Impact Restaurants L.L.C.v.Sizzling Platter

Trademark Trial and Appeal Board

Nov 6, 2003

No. 92041064 (T.T.A.B. Nov. 6, 2003)

Greenbaum
Date: November 6, 2003
Cancellation No. 92041064
Impact Restaurants L.L.C.
v.
Sizzling Platter, Inc.
Before Simms, Bottorff and Holtzman, Administrative
Trademark Judges.
By the Board.
Impact Restaurants L.L.C. has filed a petition to
cancel Registration No. 2101637 for HOPPERS and Registration
No. 2143520 for the mark HOPPERS GRILL & BREWING COMPANY for
use in connection with restaurant and bar services.1 As
grounds for cancellation, petitioner alleges that
respondent’s marks, as used in connection with respondent’s
services, so resemble petitioner’s applied-for marks,
BARLEYHOPPERS and BARLEY HOPPERS for restaurant and lounge
1 Registration No. 2101637 issued on September 30, 1997, claiming
October 14, 1996 as the date of first use anywhere, and November
3, 1996 as the date of first use in commerce. Registration No.
2143520 issued March 10, 1998, claiming September 15, 1996 as the
date of first use anywhere, and December 15, 1996 as the date of
first use in commerce. Section 8 affidavits have been accepted
for both registrations.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
THIS OPINION IS NOT
CITABLE
AS PRECEDENT OF
THE TTAB
Cancellation No. 92041064
2
services, as to be likely to cause confusion or mistake, or
to deceive.2
With regard to the issue of priority, petitioner
alleges that: petitioner first used the mark BARLEY HOPPERS
for restaurant and bar services at least as early as March
31, 2001; a third party, ADCOPE L.L.C., and its predecessor
in interest, ADCOPE partnership, have continuously used the
mark M.J. Barleyhopper’s for brew pubs and sports bars since
at least February 12, 1991; ADCOPE L.L.C. owns Idaho State
Registration 14541, registered August 4, 19943; and that
petitioner and ADCOPE L.L.C. entered into a “Territorial
Trademark Assignment Agreement” (“Territorial Assignment”)
on October 13, 2000 through which petitioner acquired:
all of the right, title and interest in the mark M.J.
BARLEYHOPPER’S and the mark BARLEYHOPPER’S and all of
the goodwill of the business symbolized by the marks
for the territory which is outside of a circle with a
radius of two hundred (200) miles having at its center,
ADCOPE’s current place of business at 621 21st Street,
Lewiston, Idaho.4
Petitioner argues that its acquired rights and goodwill in
the marks M.J. BARLEYHOPPER’s and BARLEYHOPPER’S predate
2 Application Serial No. 76172675, filed October 13, 2000, and
Application Serial No. 76172675, filed November 30, 2000,
respectively.
3 Petitioner attached as Exhibit C to the petition to cancel a
copy of Idaho State Registration 14541, issued to ADCOPE
partnership on August 4, 1994 for the mark M.J. BARLEYHOPPERS
BREWERY & SPORTS PUB in stylized form, for use in connection with
brew pub and sports bar services, claiming February 12, 1991 as
the date of first use in Idaho.
4 Petitioner attached as Exhibit A to the petition to cancel a
copy of the assignment document.
Cancellation No. 92041064
3
respondent’s first use of its marks HOPPERS and/or HOPPERS
GRILL & BREWING COMPANY, and that BARLEYHOPPERS, BARLEY
HOPPERS and M.J. BARLEYHOPPER’S are legal equivalents.5
Respondent denied the salient allegations in its
answer, and asserted the following “affirmative defenses”:
“assignment in gross and phantom transaction”; “petitioner
cannot assert the retained ownership rights of a third
party”; “petitioner lacks standing and the alleged assignor
is an indispensable party”; “trademark misuse, sham
transaction and bad faith adoption”; “break in continuity of
use”; “waiver, laches, estoppel, acquiescence”; “under
principles of the common law, the Lewiston, Idaho goodwill
is localized and petitioner purchased through the assignment
no goodwill”; “petitioner has no right to a non-concurrent
registration because petitioner cannot make the exclusive
use oath and the alleged assignor’s quit claim assignment
claims no ownership of BARLEYHOPPERS”; “there is no
likelihood of confusion”; and “petitioner can not tack to
Idaho use, petitioner lacks priority and petitioner’s use
and infant goodwill is confined to Florida”.
