herbaceuticals Inc. v. Xel Herbaceuticals
Inc., 86 USPQ2d 1572 (TTAB 2008). A party asserting a fraud
claim is under a heavy burden of proof because fraud must be
proved by clear and convincing evidence, leaving nothing to
speculation, conjecture, or surmise. The very nature of the
charge of fraud requires that it be proven “to the hilt”
with clear and convincing evidence. Any doubt must be
resolved against the party making the claim. Sinclair Oil
Corp. v. Kendrick, 85 USPQ2d 1032, 1035 (TTAB 2007); Smith
International, Inc. v. Olin Corporation, 209 USPQ 1033, 1043
(TTAB 1981).
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Petitioner’s motion for summary judgment on its fraud
claim rests on its allegations that (1) the Section 8
declaration of use dated September 30, 1997 was defective
because it was signed by Spiro Douvris, one of two owners of
the registration; (2) the declaration of use was defective
because respondent’s November 13, 1997 response to the Post
Registration Section’s October 30, 1997 action requiring
respondent to set forth the type of commerce in which the
mark was being used stated that respondent was using the
mark “for Interstate Commerce;” (3) the declaration of use
was defective because it did not include a specimen for
“menus” in International Class 16; and (4) respondent’s use
on menus “has not been shown to constitute use in interstate
commerce (which Respondent had represented in connection
with his Section 8 Declarations) because he has not
specifically stated or shown that the menus were in use in
interstate commerce, at least as of the filing of the
Section 8 Declarations of Use (in 1997 and 2001).”
Petitioner argues that the affidavit which respondent
submitted in support of his cross motion for summary
judgment is “devoid of any evidence that his menus were sold
or transported in interstate commerce at the time of the
application or his Section 8 Declarations.” Specifically,
petitioner argues that respondent’s use on menus has not
constituted use in interstate commerce, and that respondent
Cancellation No. 92047334

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admitted this when he stated in his affidavit that his menus
are handed out in the restaurants, placed on the trays used
by customers who eat in the restaurants, attached to bags
used for transporting orders, handed out on a door-to-door
basis, and sent to customers via facsimile. Finally,
petitioner asserts that respondent’s website provides “no
indication that ‘menus’ were sold or transported in
interstate commerce… Nor is there any evidence indicating
how one may purchase a ‘menu.’” Based on these arguments,
petitioner concludes that respondent’s representation in his
declaration of use, that the mark was being used in
interstate commerce, was a false statement of material fact.
To the extent that petitioner’s fraud claim is
predicated on an allegation that respondent’s 1997
submission of his Section 8 declaration of use, or 2001
submission of his Sections 8 and 9 declaration of use, did
not meet the requirements therefor, petitioner has failed to
meet its burden of proof. Petitioner’s allegations
essentially request that the Board evaluate or re-evaluate
the merits of these maintenance documents. Petitioner’s
claims in this regard are not well grounded.
The Post Registration examiner accepted each of
respondent’s declarations of use. As the Board has
previously held, an allegation of the sufficiency of what
was submitted in an application is a technical question
Cancellation No. 92047334

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which is within the province of the examining attorney to
determine and cannot form the basis of a proceeding before
the Board. Cf. Century 21 Real Estate Corp. v. Century Life
of America, 10 USPQ2d 2034, 2035 (TTAB 1989) (the issue of
the adequacy of the specimens is solely a matter of ex parte
examination and is not a ground for an opposition). See
also Granny's Submarine Sandwiches v. Granny's Kitchen Inc.,
199 USPQ 564, 567 (TTAB 1978) (the Board will not substitute
its judgment for that of the examiner); Hyde Park Footwear
Co., Inc. v. Hampshire-Designers, Inc., 197 USPQ 639, 642
(TTAB 1977) (it is not the Board’s function to review or
supervise the work of the examiner).4
Furthermore, this case does not involve a declaration
of use in which an allegation of use “in commerce” was
omitted. Respondent’s written and timely response to the
Post-Registration Division’s October 30, 1997 requirement
that respondent state the type of commerce on which he used
his mark did, indeed, comply with the statutory requirement
for such a statement. Accordingly, petitioner’s reliance on

