LuckyU Enterprises, Inc., dba Giovanni’s Original White Shrimp Truckv.John “Giovanni” Aragona

Trademark Trial and Appeal Board

Jul 25, 2016

No. 92057023 (T.T.A.B. Jul. 25, 2016)

Oral Hearing: March 18, 2014 Mailed: July 25, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
LuckyU Enterprises, Inc.,
dba Giovanni’s Original White Shrimp Truck
v.
John “Giovanni” Aragona
————
Cancellation No. 92057023

————
Daniel P. Mullarkey of Polsinelli PC for Petitioner.1
Jamie N. Pitts of the Law Office of Jamie N. Pitts for Respondent.
————
Before Wellington, Wolfson, and Heasley, Administrative Trademark
Judges.
Opinion by Wolfson, Administrative Trademark Judge:
Petitioner LuckyU Enterprises, Inc. (“Petitioner” or “LuckyU”) seeks to cancel the
following four registrations owned by John Aragona (“Respondent”):

1 Jennifer Fraser of Novak Druce Connolly Bove + Quigg appeared with Petitioner’s counsel
on the brief.
This Opinion is Not a
Precedent of the TTAB
Cancellation No. 92057023

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Reg. No. 4232569 for the mark GIOVANNI’S ORIGINAL
WHITE SHRIMP TRUCK (standard characters) issued Oc-
tober 30, 2012 for “Mobile restaurant services” in Interna-
tional Class 43.2
Reg. No. 4220686 for the mark GIOVANNI’S ALOHA
FOODS (standard characters) issued October 9, 2012 for
“Food preparation services” in International Class 43.3
Reg. No. 4224400 for the mark GIOVANNI’S SCAMPI
MARINADE (standard characters) issued October 16, 2012
for “marinades” in International Class 30.4
Reg. No. 4248595 for the mark GIOVANNI'S HOT &
SPICY WE REALLY MEAN IT! SAUCE (standard charac-
ters) issued November 27, 2012 for “hot sauce” in Interna-
tional Class 30.5
The statutory grounds upon which cancellation has been filed are Sections 2(a) of
the Trademark Act, 15 U.S.C. § 1052(a), (deceptiveness and false suggestion of a
connection); Section 2(d), 15 U.S.C. § 1052(d), (priority and likelihood of confusion);
and Section 14, 15 U.S.C. § 1064, (misrepresentation of source and abandonment). In
addition, Petitioner alleges that Respondent committed fraud when the applications
that matured into the registrations were filed by falsifying the specimens and by
claiming that he had the exclusive right to use the marks despite knowing of
Petitioner’s prior rights; and, with respect to Reg. No. 4232569 only, that it is void ab

2 A disclaimer to “Original White Shrimp Truck” is of record; Mr. Aragona’s consent is of
record.
3 A disclaimer to “Foods” is of record; Mr. Aragona’s consent is of record.
4 A disclaimer to “Scampi Marinade” is of record; Mr. Aragona’s consent is of record.
5 A disclaimer to “Hot & Spicy” and to “Sauce” is of record; Mr. Aragona’s consent is of record.
Cancellation No. 92057023

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initio because Respondent never used the mark GIOVANNI’S ORIGINAL WHITE
SHRIMP TRUCK in connection with mobile restaurant services.
In his answer, Respondent admits that in 1997 Petitioner’s predecessor, Nitsche
Enterprises, Inc. (“Nitsche Enterprises”) purchased the retail food business from him
and his former wife, Connie Aragona,6 Answer ¶ 1, 5 TTABVUE 3; that the Asset
Purchase Agreement, a copy of which is attached to the petition, is authentic,7
Answer ¶ 2, Id.; and that the Asset Purchase Agreement “contemplated a future arm’s
length supplier relationship, whereby Nitsche Enterprises would obtain sauces and
marinades from the Aragonas to the extent they could maintain adequate supply.”
Answer ¶ 3, Id. Respondent also admits that Nitsche Enterprises and its successor,
Petitioner, have continuously used the marks GIOVANNI’S ALOHA SHRIMP,
GIOVANNI’S SHRIMP TRUCK and GIOVANNI’S ORIGINAL WHITE SHRIMP
TRUCK, Answer ¶ 9, 5 TTABVUE 5; and that shortly after selling the shrimp truck
business to Nitsche Enterprises, Respondent formed Giovanni’s Aloha Foods, L.L.C.
(the “Hawaiian LLC”), one of the purposes of which was to supply Nitsche Enterprises
with sauce and marinade for the shrimp plates, and that thereafter Mr. Troy Nitsche
(president of Nitsche Enterprises) and James Goodrich, (an unrelated investor)
invested in the Hawaiian LLC as 50% owners, Answer ¶ 4, 5 TTABVUE 4.
Respondent asserts that he is the “senior user of the common law trademarks
GIOVANNI’S ORIGINAL WHITE SHRIMP TRUCK; GIOVANNI’S ALOHA FOOD;

6 Connie Aragona is not a party to this proceeding.
7 The Asset Purchase Agreement was introduced by Petitioner at 25 TTABVUE 175. Accord-
ingly, we have not relied on Respondent’s statement as an admission of authenticity.
Cancellation No. 92057023

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GIOVANNI’S SCAMPI MARINADE; and GIOVANNI’S HOT & SPICY WE REALLY
MEAN IT! SAUCE,” Affirmative Defenses ¶ 1, 5 TTABVUE 17; and that by entering
into the Asset Purchase Agreement, “Petitioner, as licensee, recognized Registrant’s,
the licensor’s, ownership of the Giovanni’s marks and by implication, covenanted not
to challenge the licensor’s rights” to the marks, Affirmative Defenses ¶ 4, 5
TTABVUE 18.8
Preliminary Matters
Respondent objects to our consideration of Petitioner’s claim that Reg. No.
4232569 is void ab initio because Respondent never used the mark GIOVANNI’S
ORIGINAL WHITE SHRIMP TRUCK in connection with mobile restaurant services.
The objection is overruled. In Paragraph 26 of the petition to cancel, 1 TTABVUE 9,
Petitioner alleges that Respondent has never used the mark GIOVANNI’S
ORIGINAL WHITE SHRIMP TRUCK in connection with mobile restaurant services,
thereby putting Respondent on notice that Petitioner claims the registration is void
ab initio. During trial, Petitioner asked Respondent’s witness about his use of the
mark, and Respondent confirmed that he currently does not use the mark. Aragona
Disc. Dep. p. 135-136, 26 TTABVUE 195-96.

8 Applicant’s “affirmative defense” of failure to state a claim was not pursued at trial or in its
brief, and therefore is deemed waived. See Alcatraz Media, Inc. v. Chesapeake Marine Tours
Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013) (“Insofar as respondent neither filed a formal
motion to dismiss pursuant to Fed R. Civ. P. 12(b)(6) during the interlocutory phase of this
proceeding, nor argued this asserted affirmative defense in its brief, it is hereby deemed
waived.”).
Cancellation No. 92057023

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Evidentiary Objections
A. Respondent’s Objections
Respondent objects to a tourist brochure produced by Petitioner under Bates Nos.
LuckyU 000210-000314.9 The brochure is in Japanese with limited English-language
advertising. While we have not disregarded the brochure,10 we find that it is of limited
value, as no translation of the Japanese portions has been provided. Respondent
further objects to Bates Nos. LuckyU 000317-000400,11 but gives no reason therefor;
in any event, these documents are admissible under Trademark Rule 2.122(e) as
printed publications in general circulation among relevant members of the public.
B. Petitioner’s Objections
Petitioner objects to portions of Mr. Aragona’s December 11, 2014 testimony
deposition, 44 TTABVUE; to portions of the cross-examination conducted in Mr.
Nitsche’s September 17, 2014 testimony deposition, 25 TTABVUE; to portions of Mr.
Nitsche’s December 3, 2014 testimony deposition, 46 TTABVUE; and to portions of

9 33 TTABVUE 55-157. Because the Board primarily uses TTABVUE, the Trademark Trial
and Appeal Board’s publically available docket history system, in reviewing evidence, and
not the parties’ Bates numbering system, the Board prefers that citations to material or tes-
timony in the record that has not been designated confidential include the TTABVUE docket
entry number and the TTABVUE page number. For material or testimony that has been
designated confidential and which does not appear on TTABVUE, the TTABVUE docket en-
try number where such material or testimony is located has been used; no page numbers may
be available for such information. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6
(TTAB 2014).
10 During his testimony deposition of September 17, 2014, Mr. Nitsche indicated that Peti-
tioner advertises in visitor publications, including a Japanese publication “primarily geared
towards Hawaii attractions and things to do in Hawaii.” 25 TTABVUE 17.
11 33 TTABVUE 158-241. The publications contain advertisements for “Giovanni’s Shrimp
Truck.” See, e.g., 33 TTABVUE 205.
Cancellation No. 92057023