5 Petitioner also alleges that it filed a separate concurrent use
application for the mark BARLEY HOPPERS for restaurant and lounge
services, but provided no additional information about the
concurrent use application.
Cancellation No. 92041064
4
This case now comes up on respondent’s motion for
partial summary judgment on the issue of priority.
Petitioner filed an opposition to the motion, and respondent
filed a reply thereto.6 Additionally, respondent filed a
motion to strike portions of the declaration that petitioner
submitted in support of its response to the summary judgment
motion, and to strike related portions of said response.
Before we turn to the merits of the summary judgment
motion, we address several issues.
Notice of Insufficient Fees
As an initial procedural point, we note that petitioner
seeks to cancel two registrations, but has only submitted a
fee sufficient to file a petition to cancel one
registration. The statutory filing fee is $300 per class
per registration against which the petition to cancel is
filed. See Trademark Rule 2.112(b) and TBMP §§305 and
308.5.
Pursuant to petitioner’s previously submitted written
authorization, petitioner’s Deposit Account 06-2120 will be
charged an additional $300.00 to cover the requisite
additional filing fee.
6 The stipulation (filed April 28, 2003) to extend petitioner’s
time to respond to the summary judgment motion is granted.
Cancellation No. 92041064
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Overlength Briefs
Next, we note that petitioner’s responses to
respondent’s summary judgment motion and motion to strike
are 39 and 37 pages long, respectively, not including the
certificates of service. Trademark Rule 2.127(a) provides:
“The brief in support of the motion and the brief in
response to the motion shall not exceed 25 pages in length,”
and “[e]xhibits submitted in support of or in opposition to
the motion shall not be deemed to be part of the brief for
purposes of determining the length of the brief.”
Accordingly, petitioner’s responses to the pending motions
are stricken from the record and will be given no further
consideration. See Ron Cauldwell Jewelry, Inc. v.
Clothestime Clothes, Inc. 63 USPQ2d 2009 (TTAB 2002)(reply
brief was untimely and exceeded page limit) and Estate of
Shakur v. Thug Life Clothing Co., 57 USPQ2d 1095, 1096 (TTAB
2000)(filing of two briefs in an attempt to circumvent page
limitation improper).
In view thereof, we will not consider petitioner’s
responses to the pending motions or respondent’s reply brief
regarding the summary judgment motion. See Trademark Rule
2.127(a).
Motion to Strike
Petitioner has submitted in support of its response to
the summary judgment motion the declaration of its
Cancellation No. 92041064
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president, Dilip Kanji (“Kanji Declaration”). As noted
above, respondent has moved to strike the declaration.
As a general rule, the Board disfavors motions to
strike, and will not strike matter unless it clearly has no
bearing on the issues involved. Although we have the
authority to grant respondent’s motion to strike the
declaration as conceded pursuant to Trademark Rule 2.127(a),
we choose not to do so in this case. Instead, we will
consider the Kanji Declaration for whatever probative value
it may have regarding petitioner’s alleged priority, the
sole issue now before us on summary judgment. We will only
consider those matters which are based on the declarant’s
personal knowledge.7
In view thereof, respondent’s motion to strike is
denied. In addition, to the extent the motion to strike
pertains to petitioner’s response to the summary judgment
motion, the motion to strike is moot.