4 Moreover, the purpose of Section 8 affidavits is to remove from
the register automatically marks which are no longer in use.
The significant facts, therefore, are that an affidavit is filed
and that a mark is actually still in use. Given the fact of
continuing use, from which practically all of the user's
substantive trademark rights derive, nothing is to be gained from
and no public purpose is served by cancelling the registration of
a technically good trademark because of a minor technical defect
in an affidavit. It is in the public interest to maintain
registrations of technically good trademarks on the register so
long as they are still in use. See Morehouse Mfg. Co. v. J.
Strickland and Co., 407 F.2d 881, 160 USPQ 715, 720 (CCPA 1969).
Cancellation No. 92047334

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In re Mother Tucker's Food Experience (Canada) Inc., 925
F.2d 1402, 17 USPQ2d 1795 (Fed. Cir. 1991), in arguing that
respondent’s allegation of use “for interstate commerce”
constitutes an incurable defect in a statutory requirement,
is misplaced. Moreover, In re Mother Tuckers, infra, dealt
with whether the Commissioner had discretion to accept a
showing of use in commerce made after the end of the sixth
year, and we are not presented with an issue of untimeliness
here.
To the extent that petitioner’s fraud claim is
predicated on allegations that respondent was not using the
mark on menus in interstate commerce, or that respondent’s
menus bearing the mark were not in use in a manner that
constituted the sale or transport of such menus in
interstate commerce, petitioner has failed to meet its
burden of proof. To the contrary, respondent has been
forthcoming in how it has used its mark and, more
importantly, has demonstrated that its use of the mark in
connection with menus has not changed during the relevant
years. We cannot therefore conclude that respondent
fraudulently misrepresented its use of the mark in order to
acquire or maintain its registration. Specifically, in his
April 17, 2008 affidavit in support of his cross motion for
summary judgment, and June 13, 2008 supplemental affidavit,

Cancellation No. 92047334

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respondent detailed his use of the mark on menus and
specific uses of menus in interstate commerce. In
particular, respondent states, in his April 17, 2008
affidavit, that (1) the mark was first used in interstate
commerce in connection with restaurant services, menus and
T-shirts prior to the 1991 filing date of the application
and “has been continuously used in connection with these
goods and services since then,” (2) the mark is prominently
displayed on menus from which customers place orders, (3) at
least one of respondent’s restaurant locations is near the
borders of Wisconsin, Illinois and Indiana, (4) respondent’s
customers include out-of-state customers, (5) the menus are
handed out in the restaurants and placed on customers’
trays, (6) the menus are attached to bags used for
transporting pick-up and delivery orders, (7) menus are
handed out door-to-door, (8) menus are sent to customers via
facsimile, and (9) respondent’s website promoting its goods
and services features a menu therein bearing the mark.
Exhibit 2 to this affidavit is a photocopy of one of
respondent’s menus, and Exhibit 8 shows screenshots of
respondent’s website which feature a menu bearing the mark.
Furthermore, respondent states, in his June 13, 2008
supplemental affidavit, that (1) he has sold and continues
to sell products and services to out-of-state customers, and
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(2) menus are packaged and shipped together with food that
is shipped to out-of-state customers.
On this record, it is clear that respondent has
continually used his mark on menus in the same manner, the
Office has accepted such use to be in interstate commerce,
and respondent was using his mark in this manner when he
filed his declarations of use. Under these circumstances,
we cannot make a finding that respondent knowingly made a
false, material representation of fact in connection with
the registration.
In view of this record, we find that no genuine issue
of fact exists with respect to the material question of
whether respondent was in fact using his mark on menus in
interstate commerce when he filed his Section 8 declarations
of use in 1997 and in 2001. Moreover, upon consideration of
the evidence respondent presented in his affidavits, we
conclude that respondent had a reasonable and legitimate
basis for stating that he was using the mark in interstate
commerce when he filed his declarations of use, and that the
facts do not support a claim of fraud. Cf. Maids to Order
of Ohio Inc. supra. Accordingly, petitioner cannot prevail
on its fraud claim inasmuch as it cannot establish that
respondent knowingly made a false representation with
respect to use of his mark in interstate commerce.
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We conclude that, inasmuch as respondent has met his
burden of demonstrating that there is no genuine issue with
respect to this issue, and that, therefore, no material fact
remains for trial with regard to this element of
petitioner’s fraud claim, respondent is entitled to judgment
as a matter of law.
In view thereof, petitioner’s motion for summary judgment is
denied, respondent’s cross motion for summary judgment is
granted, and the petition to cancel is dismissed.