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Mr. Sonson’s testimony deposition, 43 TTABVUE. Petitioner also objects to the
admissibility of certain Exhibits on the basis of improper questioning by counsel.
Specifically, Petitioner contends that during the cross- and direct examinations of
witnesses, counsel asked leading questions, assumed facts not in evidence, elicited
narrative answers and (during cross) examined the witness on facts beyond the scope
of the direct examination. In addition, Petitioner objects to the admission of portions
of Mr. Aragona’s earlier-taken discovery deposition because Respondent allegedly did
not explain why those portions served to clarify the portions those that were offered
by Petitioner. Trademark Rule 2.120(j)(4).
We find Respondent’s explanations regarding submission of the additional
portions of Mr. Aragona’s earlier-taken discovery deposition to be credible, and have
thus considered the additional portions of the deposition. Regarding the objections
made on the basis of improper questioning, these objections go to the weight of the
evidence and not its admissibility. Standard Knitting Ltd. v. Toyota Jidosha K.K., 77
USPQ2d 1917, 1923 (TTAB 2006). We have considered the testimony and discovery
depositions in light of counsel’s failure to strictly adhere to the rules governing the
taking of depositions (not to mention the confusing nature of the examinations), and
accord them lesser weight where appropriate.12

12 We note that in any event, we would not sustain Petitioner’s evidentiary objections because
Petitioner first raised its objections in its reply brief, thereby according Respondent no op-
portunity to respond to the objections. The objections were directed to evidence adduced at
trial, of which Petitioner was already aware at the time its main trial brief was due. See
Hiraga v. Arena, 90 USPQ2d 1102, 1104 (TTAB 2009) (“Respondent filed no brief, nor has he
objected to any of the documents made of record by petitioner. However, we do not deem
Cancellation No. 92057023

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Petitioner further objects to admission of a document entitled “First Amendment
of Asset Purchase Agreement” because it is unsigned and undated and because no
witness has authenticated the document by direct proof or circumstantial evidence.
Fed. R. Evid. 802, 901.
An unsigned document may be authenticated by direct proof, such as the
testimony of a witness who saw the author sign the document, acknowledgment of
execution by the signer, admission of authenticity by an adverse party, or proof that
the document or its signature is in the purported author’s handwriting. See, e.g., 2
McCormick on Evid. § 221-229.1 (7th ed.). A document also may be authenticated
through circumstantial evidence, including the document’s own distinctive
characteristics and the circumstances surrounding its discovery. Id. Here,
Respondent testified that he signed the document, and that he was “under the
impression” that Mr. Nitsche also signed the document “but I don’t have copies of that
in front of me.”13 Respondent’s attorney who drafted the amendment, Alex M. Sonson,
testified that he was engaged by Respondent to draft the document; that he “believe[s]
my office did it. … And I know that I did it.”14 Regarding the circumstances

respondent to have agreed to petitioner’s submission of documents not contemplated within
the Trademark Rules of Practice and Procedure for such submissions by way of a notice of
reliance…”); TBMP § 706.
As to Petitioner’s objection that the “First Amendment of Asset Purchase Agreement” is
hearsay, however, we acknowledge that the objection was not made in Petitioner’s main brief,
but we nonetheless reject the alleged document sua sponte for the reasons discussed infra.
13 Aragona Dep., p 26, 44 TTABVUE 27. Mr. Aragona asserted: “No one complained about
any of this. I never went back to Sonson. If I had a problem on any contract he did with me,
I would have gone back to him. Obviously, I believed these things were signed by all parties
because there was no contention involved.”
14 Sonson Test. Dep. p 25, 43 TTABVUE 26.
Cancellation No. 92057023

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surrounding the discovery of the unsigned copy in 2010, Mr. Sonson testified that
“the records that I had in my office couldn’t be found” but that an electronic copy was
found on one of the computers in Mr. Sonson’s office by his staff. When asked whether
Mr. Aragona ever signed the document, Mr. Sonson responded: “I can’t recall how this
agreement was signed. I did have follow-up conversations with John, and everything
seems to have been fine, so the deal went through, and everything’s done, so I’m just
assuming that everything was fine. He disappeared after that.”15 Mr. Sonson
elaborated: “Oh, I’m sorry. I recall the reason I know everything was fine is because
he paid me. Q. Excuse me, what? You recall what? A. Because he paid me, so that
was clear indication to me that everything was fine. I didn’t get paid in advance. I got
paid after everything was done.”16
The testimony presented by Respondent does not support a finding that this
document was signed by both parties. Neither Mr. Aragona nor Mr. Sonson has any
direct recollection of Mr. Nitsche having signed the document. A copy of the document
resided electronically in a computer file that was not accessed until 2010. The
argument that Mr. Aragona would have contacted his lawyer if Mr. Nitsche would
not sign the agreement is speculative at best. We also do not agree with Respondent’s
contention that the Amendment “was made necessary”17 because the landlord of the
property upon which the trucks were situated would not accept the contingencies

15 Sonson Test. Dep. p. 28, 43 TTABVUE 29.
16 Id.
17 Respondent’s Brief, p. 12, 60 TTABVUE 13.
Cancellation No. 92057023

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placed on the lease by the Asset Purchase Agreement.18 Significantly, Mr. Nitsche
denies that he was even aware of the existence of the document until this proceeding.
When asked if he was familiar with it, Mr. Nitsche responded: “Only as a -- only
recently during these proceedings have I seen this document, do I remember seeing
this document. … I don’t know where this document came from or who drew it up or
really anything about it.”19 In addition, Petitioner denied that Mr. Nitsche signed the
agreement in its answers to Respondent’s request for admissions.20
Respondent has not laid a foundation for admitting the document as a signed
agreement. Trademark Rule 2.123(l) (“Evidence not obtained and filed in compliance
with these sections will not be considered”); Southwire Company v. Kaiser Aluminum
& Chemical Corp., 196 USPQ 566, 571 (TTAB 1977) (“The mere introduction of an
unsigned copy of this letter is manifestly insufficient, per se, to establish that this
letter was actually mailed especially in light of the witness’ testimony regarding
receipt of it.”). Petitioner’s objection to the “First Amendment of Asset Purchase
Agreement” is sustained.

18 The Asset Purchase Agreement called for Nitsche Enterprises to obtain a lease directly
from the landlord. Paragraph 3.A. However, while the landlord agreed to the transfer, it
“wanted the buyer as agreed to be added onto the current lease with the seller.” 44 TTABVUE
26. The result was that both Mr. Nitsche and Mr. Aragona signed a lease that was made
effective from a date a few months prior to the sale of the business. 44 TTABVUE Exhibit 5.
When asked why his name was included, Mr. Aragona explained that “the lease was
originally in my name and I guess they wanted me to be included in it.” 44 TTABVUE 22.
This substantial compliance with the terms of the Asset Purchase Agreement did not nullify
it and does not prove that the Amendment was necessarily signed by the parties.
19 46 TTABVUE 15-16.
20 39 TTABVUE 143.
Cancellation No. 92057023

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The Record
The record comprises the pleadings and the files of the involved registrations.
Trademark Rule 2.122(b). Further, in light of our evidentiary rulings, the record
includes the following submissions, as proffered by the parties:
A. Petitioner’s Evidence
1. Testimony of Troy Nitsche, majority owner and president
of Petitioner LuckyU Enterprises, including Exhibits.
Taken September 17, 2014.
2. Petitioner’s First Notice of Reliance filed October 6, 2014.
3. Documents evidencing the status and title of Respondent’s
involved registrations, Petitioner’s pleaded applications
and Petitioner’s previously abandoned applications.21
4. Printed publications and webpage printouts; Respondent’s
responses to Petitioner’s first and second set of requests for
admissions.
5. Respondent’s responses to Petitioner’s first and
supplementary set of interrogatories.
6. Excerpts from the June 18, 2014 discovery deposition of
John Aragona.22
7. Copies of confidential third-party emails; copies of the
parties’ two stipulations.

