IP Law Daily, TRADEMARK—TTAB: Restaurant fails to show technical or analogous trademark use for cancellation of registered mark, (Sep 23, 2022)

By Donielle Tigay Stutland, J.D.

TTAB denied a request for cancellation of the registered mark HAPPIEST HOUR; the owner of the restaurant THE HAPPIEST HOUR’s evidence of priority was contradictory, inconsistent, and indefinite.

In a precedential opinion, the Trademark Trial and Appeal Board has rejected a request by JNF LLC, owner of the restaurant THE HAPPIEST HOUR, to cancel the registered mark HAPPIEST HOUR for “bar and restaurant services” in International Class 43, on the basis of a likelihood of confusion, finding that the petitioner failed to prove technical or analogous use of its mark prior to the Respondent’s registration date. The Board found that the evidence offered by the petitioner to show priority of use for the mark was “contradictory, inconsistent, and indefinite,” and the Board denied the request for cancellation of the previously registered mark (JNF LLC v. Harwood International Inc., September 21, 2022, Heasley, D.).

Background. Harwood International Inc. applied to register the mark HAPPIEST HOUR on for “bar and restaurant services” in International Class 43 on October 6, 2014, and the mark was registered on July 26, 2016. On May 1, 2018, Petitioner JNF LLC applied to register the mark THE HAPPIEST HOUR in for “restaurant and bar services” in International Class 43. In its application, Petitioner claimed to have first used the mark anywhere and in commerce “at least as early as 10/00/2014.” When the examining attorney issued an office action notifying the Petitioner of the earlier application, Petitioner amended its claimed date of first use anywhere and in commerce to September 7, 2014.

Petitioner filed to cancel Respondent’s registration based on a likelihood of confusion. Respondent answered by acknowledging the likelihood of confusion but denying that Petitioner has established priority in the the mark.

Actual use. The Board began by noting that the Respondent has a constructive first use date of October 6, 2014, the filing date of the registered mark. Additionally, given that the Petitioner amended its application after being “confronted with Respondent’s registration”, the Board indicated that Petitioner must accordingly prove its amended September 7, 2014, date of first use by “clear and convincing evidence.”

The Petitioner offered testimony of the CEO of the LLC that opened the restaurant, as well as a “college friend” of the CEO, who both testified that while the “official” grand opening of THE HAPPIEST HOUR was in October 2014, it had an earlier “soft opening,” and provided restaurant and bar services starting on September 7, 2014. However, the Board noted that the testimony and declarations of both witnesses was not “clear and convincing.” Rather, the testimony was “characterized by contradictions, inconsistencies, and indefiniteness.” Both men conceded they didn’t recall the exact date of the “soft opening.” Additionally, Respondent’s attorneys were able to poke holes in some of the testimony, such as the declaration by a witness that signage was up prior to the opening in October, when Google Maps images from after Respondent’s filing date reflected no signage was up on the building.

The Petitioner also presented a press release dated September 7, 2014, as well as two September news articles regarding the opening of the restaurant as evidence of the earlier priority date. However, the Board rejected this as evidence of actual use, finding that the press release was not supported by any declarations and was deemed to be inappropriate for a notice of reliance, as was not a printed publication available to the general public in libraries or of general circulation among members of the public. However, the Board concluded that the two September news articles should be given weight as analogous use.

The Board pointed to other evidence which showed an actual October 2014 opening: including, a restaurant review published on October 22, 2014, which stated “Acme’s Jon Neidich Opens His Retro Tropical Bar The Happiest Hour Next Week in the Village;” an October 29, 2014, a Zagat article suggesting a recent opening; and THE HAPPIEST HOUR’s October 31, 2014 Facebook posting stating “We’re now open!” The Board concluded that that evidence was inconsistent with Petitioner’s claim that its restaurant was open earlier than Respondent’s October 6, 2014, application date. Wrote the Board, ”[t]estimony regarding events from years before, uncorroborated by documents showing use of the mark before the critical date, is insufficient to prove a prior date of use by clear and convincing evidence.”

Analogous use. The Board next looked at whether there was analogous use of the mark, noting, “mere advertising without rendering services under the mark would not constitute technical trademark use sufficient to support registration of the mark; but it could, in some circumstances, constitute use analogous to technical trademark use, sufficient to prove priority in an inter partes proceeding.”

The Board defined analogous use as: “any non-technical use of a mark which is sufficient to create in the mind of the relevant public an association between the goods and their source. … Thus, even before proper trademark use commences, advertising or similar pre-sale activities may establish priority if they create the necessary association in the mind of the consumer.”

The Petitioner had the burden of showing that its prior use was sufficient to create an association in the minds of the purchasing public between the mark and the Petitioner’s services. The Petitioner offered two news articles that were published in September 2014 to show analogues use. The Board indicated that while the September 2014 articles “were not advertisements per se but news articles,” even if they are treated as “in effect, press releases” the mark THE HAPPIEST HOUR “was buried in the body of the articles.” The Board determined that the Petitioner’s prior publicity was not sufficiently “clear, widespread and repetitive” to create the required association in the minds of the potential purchasing public, between the mark as an indicator of a particular source and the service to become available later. The Board determined that the Petitioner failed to prior prove analogous use by a preponderance of the evidence.

The Board rejected the request to cancel Respondent’s mark.

The Case is Serial No. 92070634.

Attorneys: Andrew D. Skale (Popeo PC) for JNF LLC. Andy Nikolopoulos (Fox Rothschild LLP) for Harwood International Inc.

Companies: JNF LLC; Harwood International Inc.

Cases: Trademark USPTO