HCR Franqueadora Ltda - EPPv.HNT Chicken LLC

Trademark Trial and Appeal Board

Jan 29, 2021

91255212 (T.T.A.B. Jan. 29, 2021)

Mailed: January 29, 2021
Opposition Nos. 91255211 and 91255212

HCR Franqueadora Ltda - EPP

v.

HNT Chicken LLC

Before Kuhlke, Wolfson, and Shaw, Administrative Trademark Judges.

By Wolfson, Administrative Trademark Judge:

HCR Franqueadora Ltda - EPP (“Opposer”) filed Notices of Opposition to HNT
Chicken LLC’s (“Applicant”) applications for the standard character mark HNT for
“Chicken” in International Class 29 and “Restaurant services” in International Class
43, and for the mark depicted below [the HNT and design mark] (“HOT” and
“TENDER” disclaimed) for these same goods and services:1

1 Serial No. 88641784 for the mark HNT, and Serial No. 88641797 for the mark HNT and
design, were both filed on October 3, 2019, alleging Applicant’s bona fide intent to use the
marks in commerce. The description of the design mark reads: “The mark consists of a
stylized silhouette of a chicken inside a circle, above the capital letters ‘HNT’ and the words
‘HOT N' TENDER’ inside a rectangle.” Color is not claimed as a feature of the mark.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB
Opposition Nos. 91255211 and 91255212
2
.
Opposer opposes Applicant’s applications under Section 1 of the Trademark Act,
15 U.S.C. § 1051, alleging that Applicant was not the “rightful owner” of the marks
(collectively, the “HNT marks”) at the time the applications were filed, 1 TTABVUE
9, and that Applicant committed fraud in the execution of the application when it
“falsely swore no other person had the right to use [the HNT marks] in commerce in
connection with confusingly similar goods or services.” Id.2 Opposer also alleges that
Applicant’s marks are “interfering mark[s] with respect to Plaintiff’s mark and
Plaintiff’s attempt to register its mark in the United States, within the meaning of
Article 7 of the Pan American Convention [the General Inter-American Convention
for Trade Mark and Commercial Protection, 46 Stat. 2907].” 1 TTABVUE 10.
Applicant denies the salient allegations in the Notice of Opposition and as
affirmative defenses, Applicant asserts what it has entitled “assignment,
consent/license, ownership, waiver and estoppel, ratification,” 4 TTABVUE 18. By
way of its “affirmative defenses” Applicant contends:
Opposer “agreed to and approved of [Applicant’s] registration,
ownership and use of the Marks in the United States”;

2 Record citations are to TTABVUE, the Trademark Trial and Appeal Board’s publically
available docket history system, entries in Opp. No. 91255211 (the parent case). See Turdin
v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
Opposition Nos. 91255211 and 91255212
3
Opposer “was informed about [Applicant’s] applications at the
time they were filed and agreed and consented to them, never
objected to them, and signed the MOU confirming that the United
States trademark rights belonged to [Applicant]”;
Applicant “relied to its detriment upon [Applicant’s] assignment
and grant of the United States trademark rights to [Applicant] in
entering into and performing the MOU, including opening several
HNT restaurants in the United States”; and
“If and to the extent [Opposer] was the owner of any prior United
States trademark rights, it transferred and assigned them to []
Applicant. Applicant is the owner and senior user of the Marks in
the United States.”
4 TTABVUE 18.
On July 23, 2020, Opposer filed a motion for summary judgment on its pleaded
claims of non-ownership, fraud, and the Pan-American Convention provisions. The
motion is fully briefed.
I. Opposer’s Claim under the Pan-American Convention
Opposer’s claim that Applicant’s marks are “interfering marks” within the
meaning of Article 7 of the Pan-American Convention is not a legally cognizable claim
before the Trademark Trial and Appeal Board, because Brazil never became a
Contracting State to the Convention. Unlike the United States which signed onto and
subsequently ratified the treaty, Brazil signed but never ratified it.3 Accordingly, the
Pan-American Convention never entered into force in Brazil. Therefore, the United