21 Because the file histories of Respondent’s registrations are already of record, it was
unnecessary to submit them under Petitioner’s Notice of Reliance at 30 TTABVUE.
22 We recognize that Mr. Aragona’s discovery deposition has been designated confidential in
its entirety. However, not all statements in the deposition constitute trade secret or
commercially sensitive information warranting protection under Fed.R.Civ.P. 26(c)(1)(G).
The Advisory Committee Notes to the 1970 Amendment explain that the Rule does not
provide complete immunity against disclosure; rather, in each case, the need for privacy must
be weighed against the need for disclosure. In rendering our decision, we will not be bound
by Respondent’s over-designation of information and will treat only testimony and evidence
that is truly confidential or commercially sensitive as such. See Noble House Home
Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1416 n.21 (TTAB 2016); TBMP
§ 120.02 (regarding proper procedure for filing materials with the Board under seal).
Cancellation No. 92057023

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8. Petitioner’s Second (Rebuttal) Notice of Reliance filed
January 13, 2015: Additional excerpts from John Aragona’s
discovery deposition and official records from the state of
Hawaii Dept. of Commerce and Consumer Affairs.
B. Respondent’s Evidence
1. Testimony of Troy Nitsche, including Exhibits. Taken De-
cember 3, 2014.
2. Testimony of Alex M. Sonson, attorney for Respondent, in-
cluding admitted Exhibits. Taken December 3, 2014.
3. Testimony of John Aragona, including admitted Exhibits.
Taken December 11, 2014.
4. Respondent’s Notice of Reliance filed December 11, 2014.
5. Printed publications and web-page printouts offered “to
show Respondent’s priority, use and ownership of the mark
GIOVANNI’S WE REALLY MEAN IT HOT AND SPICY
SAUCE” and Petitioner’s alleged knowledge of
Respondent’s intent to franchise a food truck business.
6. Official records from the State of Hawaii23
a. State of Hawaii Trademark application filed by Re-
spondent in 1997 for the mark GIOVANNI’S
ALOHA SHRIMP; cancelled.
b. Tax license filed by John/Connie Aragona in 1998 for
“Giovanni’s Aloha Foods”.
c. Articles of Organization filed by Respondent and Mr.
James L. Goodrich in 1998 for “Giovanni’s Aloha
Shrimp, L.L.C.” and for “Giovanni’s Aloha Foods,
L.L.C.”
d. State of Hawaii Trade Name application filed by
Respondent in 2010 for “Giovanni’s Aloha Shrimp”
for “shrimp and bottle sauces”; issued “to secure the
aforesaid applicant the use of the said TRADE

23 39 TTABVUE Exhibit B.
Cancellation No. 92057023

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NAME throughout the State of Hawaii for the term
of five years from May 19, 2010 to May 18, 2015.”
e. Health inspection reports and food establishment per-
mits from 2008-2014 concerning LuckyU’s operation
of shrimp trucks in Hawaii.
7. Official records from the state of Florida24
a. Articles of Organization for “Giovanni’s Aloha Foods
LLC” filed in 2010 by Carol Dilello, listing Ms.
Dilello as sole member/manager.25 (Exhibit 30)
b. Articles of Incorporation for “Giovanni’s Aloha Foods
Corp” filed in 2011 by Carol Aragona, listing Ms.
Aragona as “P” under “initial officers” and not listing
anyone else in any capacity. (Exhibit 39)
8. Petitioner’s responses to Respondent’s first set of interrog-
atories.
9. Petitioner’s responses to Respondent’s first set of interrog-
atories and requests for admission.
10. Excerpts from the June 18, 2014 discovery deposition of
John Aragona.
11. Copies of third-party emails produced in discovery by
Respondent and submitted under seal.
The parties entered into the following stipulations: (1) That the third-party emails
submitted under seal are authentic, TTABVUE 14, and (2) that “all of the information
in the applications for the registrations at issue was provided by John Aragona to his
attorney and application signatory, Jamie Pitts [whose] signed declaration reflects
only the knowledge that she received directly from John Aragona.” TTABVUE 15.

24 44 TTABVUE.
25 Respondent identifies Ms. Carol Dilello Aragona as his current wife. 44 TTABVUE 81.
Cancellation No. 92057023

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Standing
The Lanham Act provides that “any person who believes that he is or will be
damaged … by the registration of a mark” may petition the USPTO to cancel the
registration. Trademark Act Section 14, 15 U.S.C. § 1064. Standing is a threshold
issue that must be proven by a plaintiff in every inter partes case. Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999). See also Empresa Cubana
Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014);
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA
1982). Petitioner has shown that it has been using the same marks for the same or
similar goods and services as Respondent for 17 years,26 and has asserted a likelihood
of confusion claim that is not wholly without merit. Lipton Industries, 213 USPQ at
189; Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 1326 (Fed.Cir.1983)
(cancellation petitioner demonstrated “real interest” by alleging NINA trademark
was confusingly similar to petitioner’s NINO trademark). Accordingly, Petitioner has
proven its standing to bring this proceeding.27 If a plaintiff can show standing on one

26 Nitsche Test. Dep. p. 9, 13, 25 TTABVUE 10, 14: “Q. Under what trademarks does LuckyU
do business under? A. We operate under Giovanni’s Aloha Shrimp, Giovanni’s Shrimp Truck,
Giovanni’s Original White Shrimp Truck.” … It will be 17 years this year.”
27 Standing is also met where the trademark for which cancellation is sought has been cited
against the application of plaintiff’s own trademark(s). Kallamni v. Khan, 101 USPQ2d 1864
(TTAB 2012) (standing based on final refusal to register petitioner’s pending application
based on respondent’s registration). Here, Petitioner alleges ownership of applications for the
marks GIOVANNI’S ORIGINAL WHITE SHRIMP TRUCK (Serial No. 85897861) and
GIOVANNI’S SHRIMP TRUCK (Serial No. 85897872), Petition to Cancel ¶16, 1 TTABVUE
7, and Respondent admits Petitioner’s ownership of the applications, Answer ¶ 16, 5
TTABVUE 7. However, Respondent does not admit their status and Petitioner has not shown
that the applications have been refused based on Respondent’s registrations. We do not take
judicial notice of applications or registrations residing in USPTO records, and accordingly we
Cancellation No. 92057023

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ground, it has the right to assert any other grounds in an opposition or cancellation
proceeding. Corporacion Habanos SA v. Rodriguez, 99 USPQ2d 1873, 1877 (TTAB
2011).
Likelihood of Confusion
We initially address Petitioner’s Section 2(d) priority and likelihood of confusion
claim.
The parties do not seriously dispute that there is a likelihood of confusion between
the marks; indeed both parties are interested in using essentially the same marks for
the same or similar goods and services. Where parties lay claim to the same marks
for essentially the same goods, a likelihood of confusion is inevitable, and the dispute
centers on ownership and priority. UVeritech, Inc. v. Amax Lighting, Inc., 115
USPQ2d 1242, 1245 (TTAB 2015); Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1301-
02 (TTAB 2015); Nahshin v. Product Source Int’l LLC, 107 USPQ2d 1257, 1258
(TTAB 2013). Here, each party believes that it owns the term GIOVANNI’S as
incorporated in the marks involved in this proceeding. Accordingly, we focus on the
issues of priority and ownership to determine whether the registrations for
GIOVANNI’S ORIGINAL WHITE SHRIMP TRUCK, GIOVANNI’S ALOHA FOODS,
GIOVANNI’S SCAMPI MARINADE, and GIOVANNI'S HOT & SPICY WE REALLY
MEAN IT! SAUCE should be cancelled.

do not find that the applications have been provisionally refused due to Registrant’s
trademarks. Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier
DesVignes, 107 USPQ2d 1930, 1933 (TTAB 2013); Edom Laboratories, Inc. v. Glenn Lichter,
102 USPQ2d 1546, 1550 (TTAB 2012) (Board does not take judicial notice of registrations or
applications residing in the Office).
Cancellation No. 92057023