Summary Judgment Motion
In support of the summary judgment motion, respondent
argues that there is no genuine issue of material fact that
it has priority over petitioner, and, therefore, we must
dismiss the cancellation proceeding with prejudice. As
grounds therefor, respondent contends that after the PTO
7 We note, however, that even if we had considered the Kanji
Declaration in its entirety, we would have come to the same
result on the summary judgment motion.
Cancellation No. 92041064
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rejected petitioner’s pleaded intent-to-use applications
based on likelihood of confusion with the registrations that
petitioner now seeks to cancel, petitioner:
conceived of a disingenuous plan to contrive or
manufacture [a] fictitious priority date earlier in
time than the Respondent’s priority date. The plan,
once implemented, involves a phony attempted quit claim
assignment of non-existing common law service mark
rights having no good will in the Petitioner’s trade
area. The attempted assignment purports to leave the
assigner [sic] with an unsupportable common law claim
to a bifurcated portion legal title, an empty claim of
right to use and fictitious good will outside the
assignor’s long term trade area at a single location in
Northern Idaho. The assignee’s intent was to transport
the phantom claim to a bifurcated portion of legal
title, the empty right to use and the imaginary good
will across 3,000 miles to Florida.
The attempted assignment, if valid and if it
transferred something other than non-existing rights
and empty good will, created impermissible concurrent
bifurcated legal title in two independent business
entities, without coordinated quality control to
protect the public. The quit-claim assignor has
retained its priority date in its trade area, its mark,
its good will and all its assets, trade secrets and
customer base in Northern Idaho. Yet, the Petitioner
now claims the benefit of the assignor’s common law
Idaho priority date in Florida, where the assignor has
no common law rights and no good will.
The Petitioner’s transparent tacking ploy gained no
common law service mark rights, no good will and no
basis to claim to priority.
The relevant portions of the Kanji Declaration
essentially reiterate the allegations of priority noted in the
introductory section to this order.
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
Cancellation No. 92041064
8
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).
Upon careful consideration of the arguments and
evidence presented by the parties, and drawing all
inferences with respect to the motion in favor of petitioner
as the nonmoving party, we find that there is no genuine
issue of material fact regarding respondent’s priority of
use.
Specifically, in support of the summary judgment
motion, respondent submitted the declaration of its
Executive Vice President and General Counsel attesting to
respondent’s 1996 use dates.8 Therefore, there is no
genuine issue of material fact that respondent has been
using the marks HOPPERS and HOPPER’S GRILL & BREWING COMPANY
continuously since November 3, 1996 and December 15, 1996,
respectively. Nor is there a genuine issue of material fact
that because petitioner filed its applications based on a
bona fide intention to use the marks in commerce, the
October 13, 2000 filing date of those applications is the
constructive use date, and the earliest date on which
8 Respondent attached to the declaration soft copies of the
subject registrations.
Cancellation No. 92041064
9
petitioner can rely for purposes of establishing priority.9
See Zirco Corp. v. American Telephone and Telegraph Co., 21
USPQ2d 1542 (TTAB 1991). Of necessity, therefore,
petitioner’s priority claim is based on its contentions that
it obtained “all of the right, title, and interest” in the
marks M.J. BARLEYHOPPER’S and BARLEYHOPPERS, and all of the
related goodwill through the Territorial Assignment from
Adcope, and that Adcope’s February 12, 1991 date of first
use of those marks inures to petitioner’s benefit.
However, there is no genuine issue of material fact
that Adcope had no rights and goodwill to assign beyond the
200 mile retained use area, and thus that petitioner is not
entitled to claim priority under Section 2(d) based on said
rights and goodwill. To the contrary, the Territorial
Assignment states that Adcope “is the owner of the mark M.J.
BARLEYHOPPER’S” and that “Adcope and its predecessor have
used the mark on or in connection with a Brew Pub and Sports
Bar in an area within a radius of two hundred (200) miles
surrounding Lewiston, Idaho, since February 12, 1991.” It
therefore appears that Adcope has not used the mark M.J.