3 Section 37 of the Convention requires that the “instruments of ratification shall be deposited
with the Pan American Union … and the Convention shall enter into effect for the
Contracting States in the order that they deposit their ratifications.”
Opposition Nos. 91255211 and 91255212
4
States has no obligations under the Pan American Convention to nationals or
domiciled persons of Brazil.4
Article 1 sets forth ratification or adherence as a pre-condition to granting the
same rights and remedies which their laws extend to their own nationals or domiciled
persons:
The Contracting States bind themselves to grant to the nationals
of the other Contracting States and to domiciled foreigners who
own a manufacturing or commercial establishment or an
agricultural development in any of the States which have ratified
or adhered to the present Convention the same rights and
remedies which their laws extend to their own nationals or
domiciled persons with respect to trade marks, trade names, and
the repression of unfair competition and false indications of
geographical origin or source.
Opposer’s claim under Article 7 of the Pan-American Convention is dismissed.
II. Opposer’s “Non-Ownership” Claim is a Lack of Bona Fide Intent to Use
Claim
Opposer’s designation of its claim that Applicant was not the “rightful owner” of
the marks is a misnomer. Such claim “lies solely for a use-based application.” Norris
v. PAVE: Promoting Awareness, Victim Empowerment, 2019 USPQ2d 370880, *4
(TTAB 2019). The filer of an intent-to-use application avers, not that it owns the
mark, but that he, she or it is entitled to use the mark in commerce, and has a bona
fide intention to use the mark in commerce on or in connection with the goods/services