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I. Background
In 1993, Respondent John Aragona and his former wife, Connie Aragona, decided
to sell food from a roadside truck in Oahu, Hawaii. Using the marks GIOVANNI’S
ALOHA SHRIMP and GIOVANNI’S ORIGINAL WHITE SHRIMP TRUCK28 to
identify their business, the Aragonas sold plates of cooked shrimp from two food
trucks, at least one of which was white. Mrs. Aragona developed a sauce and a
marinade that were key ingredients in the shrimp plates. After the business had been
ongoing for several years, the Aragonas decided to sell the shrimp trucks and start a
bottling company.29 On November 7, 1997, the Aragonas sold the food truck business
to Petitioner’s predecessor, Nitsche Enterprises, Inc., a Hawaiian corporation
founded by Troy Nitsche, pursuant to a written Assets Purchase Agreement.
When they sold the food truck business, the Aragonas formed a limited liability
company named Giovanni’s Aloha Foods, L.L.C. (the “Hawaiian LLC”)30 to enter into

28 The parties dispute whether the original signage included the word “ORIGINAL.” During
his testimony deposition, Mr. Aragona was asked to examine a photograph of a sign; and was
questioned: “[C]an you tell me what that is?” Answer: “It says Giovanni’s Original White
Shrimp Truck. It’s a sign that I made.” 44 TTABVUE 8. On the other hand, Mr. Nitsche
testified that the wording “ORIGINAL” was not on the sign when the business was purchased
but was added by himself at some later point. Nitsche Test. p 74, 25 TTABVUE 75. The only
other testimony in the record regarding whether the word ORIGINAL was on the sign is from
Mr. Sonson, who testimony is that the Aragonas were using “Original White Shrimp Truck”
on a sign, although not necessarily the sign in the proffered photograph. 43 TTABVUE 38.
On balance, and given that the sign in the photograph includes the word “original” and no
other photograph of a sign has been offered into evidence, we find that the sign listed as an
inventoried asset in “Exhibit A” of the Asset Purchase Agreement included the word “Origi-
nal” when it was transferred to Petitioner’s predecessor and that Mr. and Mrs. Aragona were
using the mark prior to 1997.
29 Aragona Test. Dep. p 9, 44 TTABVUE 10.
30 Respondent’s Notice of Reliance Exhibit B. The Aragonas also formed “Giovanni’s Aloha
Shrimp, L.L.C.” on the same day, listing the same address, the same named organizers, and
Cancellation No. 92057023

16

the bottled sauce and marinade business. They used the trademarks GIOVANNI’S
HOT & SPICY WE REALLY MEAN IT! SAUCE and GIOVANNI’S SCAMPI
MARINADE in connection with the sale of bottled sauce and marinade. There is no
record evidence establishing the date of first use of either of the two flavoring marks,
although there are references to “Giovanni’s Scampi” and “Giovanni’s Hot and Spicy”
shrimp sauces in the Asset Purchase Agreement, and a journalistic review of the “hot
and spicy” sauce appears in a 1996 news article31 associated with the phrase “we

the same members in both cases. The address was Mr. and Mrs. Aragona’s residence street
address and the members were Mr. and Mrs. Aragona, James L. Goodrich, and Diane K.
Wong. However, when asked the name of the bottling business, Mr. Aragona replied that it
was “Giovanni’s Aloha Foods.” 44 TTABVUE 38. He explained that “Aloha Foods” was “pri-
marily the bottling company at that point. … -- not the shrimp wagon….” Id. at 44, and that
“the Aloha Foods we thought would be a more apt name because we were selling the bottles
of sauce, and it’s more as a food product. ….” Id. at 46. Moreover, Mr. Aragona recognized
that Mr. Nitsche may not have been aware that Mr. Aragona had formed Giovanni’s Aloha
Shrimp LLC, Id. at 45, and Mr. Nitsche testified that he was not. Nitsche Test. Dep 12/3/14
p. 17, 46 TTABVUE 18 (Q: Were you aware of this document? A: No.).
The evidence also shows that Mr. Aragona applied for a taxpayer identification number for
Giovanni’s Aloha Foods but not Aloha Shrimp, Id. at 43, Exhibit 12, and that his business
cards at the time referred to Aloha Foods, not Aloha Shrimp. Id., Exhibit 13. Although Mr.
Aragona states that “Giovanni’s Aloha Shrimp originally was the bottling company and also
used for franchising the trucks in the mainland a little bit down the road,” this testimony at
best represents only a secret ambition of Respondent of which Mr. Nitsche was unaware.
When asked “did you have any idea of the existence of the other LLC, Giovanni’s Aloha
Shrimp, LLC?” Mr. Nitsche responded, “No.” 46 TTABVUE 42. When asked why he thought
there were two limited liability companies set up under “Foods” and “Shrimp,” Mr. Nitsche
replied: “A: I believe -- well, I can’t say for any certainty, but, you know, based on the members
of the company, I would say that this -- that this entity at some point would have been
changed to Giovanni’s Aloha Foods, but I don’t know that for sure. I have never seen this
document before, and like I said, I am unaware of it.” 46 TTABVUE 18. When asked “If you
had been told about the existence of Giovanni’s Aloha Shrimp, LLC, owned by John Aragona
and James Goodrich, would you have had a problem with that?” Mr. Nitsche answers: “I
probably would have, you know, questioned someone about it.” 46 TTABVUE 43. We do not
consider the fact that Respondent set up the Aloha Shrimp LLC as proving his retention of
ownership of the mark GIOVANNI’S ALOHA SHRIMP.
31 44 TTABVUE 197, Exhibit 4.
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really mean it,” suggesting that that phrase may have been in use by the Aragonas
to describe the flavoring.32 However, the photographs of Petitioner’s menu boards
(one of which is a surfboard hung on scaffolding over the truck) advertise the shrimp
plates only as “Shrimp Scampi” and “Hot & Spicy.” The word “Giovanni’s” or the
phrase “We really mean it” are not included as part of either designation. Finally, Mr.
Aragona testified that when the Hawaiian LLC was formed, he was using “Giovanni’s
Aloha Foods, Giovanni’s Scampi Marination [sic], the hot sauce.”33 He does not specify
the marks as they have been registered. On balance, giving appropriate weight to the
conflicting evidence, we find that the first use of the marks GIOVANNI’S HOT &
SPICY WE REALLY MEAN IT! SAUCE and GIOVANNI’S SCAMPI MARINADE
would have been no earlier than November 7, 1997, the date the Hawaiian LLC was
formed.
One of the primary goals of the Hawaiian LLC was to provide Nitsche Enterprises
with sauce and marinade to use as flavorings in the cooked shrimp plates sold at the
food trucks. Nitsche Enterprises, and its successor in interest LuckyU,34 continued to
sell plates of shrimp up to the present, building the business into a multi-million

32 Mr. Aragona was asked whether the “food that they’re referring to” in the article which
calls the sauce “Giovanni’s ‘We really mean it’ hot and spicy shrimp” had “ever been referred
to as anything else,” and Mr. Aragona answered “no, the name has always been the same,
Giovanni’s Hot and Spicy ‘We Really Mean It’ or ‘We Really Mean It’ Hot and Spicy. I’m not
sure exactly. I don’t have the label in front of me, but that’s what we used to have on there.”
44 TTABVUE 20. As the sauce was not bottled and sold “labeled” at that time, Mr. Aragona’s
mention of a label suggests he may be talking about a later date in time.
33 44 TTABVUE 51.
34 Mr. Nitsche is the majority owner and president of Petitioner LuckyU Enterprises. 25
TTABVUE 8. He testified that LuckyU was founded in 2003 or 2004. Id.at 9.
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18

dollar enterprise.35 The Hawaiian LLC, on the other hand, struggled financially, so
in 1999, Mr. and Mrs. Aragona turned to Troy Nitsche to invest in the company, which
he did.36 At that time, a written Limited Liability Company Member Agreement (the
“Member Agreement”)37 was drawn up, naming five members: Mr. Nitsche, Mr.
Aragona, Mrs. Aragona, Mr. Goodrich, (identified in Respondent’s answer and the
attorney who drafted the Member Agreement), and Diane Wong (Mr. Goodrich’s
wife).38 The Hawaiian LLC could not meet Nitsche Enterprises’ requirements for
sauce or marinade, so as provided for in the Asset Purchase Agreement, Mrs. Aragona
gave the recipes for the sauce and marinade to Troy Nitsche to enable his business to
make its own sauce and marinade to use with the shrimp plates it sold from the
trucks.39 In 2000 or 2001, Mr. Aragona abruptly severed his relationship with the
LLC, divorced Mrs. Aragona, and moved to New York.40 The Hawaiian LLC continued
to sell sauce and marinade in bottles under the marks GIOVANNI’S HOT & SPICY