9 In fact, petitioner first used the mark BARLEY HOPPERS in
commerce on March 31, 2001. Kanji Dec. par. 58.
Cancellation No. 92041064
10
BARLEYHOPPER’S outside the 200 mile retained area, and that
Adcope has no rights or goodwill beyond that area.10
Petitioner submitted as exhibit 10 to the Kanji
Declaration the title page of a telephone directory covering
three counties in Washington and five counties in Idaho, and
the page on which M.J. Barleyhopper’s Brewery & Sports Pub
is listed. To the extent petitioner relies on the directory
listing to establish Adcope’s rights and goodwill beyond the
200 mile retained area, such reliance is misplaced. The
enumerated counties are either entirely within the 200 mile
retained area, or, as in the case of Idaho County, the
largest cities are within that radius. Therefore, the
directory listing alone (not an advertisement) does not
raise a genuine issue of material fact regarding the nature
and extent of Adcope’s rights and goodwill in the mark M.J.
Barleyhopper’s beyond its retained area. Moreover, we do
not see how any possible goodwill in a mark that a
restaurant may have outside of a 200-mile radius from its
single location can aid an applicant with a restaurant
approximately 3000 miles away in Florida.
Finally, we note that even if we were to find that the
Territorial Assignment constitutes a proper assignment, the
10 According to the Territorial Assignment, Adcope also assigned
to petitioner rights to BARLEYHOPPER’S, a mark Adcope does not
appear to own, and, based on the evidence of record, does not
appear to be using as a service mark to identify a brew pub and
sports bar.
Cancellation No. 92041064
11
mark M.J. BARLEYHOPPER’S is not legally equivalent to
BARLEYHOPPERS or BARLEY HOPPERS. Marks are legal
equivalents if they create the same, continuing commercial
impression such that a consumer would consider them both the
same mark. Dial-A-Mattress Operating Corp., 240 F.3d 1341,
57 USPQ2d 1807, 1812-13 (Fed. Cir. 2001). Therefore, a
minor difference in the marks, such as pluralization or an
inconsequential modification or modernization of the later
mark, would not preclude a finding that the marks are legal
equivalents. Id.; In re Loew’s Theatres, Inc., 223 USPQ
513, 514 n.5 (TTAB 1984), aff’d, 769 F.2d 764, 226 USPQ 865
(Fed. Cir. 1985)(the marks DURANGOS and DURANGO are legal
equivalents). Thus in Dial-a-Mattress, the marks 1-888-M-A-
T-R-E-S-S and (212) M-A-T-T-R-E-S were viewed as legal
equivalents, whereas in Van Dyne-Crotty Inc. v. Wear-Guard
Corp., 926 F.2d 1156, 17 USPQ2d 1866 (Fed. Cir. 1991), the
marks CLOTHES THAT WORK. FOR THE WORK YOU DO and CLOTHES
THAT WORK were not.
M.J. BARLEYHOPPER’S creates the impression of an
individual’s name, with the designation BARLEYHOPPER’S
serving as the surname, while BARLEYHOPPERS and BARLEY
HOPPERS are both nouns, and create different commercial
impressions from M.J. BARLEYHOPPER’S. Therefore, Adcope’s
February 12, 1991 date of first use of the mark M.J.
BARLEYHOPPER’S does not inure to petitioner’s benefit.
Cancellation No. 92041064
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Respondent has demonstrated a prima facie case that
there is no genuine issue of material fact regarding
priority that requires trial for resolution. The Kanji
Declaration does not raise or rebut any genuine issue of
material fact. Accordingly, petitioner cannot prevail on
the priority question, and its Section 2(d) claim must fail.
In view thereof, respondent’s motion for partial
summary judgment on the issue of priority is granted.
Moreover, because priority is an essential element of a
Section 2(d) claim, the petition to cancel is dismissed with
prejudice.