4 Appendix B, “Members of International Trademark Agreements,” to the TRADEMARK
MANUAL OF EXAMINING PROCEDURE (Oct. 2018) identifies Colombia, Cuba, Guatemala,
Haiti, Honduras, Nicaragua, Panama, Paraguay, and Peru as Contracting States. Brazil is
not included.
Opposition Nos. 91255211 and 91255212
5
in the application. As Applicant’s application is based on Section 1(b), there is no
statutory basis for Opposer’s asserted non-ownership claim. Id. at *5.
However, “[b]ecause a bona fide intent to use the mark in commerce is a statutory
requirement of a valid intent-to-use trademark application under Section 1(b), the
lack of such intent is a basis on which an opposer may challenge an applicant’s mark.”
M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 114 USPQ2d 1892, 1898 (Fed. Cir.
2015). See also Hole In 1 Drinks, Inc. v. Michael Lajtay , 2020 USPQ2d 10020, *6
(TTAB 2020) (“[T]he Board has previously held that the same operative facts
regarding parties claiming superior rights based on shared circumstances may
support different claims depending on whether they arise in a use-based application,
in which case the appropriate claim is lack of ownership, or in an intent-to-use
application, in which case the appropriate claim is lack of bona fide intent to use.”);
Am. Forests v. Sanders, 54 USPQ2d 1860, 1864 (TTAB 1999) (holding an intent-to-
use application filed by an individual void, where the entity that had a bona fide
intention to use the mark in commerce on the application filing date was a
partnership composed of the individual applicant and her husband), aff’d mem., 232
F.3d 907 (Fed. Cir. 2000).
Opposer recognizes this distinction, see, e.g., Opposer’s brief at 7 TTABVUE 12
(“[W]hen the person designated as the applicant is not the entity with the bona fide
intent to use the mark in commerce at the time the application was filed the
application is void ab initio”), and Applicant has not disputed the characterization of
Opposer’s claim as based on allegations of lack of entitlement to use, rather than own,
Opposition Nos. 91255211 and 91255212
6
the marks. Based on the manner in which this opposition has been tried and argued,
and given that the claim of lack of bona fide intent to use is here grounded on the
same set of facts as would lie for a claim of non-ownership, we have construed
Opposer’s assertion that Applicant is not the rightful owner of the mark as alleging
that Applicant lacked a bona fide intent to use the marks and thus did not have a
right to file the applications. As asserted, the Notice of Opposition sets forth a
properly pleaded ground under Sections 1(b) and 13.
III. Background
Opposer began selling chicken under the mark “Hot n’ Tender” in Brazil in 1995.
Dany Levkovits Declaration, 7 TTABVUE 29. In 2019, Mr. Levkovits, Opposer’s
owner and founder, and Mr. Jignesh Pandya, Applicant’s managing member, met at
a “franchise trade show in Las Vegas.” Notice of Opposition, 1 TTABVUE 4; admitted
at Answer 4 TTABVUE 5. They “engaged in a series of meetings,” id., to discuss “the
terms of a joint venture agreement under which we planned to open HNT stores in
the United States at former Pizza Hut locations.” Levkovits Decl., 7 TTABVUE 30.
In a draft agreement, Opposer asserted its ownership of the HNT marks and that
Applicant would share “an exclusive license” to the marks. Levkovits Decl., id. at 32.
Although a copy of the draft agreement is not in the record, its terms were disputed
by Applicant, and the agreement was not signed. The parties continued their
negotiations, which resulted in the execution of a Memorandum of Understanding
(“MOU”) on October 11, 2019. 12 TTABVUE 18-26.
Opposition Nos. 91255211 and 91255212
7
The parties to the MOU are Applicant and HCR USA, LLC, a “wholly owned
affiliate” of Opposer. 12 TTABVUE 18. Both Levkovits and Pandya signed the MOU.
The parties entered into the MOU in order to set forth their “prospective intention to
form HNT LLC,”5 a limited liability company to be formed under the laws of the State
of Delaware, which would own the marks in the United States. 12 TTABVUE 20.
The MOU recognized Opposer as “the owner of the brand, the ‘HNT Brand’, of
‘quick service’ restaurants and food and recipes in South America and Portugal.” 12
TTABVUE 18. The “HNT Brand” was further defined as:
A brand that means all of the intellectual property associated with
the HNT chicken concept, including trademarks, service marks,
patents, copyrights, recipes, trade secrets, logos, websites
(including www.hntchicken.com) and such other intellectual
property, registered or not in the United States, Brazil, or
elsewhere worldwide.
The MOU provided that Applicant would transfer its rights in the marks to HNT
LLC, id. at 18, and that HNT LLC would be owned 80% by Applicant and 20% by
Opposer. 12 TTABVUE 21. In fact, HNT LLC was never formed and Applicant has
not assigned its rights in the marks.
Under the MOU, Opposer’s affiliate, HCR-USA, LLC was charged with providing
“quality control standards with regard to the HNT Brand.” 12 TTABVUE 21.
Applicant was charged with operational responsibility and brand development. 12
TTABVUE 21. Opposer argues that it provided operational knowhow and quality
control during the “construction and operational start up process.” 7 TTABVUE 33.