35 25 TTABVUE 26.
36 44 TTABVUE 51.
37 44 TTABVUE 240, Exhibit 17.
38 Aragona Test. Dep. p. 43, 44 TTABVUE 44.
39 25 TTABVUE 46. “Q. How did it go as far as the Aragona’s meeting your sauce
requirements under the asset purchase agreement? A. Rocky. Rocky. We had to jump in a
number of times and make our own sauce so we wouldn't -- you know, we wouldn’t be caught
short. We wouldn’t run out basically. Q. How did you get the sauces if the Aragona’s weren’t
making them? A. I knew the recipe. Connie gave me the recipe from the beginning. You know,
I knew how to make the sauces.”
40 44 TTABVUE 33.
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19

WE REALLY MEAN IT! SAUCE and GIOVANNI’S SCAMPI MARINADE to
unrelated third parties until its dissolution in 2004.41
There was no contact between Respondent and Petitioner from 2000 to 2010. In
2010, having taken up residence in Florida, Mr. Aragona organized Giovanni’s Aloha
Foods LLC of Florida (the “Florida LLC”) to sell bottled sauce and marinade and
shrimp plates.42 Respondent operated a GIOVANNI’S ALOHA FOODS booth at a
charity event “a few years back”43 and testified that he had a booth at the Fancy Food
Show in Washington, D.C., but did not specify the date of the show.44 In 2011, Mr.
Aragona applied to register the marks at issue in this proceeding and contacted Mr.
Nitsche to demand that LuckyU cease use of the marks GIOVANNI’S ALOHA
SHRIMP and GIOVANNI’S ORIGINAL WHITE SHRIMP TRUCK. Following
registration of Respondent’s marks, Petitioner commenced this proceeding seeking to
cancel the registrations.
II. Ownership and Priority
Respondent contends that the 1997 Asset Purchase Agreement was not an
assignment, but rather was a license agreement, and that Petitioner acquired only
the right to use the marks GIOVANNI’S ALOHA SHRIMP and GIOVANNI’S
ORIGINAL WHITE SHRIMP TRUCK for a limited period of time. Respondent claims

41 Nitsche Test. Dep., p. 31, 46 TTABVUE 32.
42 44 TTABVUE 80, Exhibit 30.
43 44 TTABVUE 112, Exhibit 51.
44 44 TTABVUE 99, Exhibit 42.
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20

that he retained ownership of the marks and controlled the quality of goods sold by
Petitioner under the mark, and that when Petitioner applied for federal registration
of the marks,45 Respondent terminated the license.46 Respondent argues that
Petitioner’s use of the marks inured to Respondent’s benefit, and that Petitioner is
estopped, as a licensee under the Asset Purchase Agreement, from seeking to cancel
Respondent’s registrations.
Petitioner asserts that Respondent never had any personal rights in the marks
but rather shared the rights with his former wife, and that the marks GIOVANNI’S
ALOHA SHRIMP and GIOVANNI’S ORIGINAL WHITE SHRIMP TRUCK that were
used in and symbolized the goodwill of the food truck business were assigned
pursuant to the Asset Purchase Agreement and the sale of the total assets of the
business. Petitioner further contends that even if the agreement were construed as a
license, Respondent’s failure to maintain any standards of quality or control over
Petitioner’s use of the marks--let alone Respondent’s total lack of contact with
Petitioner for over ten years--invalidated the purported license. As for the marks used
in connection with the sauce and the marinade, Petitioner contends that they were
assigned to the Hawaiian LLC, but that even if Mr. Aragona retained any personal
rights to any of the marks, those rights were abandoned when he left Hawaii and

45 Petitioner applied for the following marks: Serial No. 85201283 for the mark GIOVANNI’S
ORIGINAL WHITE SHRIMP TRUCK, abandoned February 27, 2012; Serial No. 85201288
for the mark GIOVANNI’S ALOHA SHRIMP, abandoned February 27, 2012; Serial No.
85219363 for the mark GIOVANNI’S ORIGINAL SCAMPI SAUCE, abandoned February 27,
2012; Serial No. 85219370 for the mark GIOVANNI’S ORIGINAL HOT SAUCE, abandoned
February 27, 2012.
46 44 TTABVUE 92-94, 100, Exhibit 36 (confidential); Exhibit 41 (confidential).
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21

ceased use of the marks, and that his present use of the marks, which commenced in
2010 (or even as early as 2008 as Respondent contends) cannot vest rights in him
superior to those of Petitioner, who has continuously used the marks in connection
with shrimp plates, sauces and marinades from 1997 to the present.
Given the factual background and the parties’ positions, our determination of
ownership and priority of use of the contested registered marks depends on the
resolution of several questions:
• whether the Asset Purchase Agreement was a license or an assignment;
• whether Respondent and his wife assigned the marks to the Hawaiian
LLC when they entered into the Member Agreement; and
• whether Respondent abandoned his rights following his departure in
2000.
A. Was the Asset Purchase Agreement a License or an Assignment?
Even though Respondent admitted that he and his former wife sold the shrimp
truck business to Petitioner, Respondent contends that Petitioner’s status is that of
a mere licensee who is estopped from challenging the validity of the marks at issue
and Respondent’s ownership thereof, under the doctrines of licensee estoppel,
contractual estoppel and equitable estoppel. Each of these defenses depends on proof
of the Asset Purchase Agreement as a license agreement and not as an assignment.
Trademarks are regarded as “property” and like any kind of property, can be
bought, sold and licensed. A leading trademark treatise has described the difference
between a license and an assignment: An “assignment” of a mark is an outright sale
Cancellation No. 92057023

22

of all rights in that mark; a “license” of a mark is a limited permit to another to use
the mark. 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition
§ 18:1 (4th ed. 2016). See also Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702
F.3d 640, 105 USPQ2d 1472, 1475 (Fed. Cir. 2012) (court properly determined scope
of agreement as assignment of all rights, not merely license of “particular array of
uses” by assignee); Acme Valve & Fittings Co. v. Wayne, 386 F.Supp. 1162, 183 USPQ
629, 631 (S.D. Tex. 1974) (“In contrast to an assignment, a license to use a mark does
not pass title to the trademark because it is a transfer of limited rights, less than the
whole interest which might have been transferred.”) (quoted in Exxon Corp. v.
Oxxford Clothes, Inc., 109 F.3d 1070, 42 USPQ2d 1417, 1421 (5th Cir.1997). Cf. In re
Wilson Jones Co., 337 F.2d 670, 143 USPQ 238 (CCPA 1964) (A license to use a mark
is not the equivalent of a consent by the owner of the cited mark to permit registration
of the mark by the licensee); Clayton Mark & Co. v. Cla-val Co., 138 USPQ 679, 680
(TTAB 1963) (although original agreement “reads as if it were a license rather than
an assignment,” the prior and subsequent actions of the parties clearly showed that
an assignment was intended).
The Asset Purchase Agreement is not a model instrument. It refers to John and
Connie Aragona as “Seller” and the “Giovanni Aloha Shrimp” business as a sole
proprietorship, but there is no evidence of the establishment of a sole proprietorship
or that the Aragonas operated the business as anything less than equal partners.
Although in the “Representations of Seller to Buyer” section of the agreement,
“Seller” is sometimes referred to as “they” and once as “he,” the weight of the evidence
Cancellation No. 92057023

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supports a finding that the marks at issue were jointly owned by both Mr. and Mrs.
Aragona when the Asset Purchase Agreement was signed.47 The agreement is signed
by both individually as a “Seller.” Accordingly, there is an unresolved issue as to
whether Respondent individually owned any rights in the marks he claims to have
licensed, but as that issue has not been brought before us, we accept for purposes of
this proceeding, Mr. Aragona’s claim as sole licensor of the marks involved herein.48
The Asset Purchase Agreement is titled as a purchase agreement and does not
mention or allude to a “license” anywhere in the agreement. In favor of characterizing
the Asset Purchase Agreement as an assignment are the following provisions:
1. The preamble identifies the parties as “John Aragona and Connie Aragona
(Seller)” and “Nitsche Enterprises, Inc. (Buyer)” and not as licensor and
licensee.
2. Paragraph 1 reads: “Seller agrees to sell and the Buyer agrees to purchase
from the Seller, all of those assets of the Seller that are specifically listed in

47 Generally, the owner of a mark is a single person or “juristic person” such as a firm or
corporation. However, a mark may be jointly owned by two or more individuals or juristic
persons. See, e.g., New York State Office of Parks and Recreation v. Atlas Souvenir & Gift Co.,
207 USPQ 954, 957 (TTAB 1980) (mark owned by “husband and wife team”); TMEP §
803.03(a) (an application that identifies two persons as a “sole proprietorship” is an ambigu-
ity that requires clarification of the entity type).
48 While the Aragonas were selling the shrimp truck business to Nitsche Enterprises, they
acted at cross purposes to one another. Mr. Aragona applied in his name only for a state of
Hawaii trademark registration for GIOVANNI’S ALOHA SHRIMP on October 24, 1997 for
“shrimp; marinade, and sauces.” 39 TTABVUE 27. Mrs. Aragona applied to register the trade
name Giovanni’s Aloha Foods as a sole proprietorship in her individual name on April 3, 1998
for “bottling sauces – wholesale, retail.” 41 TTABVUE 7. The Hawaii state trademark regis-
tration and the Giovanni’s Aloha Foods trade name registration were each good for only one
year and are both marked “cancelled.”
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Exhibit ‘A’” (i.e., the physical assets connected with the shrimp truck
business). In addition, Paragraph 1 provides that Seller assign its rights as
tenant of the property upon which the trucks were located.
3. In Paragraph 5.A., Sellers represent that they are the sole owners of the assets
listed in Exhibit A and that they will “transfer valid legal title of all the assets
listed in Exhibit ‘A’ free and clear of all liens, encumbrances and claims of
every kind.”
4. In Paragraph 21.C. the parties agree that the Asset Purchase Agreement
“shall be construed to give the Buyer full rights to use the name ‘Giovanni’s
Aloha Shrimp’ without any limitations placed upon the Buyer on the use of
said name.”
Respondent argues that this agreement was intended to be a license based on the
following terms:
1. The preamble indicates that the Aragonas desire to sell “a portion” of the assets
of the Giovanni’s Aloha Shrimp business. Inasmuch as the Aragonas sold all of the
physical manifestations of the food truck business (i.e., the assets identified in
Exhibit A to the Asset Purchase Agreement), and their clear intention was to go into
the business of bottling and selling the flavoring sauce and marinade while Petitioner
continued the shrimp truck business, a fair reading of this wording is that the term
“portion” referred to the Aragonas’ retention of the recipes for use in their bottling
business, not that Respondent retained ownership of the trademarks that were used
in the shrimp truck business.
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2. The preamble also states that Nitsche Enterprises “desires to purchase” the
exclusive rights in the State of Hawaii to “use” the name Giovanni’s Aloha Shrimp.
Contrary to Respondent’s argument that use of the term “use” indicates a license, this
clause states both a desire to purchase and to use. It is far from a clear-cut statement
of intent to create a license.
3. The agreement provides for joint ownership of a state of Hawaii registration
for the “name” GIOVANNI’S ALOHA SHRIMP.49 One month before signing the Asset
Purchase Agreement, John Aragona registered a state of Hawaii trademark
registration in his own name for GIOVANNI’S ALOHA SHRIMP for “shrimp;
marinade, and sauces,” but the registration was cancelled on October 26, 1998.50
There is no other registration or application to which this provision may refer, and
no other application for registration was undertaken after the execution of the
agreement. Thus, this provision was never implemented. Moreover, as Mr. Nitsche
understood it, the reason the agreement called for joint ownership was simply to allow
the Aragonas to pursue the bottling business “without interference from me.”51
4. Paragraph 10.A. provides that “the only restriction on the Buyer’s use of the
trade name ‘Giovanni’s Aloha Shrimp’ shall be that the Buyer shall sell at least a half
pound of shrimp in the plate lunches sold by the Buyer after acquiring the Seller’s
business.” 52 Further, Paragraph 10.A. requires Buyer to use the “scampi sauce” and

49 Paragraphs 3.C. and 8.D., 1 TTABVUE 21 and 24.
50 39 TTABVUE 27.
51 Nitsche 9/17/14 Testimony Deposition, 25 TTABVUE 47.
52 Paragraph 10.A., 1 TTABVUE 26.
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26

the “hot and spicy sauce” that the Aragonas were using at the time of the sale.
Testimony explains that the purpose of this requirement was to ensure that Nitsche
Enterprises purchased a sufficient quantity of sauce from the newly formed bottling
company.53 This single provision is woefully inadequate proof of sufficient quality
control measures.
5. There is a restriction tied to the joint ownership provision regarding the “name”
Giovanni’s Aloha Shrimp, which states that Buyer “covenants and agrees not to
register said trade name outside the State of Hawaii.”54 This provision may limit
Petitioner’s right to register a “trade name” outside the state of Hawaii, but it does
not prove a licensing agreement.
6. Finally, in Paragraph 15, Seller covenants not to use the name “Giovanni’s” in
Hawaii for five years following the execution of the Asset Purchase Agreement, except
that Seller is permitted to market and sell bottled sauces under the name
“Giovanni’s” and Seller is permitted to operate a sit-down restaurant under the name
“Giovanni’s,” but “only for dinner (after 6:00 p.m. daily).” Seller is also allowed to
participate in a catering business on the condition that all shrimp sold through the
catering business be purchased “cooked and prepared” from Buyer. Respondent
argues that these provisions show that he retained the ownership of the marks.
However, these provisions are as suggestive of a sale and consent-back agreement as

53 Nitsche 9/17/14 Testimony Deposition, 25 TTABVUE 47.
54 This clause is also in Paragraph 10.A. and reads: “The joint ownership of the trade name
‘Giovanni’s Aloha Shrimp’ shall apply only to the State of Hawaii, and the Buyer covenants
and agrees not to register said trade name outside the State of Hawaii.” 1 TTABVUE 26.
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27

they are suggestive of a license. Respondent agreed that “under no circumstances”
would he “operate, own, participate in, manage, supervise, or engage in consulting
any lunchwagon operation in the State of Hawaii without the express written consent
of the Buyer.”55 Moreover, there is no evidence that the Aragonas ever operated a sit-
down restaurant or a catering business under any name anywhere. We do not find
the provisions sufficiently clear and unambiguous to indicate an intent of the parties
to create a license.
“Even though a contract states that it is a ‘license,’ a court will not be governed
by form, and the contract will be upheld as an assignment of trademark rights if that
is its actual legal effect.” 3 McCarthy on Trademarks and Unfair Competition at
§ 18:5. The principal requirement is that “the licensing agreement provides for
adequate control by the licensor over the quality of goods or services produced under
the mark by a licensee.... The purpose of such a requirement is to protect the public
from being misled.” Visa, U.S.A., Inc. v. Birmingham Trust Nat. Bank, 696 F.2d 1371,
216 USPQ 649, 653 (Fed. Cir. 1982) (quoting Haymaker Sports, Inc. v. Turian, 581
F.2d 257, 198 USPQ 610, 613 (CCPA 1978)). Here, the weight of the evidence shows
that the Aragonas expressly granted all rights to the mark GIOVANNI’S ALOHA
SHRIMP to Nitsche Enterprises. There are none of the standard terms typically
found in a licensing agreement. The two most glaring omissions are that there are no
provisions for royalty payments, whether in terms of a guaranteed minimum royalty
or a percentage royalty, and there are inadequate quality control provisions to ensure

55 1 TTABVUE 29-30.
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the consistency of the product. Other typical licensing terms are missing, such as
whether the “license” is to be exclusive or non-exclusive, the term of the license
period, performance measures, or provisions for renewal or termination for failure to
adequately perform under the terms of the license. Mr. and Mrs. Aragona transferred
all rights to the marks, together with the good will of the ongoing business, to Nitsche
Enterprises under the terms of the Asset Purchase Agreement.
Respondent argues that even if the Asset Purchase Agreement does not expressly
create a licensing arrangement, Mr. Aragona’s conduct after the sale of the business
evidences an implied license and sufficient quality control. We disagree. Mr. Aragona
never asserted control over the quality of the meals that were served by Nitsche
Enterprises or Petitioner. He had no contact whatsoever with Troy Nitsche from 2000
to 2010.56 During those ten years, Petitioner made changes to the menu and the
location of the shrimp trucks. For example, LuckyU primarily serves “plate lunch
style shrimp,” but also sells hot dogs, macaroni salad, bottled drinks, and rice.57 The
macaroni salad is a new addition, as is the application of garlic sprinkles to the rice
that accompanies the garlic shrimp plates.58 The sauce and marinade recipes were