5 The MOU section captioned “Definitions” included the following: “HNT LLC means HNT
Management LLC.” Herein, we refer to the entity as HNT LLC.
Opposition Nos. 91255211 and 91255212
8
Applicant does not directly dispute Opposer’s argument, but responds that the MOU
“imposed no quality control requirements on [Applicant] or HNT, LLC and provided
no quality control rights to [Opposer] or HNT, LLC.” 12 TTABVUE 4. However,
Applicant agrees that “as set forth in the MOU, the plan was for the parties to form
an LLC to be the franchisor and licensor, with Applicant HNT-C to have an 80%
ownership and profit interest.” Pradya Decl., 12 TTABVUE 12.
IV. Summary Judgment - Legal Standard
Summary judgment is an appropriate method of disposing of cases in which there
are no genuine disputes as to any material facts and the moving party is entitled to
judgment as a matter of law. Fed. R. Civ. P. 56(a). “In reviewing a motion for
summary judgment, the evidentiary record must be viewed in the light most
favorable to the nonmoving party, and all justifiable inferences must be drawn from
the undisputed facts in favor of the nonmoving party.” Spanishtown Enters., Inc. v.
Transcend Res., Inc., 2020 USPQ2d 11388, *3 (TTAB 2020), see also Lloyd’s Food
Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029-30 (Fed. Cir. 1993); Olde
Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1546 (Fed. Cir.
1992). We may not resolve disputes of material fact; we may only ascertain whether
a genuine dispute regarding a material fact exists. Spanishtown Enters., 2020
USPQ2d 11388 at *3; Lloyd’s Food Prods., 25 USPQ2d at 2029; Olde Tyme Foods, 22
USPQ2d at 1544.
The party moving for summary judgment has the burden of demonstrating that
there is no genuine dispute as to any material fact. The moving party must support
Opposition Nos. 91255211 and 91255212
9
this assertion by citing to particular parts of materials in the record, including
affidavits or declarations, admissions or interrogatory answers; or by showing that
the cited materials do not establish the absence or presence of a genuine dispute, or
that the adverse party cannot produce admissible evidence to support the fact. Fed.
R. Civ. P. 56(c)(1); Celotex Corp. v. Catrett, 477 U.S. 317, 323-4 (1986) (burden may
be met by showing “there is an absence of evidence to support the nonmoving party’s
case.”). If the moving party’s burden is met, the nonmoving party may not rest on
mere allegations, but must designate specific portions of the record or produce
additional evidence showing the existence of a genuine dispute of material fact for
trial. Fed. R. Civ. P. 56(c)(1); Venture Out Props. LLC v. Wynn Resort Holdings LLC,
81 USPQ2d 1887, 1890 (TTAB 2007).
V. Discussion
A. Entitlement to a Statutory Cause of Action6
Entitlement to a statutory cause of action is a threshold issue in every inter partes
case. See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370,
2020 USPQ2d 10837, at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control
Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067 n.4 (2014)). A party in the
position of plaintiff may oppose registration of another’s mark where such opposition

6 Board decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in
nomenclature, our prior decisions and those of the Federal Circuit interpreting Sections 13
and 14 remain applicable. See Spanishtown Enters., Inc. v. Transcend Resources, Inc., 2020
USPQ2d 11388, at *2 (TTAB 2020).
Opposition Nos. 91255211 and 91255212
10
is within the zone of interests protected by the statute, 15 U.S.C. § 1063, and the
plaintiff’s reasonable belief in damage is proximately caused by registration of the
defendant’s mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d
11277, at *6-7 (Fed. Cir. 2020).
To establish its entitlement to a statutory cause of action in this proceeding,
Opposer contends that it filed its own application “in preparation for the U.S.
market.” Notice of Opposition ¶39, 1 TTABVUE 9. The application was identified by
serial number (88805376) only; the mark and services were unstated as were further
details about the filing or prosecution of the application. Notably, there was no claim
that the application was refused registration. In its brief, Opposer states,
“[p]rosecution of [its] application has been suspended pending the outcome of this
consolidated opposition,” and refers to a “Suspension Notice issued May 12, 2020, Ap.
No. 88805376.” 7 TTABVUE 14. However, the Board does not take judicial notice of
registrations or applications residing in the Office. In re MK Diamond Prods., 2020
USPQ2d 10882, at *1 n.5 (TTAB 2020); In re Jonathan Drew, Inc. d/b/a Drew Estate,
97 USPQ2d 1640, 1646 n.11 (TTAB 2011). Opposer did not submit a copy of the
application or any suspension notice and Applicant has not admitted to its validity.
Because neither the application nor proof of its rejection is of record, Opposer’s
pending application cannot serve as a basis for establishing Opposer’s entitlement.
However, it is clear that Opposer’s belief in damage resulting from registration of
Applicant’s marks is reasonable and within the zone of interests protected by Section
13. In its Answers, Applicant admits that Levkovits and Pandya engaged in a series
Opposition Nos. 91255211 and 91255212
11
of meetings, 4 TTABVUE 5; that Opposer sent an architect “to view locations
proposed by Mr. Pandya for conversion to HNT chicken restaurants,” id. at 4-5; and
that at the time Applicant filed its application, it “knew that [Opposer] had used the
[HNT marks] to develop a franchise network in Brazil.” Id. at 9. Applicant further
admits that the parties had negotiated the terms of an MOU and that “under the
MOU three (3) restaurants were opened in the U.S. using the [HNT marks].” Id. at
11.
Based on the above, Opposer has established its entitlement to a statutory cause
of action in this proceeding.
B. Opposer’s Lack of Bona Fide Intent Claim
1. The MOU does not give Applicant any Rights to the Marks
There is no genuine dispute of material fact that Applicant ’s assertion in its
applications of entitlement and purported intent to use the HNT marks based on any
provisions in the MOU cannot be bona fide. By the terms of the MOU, Applicant
admitted that all HNT marks were owned by Opposer. A transfer of interest was to
flow to HNT LLC, see Pandya Decl., 12 TTABVUE 4 (“[T]he MOU … provides that
HNT, LLC will always retain the United States trademark rights to the HNT
marks”), but this stated purpose was frustrated because HNT LLC was never formed.
Regardless, Applicant’s 80% interest in HNT LLC would not have given it exclusive
right to own the subject marks. See Pandya Decl., 12 TTABVUE 6 (admitting that
the MOU gave Applicant only an “80% beneficial ownership” interest).
Opposition Nos. 91255211 and 91255212
12
Applicant’s arguments that Opposer waived and abandoned any rights to the
marks and somehow ratified Applicant’s ownership of the marks because of its
execution of the MOU are specious. The MOU terms provide for ownership of the
marks in the United States to be transferred from Opposer to an (ultimately non-
existent) entity, one that the parties purportedly intended to form but never did. And
presently, the MOU is defunct. “The MOU and the relationship between [Applicant]
and [Opposer] were terminated by [Applicant] before either HNT-USA or HNT
Management [i.e., HNT LLC] was formed[.]” Pandya Decl., 12 TTABVUE 11.
“[Opposer] has never made any attempt to have the MOU or its termination ordered
or adjudicated to be invalid.” Id. at 12.
There is no genuine dispute of material fact that Applicant is not entitled to derive
any benefit from the MOU agreement.7
2. The Parties’ Dealings Refute Applicant’s Assertion of Priority
Even if the terms of the MOU do not define the rights of the parties, there are
nonetheless no genuine disputes of material fact that when Applicant filed its
applications several days before execution of the MOU, it could not legally assert a
bona fide intent to use the marks. Applicant knew of Opposer’s ownership of the
marks in Brazil and engaged in negotiations with Opposer for the rights to open

7 Throughout its brief, Applicant inaccurately refers to the MOU as expressly providing for
Opposer to transfer its United States trademark rights “to HNT-C [Applicant] and HNT,
LLC.” See, e.g., 12 TTABVUE 8. There is nothing in the agreement that provides for the
transfer of any rights from Opposer to Applicant.
Opposition Nos. 91255211 and 91255212
13
“quick service” chicken restaurants using the service model developed by Opposer in
Brazil and based on Opposer’s marks.
As Opposer points out, Applicant “uses HCR’s current signage and distributes
HCR’s chicken products, both of which were developed by HCR.” Exhibits 5 and 6 to
Levkovits’ declaration show “before” and “after” pictures of Pizza Hut locations that
were transformed into HNT restaurants. 7 TTABVUE 39. Applicant does not dispute
that Opposer’s personnel traveled to the U.S. to assist in remodeling such former
Pizza Hut stores. “[A]t Mr. Pandya’s request, Mr. Levkovits agreed to send its
Architect to view locations proposed by Mr. Pandya for conversion to HNT chicken
restaurants for the purpose of determining convertibility and plan designs for the
locations as HNT chicken restaurants.” Notice of Opposition, 1 TTABVUE 5; Answer
admitting statement, 4 TTABVUE 5-6. “Mr. Levkovits’s Architect stayed for ten (10)
days and shared its findings with the relevant parties.” Id.
Although the parties dispute the value of Opposer’s actions in exercising quality
control, Applicant has shown no genuine dispute that Opposer did take steps to
ensure a consistent level of quality was maintained. Opposer submitted evidence
demonstrating it provided certain training material to Applicant. For example,
Opposer provided Applicant with a checklist for the Opening Manager to use to open
the restaurant, 7 TTABVUE 55; examples of a work schedule and uniforms, id. at 56-
7; and copies of job descriptions for six positions, id. at 43-54.8