56 The first contact was made via Respondent’s attorney’s letter dated November 30, 2010,
sent to Mr. Nitsche. The letter indicated that Mr. Aragona was in the process of bottling and
selling “Giovannis’s [sic] Shrimp Sauce and Scampy [sic] Marinade” and requested that Mr.
Nitsche provide a copy of the Asset Purchase Agreement to assist in “protecting all parties
[sic] legal rights.”44 TTABVUE 280, Exhibit 33.
57 Nitsche 9/17/14 Testimony Deposition, 25 TTABVUE 11. In 1996, the Aragonas sold “hot
and spicy shrimp, scampi marinade, hot dog [sic], and soft drinks” as well as a “third shrimp
plate in garlic.” Aragona Test Dep. p. 18, 44 TTABVUE 20.
58 25 TTABVUE 14.
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changed slightly.59 Petitioner purchased new trucks,60 and directly paid rent on its
lease with the landlord of the property where the trucks were parked.61 Respondent
did not inspect the premises, taste the new formulations, complain about the changes
to the garlic shrimp plate or the recipes, or in any way monitor the quality of goods
sold under the marks. He made one trip to Hawaii in January 2011 when he
apparently visited one of the food trucks.62 His purported visits to Petitioner’s website
and alleged conversations with third parties who enjoyed the food do not qualify as
anything but superficial overviews of the nature of Petitioner’s business in general.
Respondent has not shown that he controlled the nature or quality of the goods and
services provided under the marks by Nitsche Enterprises or its successor, Petitioner.
Cf. Linville v. Rivard, 41 USPQ2d 1731, 1740-41 (TTAB 1997), aff’d 133 F.3d 1446,
45 USPQ 2d 1374 (Fed. Cir. 1998) (licensor personally visited the licensees and was
satisfied with the standards of services rendered by chain of hair-cutting salons);
Nestle Co. v. Nash-Finch Co., 4 USPQ2d 1085 (TTAB 1987) (sufficient quality control
was found in licensing of food mark to delicatessens, even though there was no
written license, by control over the nature and quality of the goods by training
programs, seminars, a training manual, recipe books, periodic inspections and
providing over 80 percent of raw materials used by licensees); Stockpot, Inc. v. Stock
Pot Restaurant, Inc., 220 USPQ 52 (TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ 665

59 25 TTABVUE 52.
60 25 TTABVUE 43.
61 25 TTABVUE 78.
62 45 TTABVUE (confidential Exhibit 34).
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(Fed. Cir. 1984) (held that during a one-year licensing period for restaurant mark,
although lease-license contained inadequate quality control provisions, sufficient de
facto control was shown that there was no decline in quality and no deception of
customers; thus, there was no break in the chain of use for priority purposes);
Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335 (TTAB 1980)
(informal inspection and reliance on reputation of quality standards of toy
manufacturer licensees held sufficient control to prevent partial abandonment of
marks used on mobile homes). Accordingly, Respondent’s claim that he licensed the
marks to Petitioner fails.
The terms of the Asset Purchase Agreement provided for the sale of all assets of
the food truck business. “When a business is sold as a going concern, trademarks and
the good will of the business that they symbolize are presumed to pass with the sale
of the business.” 3 McCarthy on Trademarks and Unfair Competition § 18:37 (4th ed).
See also Loma Linda Food Co. v. Thomson & Taylor Spice Co., 279 F.2d 522, 126
USPQ 261, 262 (CCPA 1960) (agreement that did not specifically mention the
trademark, but conveyed along with the business and tangible property pertaining to
it “all good will” in connection with the goods, was a valid assignment of the mark);
Naclox, Inc. v. Lee, 231 USPQ 395, 399 (TTAB 1986) (when a business is sold as a
going concern, the intent to transfer good will and trademarks to the buyer is
presumed even if the trademarks and good will are not expressly mentioned in the
contract of sale); Harry Fischer Corp. v. Keneth Knits, Inc., 207 USPQ 1019, 1022,
(TTAB 1980) (Since “the business of the Malcolm Kenneth Company, with which the
Cancellation No. 92057023

31

mark was identified, was transferred, the common law rights as well as any statutory
rights exemplified by any existing registrations must necessarily be presumed to have
likewise passed to opposer.”); Stagecoach Properties, Inc. v. Wells Fargo & Co., 199
USPQ 341, 347 (TTAB 1978) (transfer of restaurant property effected transfer of
rights to marks and trade name of restaurant); Sun Valley Co. Inc. v. Sun Valley
Manufacturing Co., 167 USPQ 304, 309 (TTAB 1970) (“[T]he common law rights in a
mark will be presumed to have passed, absent contrary evidence, with the sale and
transfer of the business with which the mark has been identified.”).
Nitsche Enterprises purchased all of the tangible assets of the shrimp truck
business, which was sold as a going concern, and the trademarks and the good will of
the business that they symbolized passed with the sale of the business. Although the
parties apparently intended that they jointly own the state of Hawaii registration for
the “name” GIOVANNI’S ALOHA SHRIMP, this provision was never implemented.63
The record evidence, including the fact that the signage and trucks were specifically
listed as assets sold to Nitsche Enterprises, supports our conclusion that the marks
that symbolized the good will of the business were transferred. Acquiring both the
tangible and intangible assets of the business enabled Nitsche Enterprises to carry

63 It is also possible the Mr. Aragona presumed that his registration of the state of Hawaii
trademark registration vested in him continued ownership of the name. He testified that he
never intended to transfer the registration. 44 TTABVUE 23. However, he characterized it
as a trademark for “Giovanni’s Aloha Shrimp marinade and sauces” and not as a mark cov-
ering food trucks or restaurant services. In any event, the state registration itself contains
the following disclaimer: “Registration of a trademark with the department does not grant
you ownership of the trademark.” 44 TTABVUE 205, Exhibit 6.
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on the business as a going concern, in continuity with the past, as it clearly did.
Naclox, 231 USPQ at 399.
The marks being used in connection with the shrimp truck business at the time
of sale were GIOVANNI’S, GIOVANNI’S ALOHA SHRIMP and GIOVANNI’S
ORIGINAL WHITE SHRIMP TRUCK. Although the Asset Purchase Agreement did
not refer to any mark other than GIOVANNI’S ALOHA SHRIMP, Mr. Nitsche
testified that one of the shrimp trucks bore the mark “GIOVANNI’S” on it when the
trucks were purchased from Mr. and Mrs. Aragona,64 and, the signage bore the
message GIOVANNI’S ORIGINAL WHITE SHRIMP TRUCK. Moreover, Respondent
confirmed that “the original asset agreement like we talked about before said
Giovanni’s Aloha Shrimp, but we discussed all these trademarks and all these marks
were under the same umbrella as far as we were concerned, at least that was
apparent belief that I had.”65
Accordingly, the marks that transferred to Nitsche Enterprises together with the
goodwill of the business at the time of sale were GIOVANNI’S, GIOVANNI’S ALOHA
SHRIMP and GIOVANNI’S ORIGINAL WHITE SHRIMP TRUCK.
B. Were the Marks GIOVANNI’S SCAMPI MARINADE and GIOVANNI'S
HOT & SPICY WE REALLY MEAN IT! SAUCE assumed by the
Hawaiian LLC?