8 The job descriptions are heavily redacted and there are no corresponding confidential
versions of these documents. Typically, a party that intends to file information under seal
will also submit for the public record a redacted version of the submission. Trademark Rule
Opposition Nos. 91255211 and 91255212
14
Opposer also submitted copies of several articles alluding to Applicant’s
acquisition of rights as Opposer’s franchisee. In “The Intelligencer” article , titled
“HNT Chicken to Replace 4 Closed Pizza Huts in Bucks County,” posted December
30, 2019, Pandya is quoted as saying “he recently acquired worldwide rights to the
franchise started in Brazil in 2014.” 7 TTABVUE 59. The Philadelphia Business
Journal article, “Brazilian fried chicken chain plans 50-plus Philadelphia-area
locations,” also exposes consumers to this purported connection: “Founded in Brazil
by Dany Levkovits in 2014, HNT Chicken operates dozens of locations through the
South American country. Philadelphia-based Pandya Restaurant Growth Brands
recently acquired the concept. … Levkovits will stay on board with the team to aid
the transition.” Id. at 61. At the website LevittownNow.com, an article dated
February 13, 2020 and titled “Brazilian Fried Chicken Chain to take Former Pizza
Hut Locations” includes the statement: “HNT Chicken opened in Rio de Janeiro in
1995 and began opening locations in other parts of Brazil in the following years. An
expansion in America began last year and involved Pandya’s son. HNT stands for ‘hot
n’ tender.’” Id. at 69.
These articles are not admitted for the truth of any statements made therein. They
show that consumers have been exposed to statements making the claim that
Applicant’s restaurants are directly a result of expansion of Opposer’s restaurants

2.126(c), 37 C.F.R. § 2.126(c). Because Opposer did not submit confidential versions of these
documents, we must rely upon the redacted versions, which have lesser probative value given
the redactions. See generally, TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
§ 120.02 (2020).
Opposition Nos. 91255211 and 91255212
15
into the United States. There is a clear connection drawn in the articles between
Opposer’s HNT marks and “HNT” as used by Applicant in its trade name and as its
service mark. Applicant has presented no documentary or testimonial evidence that
would raise a genuine dispute as to the facts stated in the articles.
Finally, although the applications were filed before the MOU was signed, events
leading up to and including execution of the MOU corroborate the lack of genuine
disputes of material fact that Applicant acquiesced in Opposer’s ownership of the
marks that are the subject of Applicant’s current applications.
VI. Summary
Opposer has shown that there are no genuine disputes of material fact as to its
claim that Applicant did not have a bona fide intent to use the marks at the time
Applicant filed its intent-to-use applications, and that Opposer is entitled to
judgment as a matter of law. Applicant cannot claim a right to use the marks under
the MOU because by its terms, Applicant’s alleged rights did not extend to ownership
of the marks and in any event were dependent upon the formation of a non-existent
entity (HNT LLC). Moreover, Applicant cannot claim that its intent was bona fide at
the time it filed the applications regardless of the status of the then-unexecuted
MOU, because the parties’ dealings demonstrate there are no genuine disputes of
material fact that Applicant knew of Opposer’s prior and superior rights to the subject
marks.
Decision: For the reasons explained above, we grant Opposer’s motion for
summary judgment on its claim that Applicant did not have a bona fide intent to use
Opposition Nos. 91255211 and 91255212
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the HNT marks filed under Serial Nos. 88641784 and 88641797. Applicant has not
raised a genuine dispute of material fact as to Opposer’s claims by evidence or by way
of Applicant’s purported affirmative defenses.9
Inasmuch as our decision on this claim is dispositive of the proceeding, we do not
reach Opposer’s motion for summary judgment on its claim of fraud.

9 Inasmuch as Applicant did not file any documentary or testimonial evidence in support of
its affirmative defenses, they are given no further consideration.