64 Nitsche Test., p 58, Exhibit 11.
65 Aragona Disc. Dep., p. 94, 26 TTABVUE (confidential).
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On October 8, 1998, the Aragonas formed the Hawaiian LLC to bottle and sell
sauce and marinade under the marks GIOVANNI’S ALOHA FOOD; GIOVANNI’S
SCAMPI MARINADE; and GIOVANNI’S HOT & SPICY WE REALLY MEAN IT!
SAUCE.66 In 1999, the Aragonas invited Mr. Nitsche and Mr. Goodrich, together with
his wife Ms. Wong, to invest in the business. Mr. Aragona testified that Mr. Goodrich
recommended they form a limited liability company because they needed an infusion
of cash and “they could have partners with less liabilities.”67 Accordingly, the parties
entered into the Limited Liability Company Member Agreement (i.e., the Member
Agreement).68 By its terms, the LLC began operations on September 15, 1999, but in
essence it was a continuation of the Hawaiian LLC that Respondent had formed. Its
primary purpose was “the manufacture and sale of the LLC’s bottled sauces and
bottling of third party products.”69 There are no provisions expressly relating to
trademarks or service marks, but the intention was for the business to carry on the
sale of products (sauce and marinade) that the Hawaiian LLC had been selling under
the name Giovanni’s Aloha Foods.70 For contributing the “sauce recipes, existing
business contracts, and production equipment,” Mr. and Mrs. Aragona received a 50%
ownership interest in the company and a single voting right. For contributing a

66 The Hawaiian LLC was organized by Respondent and Mr. Goodrich, and named them,
together with Mrs. Aragona and Ms. Wong, as members. On the same date, Respondent and
Mr. Goodrich organized Giovanni’s Aloha Shrimp, L.L.C., naming the same initial members.
67 44 TTABVUE 48.
68 25 TTABVUE 48, Exhibit 9.
69 44 TTABVUE 244.
70 44 TTABVUE 48.
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modest amount of cash and business and legal expertise, Mr. Goodrich and Ms. Wong
together received a shared 25% ownership interest and a single voting right. For
contributing a more significant amount of cash, Mr. Nitsche received an ownership
interest of 25% of the company and one vote. Thus, no single entity, or husband-wife
team, held a majority interest in the company.
Given that the re-formed Hawaiian LLC assumed all the assets and liabilities of
the Aragonas as of September 15, 1999 and continued to maintain the continuity of
use of the marks appurtenant to the business, until its dissolution in 2004 (after
Respondent’s abrupt departure) we find that the marks GIOVANNI’S ALOHA
FOOD; GIOVANNI’S SCAMPI MARINADE; and GIOVANNI’S HOT & SPICY WE
REALLY MEAN IT! SAUCE passed as intangible assets with the rest of the assets
transferred to the Hawaiian LLC concurrent with the execution of the Member
Agreement. The fact that the Aragonas were responsible for the day-to-day
management of the LLC does not change this result. Their purchasing decisions were
limited to expenses under $2,000, they shared one vote out of three, and they held a
50% interest, less than a majority, in the business. Thus, Respondent’s prior rights,
if any, to the flavoring marks were transferred to the Hawaiian LLC.
C. Did Respondent Abandon any Rights to the Marks?
If, on the other hand, Respondent retained any rights in the flavoring marks, the
issue arises whether those claimed rights were subsequently abandoned. Under
Section 45 of the Trademark Act, a mark is deemed abandoned if its use has been
discontinued with intent not to resume use. See 15 U.S.C. § 1127. Evidence of nonuse
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of a mark in commerce for three consecutive years constitutes a prima facie showing
of abandonment and shifts the burden to the party contesting the abandonment to
show either evidence sufficient to disprove the underlying facts showing three years
nonuse, or evidence of an intent to resume during the time period of nonuse. Rivard
v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998); Imperial Tobacco
Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1393 (Fed. Cir. 1990).
Conclusory testimony is not sufficient to demonstrate an intent to resume use of a
mark. Imperial Tobacco, 14 USPQ2d at 1394. Rather, a party defending against a
claim of abandonment must proffer evidence of specific activities demonstrating an
intent to resume use. Id. at 1394-95.
Even if Respondent retained (together with his former wife) ownership interests
in the flavoring marks following the establishment of the Hawaii LLC, he left Hawaii
in 2000 or 2001, moved to New York and ceased using the marks for at least eight
years. Respondent argues that he never intended to abandon the marks; that he
talked to people about starting a truck in Staten Island in 2004 and “hand[ed] out
sauces to people here and there” but he got “very little traction” while in New York.71
In 2008, he reached out to an attorney, Paul H. Saccoccio, to discuss franchising and
starting a bottling company.72 Respondent moved to Florida in 2009,73 and the record
contains evidence of pre-sales activities from 2009 and 2010, and undated pages from

71 44 TTABVUE 59.
72 44 TTABVUE 61.
73 44 TTABVUE 60.
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Respondent’s current website. By 2010, Respondent appears to be taking steps to
bottle and sell his sauces. The first sale likely occurred after June 8, 2010, when Hot
Wachula’s, Inc., a bottling company, started to manufacture and bottle the hot and
spicy sauce and the scampi marinade for Respondent (apparently using the name
“Giovanni’s Aloha Shrimp” instead of the actual name of the Florida LLC, “Giovanni’s
Aloha Food” that was not organized until August 18, 2010).74
Based on Respondent’s evidence of use of the mark, including confidential
statements from Respondent as to his activities during this time, we find that there
were at least four years of non-use, from 2000 to 2004, where Respondent had
discontinued use of the marks with no intent to resume use. Moreover, even though
the Hawaiian LLC continued to sell sauces online from 2001 to 2004,75 Respondent,
by severing his relationship with the company, cannot rely on the company’s use of
the marks through 2004. Thus, the marks stood abandoned until at least 2004, and
Respondent’s intermittent contacts from 2004-2008, his 2009 pre-sales activity and
2010 sales cannot retroactively cure his past abandonment.76

74 44 TTABVUE 69, Exhibit 26 (confidential non-disclosure agreement). See also Exhibit 30,
Articles of Incorporation for Giovanni’s Aloha Food, [sic] Inc. Respondent applied to register
Giovanni’s Aloha Shrimp as a trade name for a Florida sole proprietorship in 2010. Exhibit
25.
75 46 TTABVUE 33; 25 TTABVUE 83.
76 We recognize that Respondent claims to have maintained the domain name giosauces.com
from 1998, but the record copy of the home page for the website indicates it was last modified
on April 5, 2000. 44 TTABVUE 259, Exhibit 28. Moreover, there is no testimony confirming
that the site was actually active. Respondent registered the domain names “gio-
vannisalohshrimp.com” and “giovannissauces.com” in 2010 under his personal name, provid-
ing a Florida address. 44 TTABVUE 67, Exhibit 24.
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Conclusion
After careful consideration of the evidence of record and the parties’ briefs, we
conclude that the Asset Purchase Agreement was an assignment of the marks
GIOVANNI’S, GIOVANNI’S ALOHA SHRIMP and GIOVANNI’S ORIGINAL
WHITE SHRIMP TRUCK and that Petitioner has superior rights in these marks
sufficient to preclude registration by Respondent; that the marks GIOVANNI’S
ALOHA FOOD; GIOVANNI’S SCAMPI MARINADE; and GIOVANNI’S HOT &
SPICY WE REALLY MEAN IT! SAUCE were acquired by the Hawaii LLC pursuant
to the Member Operating Agreement, and even assuming, arguendo, that Respondent
retained any rights to these latter marks, the record supports a finding that
Respondent abandoned whatever rights he had in the marks based on non-use
without intent to resume use between 2000 and 2004. The evidence establishes
Petitioner’s ownership with respect to the marks GIOVANNI’S, GIOVANNI’S
ALOHA SHRIMP and GIOVANNI’S ORIGINAL WHITE SHRIMP TRUCK, and that
these marks are confusingly similar in appearance, pronunciation, connotation and
commercial impression to the registered marks GIOVANNI’S SCAMPI MARINADE
and GIOVANNI’S HOT & SPICY WE REALLY MEAN IT! SAUCE. Like Petitioner’s
marks, the registered marks are dominated by the name GIOVANNI’S. It is the first
word in the marks, see Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (“Veuve” is the most
prominent part of the mark VEUVE CLICQUOT), and the other words in the marks
are either generic for the goods (“scampi marinade” and “sauce”) or refer to their
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flavor (“hot and spicy we really mean it”). “That a particular feature is descriptive [or
otherwise lacking in distinctiveness] ... with respect to the involved goods or services
is one commonly accepted rationale for giving less weight to a portion of a mark...”
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Nonetheless, we must view the marks in their entireties, recognizing that it is the
impression created by the involved marks as a whole that is important. See Kangol
Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992).
Viewed in their entireties, we find that the marks are confusingly similar in terms of
their appearance, pronunciation, connotations and overall commercial impressions.
The goods and services are highly related and travel in the same channels of trade to
the same classes of consumers. As previously stated, there is no real dispute that a
likelihood of confusion would result from continued use of the marks by both parties
for their respective goods and services. Accordingly, Respondent is not entitled to
maintain the registrations.
Decision: The petition to cancel Reg. Nos. 4248595, 4224400, 4220686 and
4232569 is granted under Section 2(d).77

77 Having determined that Respondent is not entitled to registration under Trademark Act §
2(d), we need not address the remaining claims for cancellation.