In an opposition or cancellation for likelihood of confusion under Section 2(d) that hinges on an earlier priority date of first use, “proof of such earlier date must be clear and convincing and oral testimony given long after the date sought to be proved must be carefully scrutinized.” Rockwood Chocolate Co. v. Hoffman Candy Co., 372 F.2d 552, 152 USPQ 599, 600 (CCPA 1967); see also Elder Mfg. Co. v. Int'l Shoe Co., 194 F.2d 114, 92 USPQ 330, 332–3 (CCPA 1952) (“Moreover, oral testimony given long after the event, while entitled to consideration, should be carefully scrutinized, and, if it does not carry conviction as to its accuracy and applicability, it should not be sufficient to successfully establish a date of first use prior to that alleged in the trade-mark application.”); Cont'l Gummi-Werke AG v. Continental Seal Corp., 222 USPQ 822, n.4 (TTAB 1984) (“It is true that it has often been held that a party who seeks to show an earlier date of use than that claimed in its application or registration is under a ‘heavy burden' in that the proof must be clear and convincing….”).

HAPPIEST HOUR Cancellation Proceeding

In JNF LLC v. Harwood International Inc., Cancellation No. 92070634, 2022 USPQ2d 862 (TTAB Sept. 21, 2022), the TTAB found the testimony in support of an earlier priority date for using THE HAPPIEST HOUR mark in connection with “bar and restaurant services” was “characterized by contradictions, inconsistencies, and indefiniteness.”

JNF petitioned to cancel Registration No. 50008661 for the HAPPIEST HOUR mark which had been cited to refuse JNF's trademark application for THE HAPPIEST HOUR. Both were for “bar and restaurant services.”

JNF initial claimed a date of first use at least as early as the end of October 2014, but later asserted a date of September 7, 2014 because the earlier-filed registration had a constructive date of first use of October 6, 2014.

Inconsistent Priority Date Testimony

JNF relied on the testimonial declaration of its CEO to establish this earlier September date as a “soft opening” prior the “official” grand opening in October. Press releases and newspaper articles were submitted as corroborating evidence.

At the CEO's deposition, however, he could not “remember” whether restaurant and bar services were provided on September 7, 2014, and “eventually explained that the restaurant was only offering reservations then.”  He then “testified that the soft opening began a week after September 7th,” with over 200 menus printed, and external signage for THE HAPPIEST HOUR restaurant. But when shown an October 2014 Google Street View image of the restaurant location that showed no external sign, and he could not explain why.

The TTAB found that the CEO's testimony with respect to the external signage “crumbled under cross-examination.”

          Unlike Peterson v. Awshucks, 2020 USPQ2d 11526, at *16, where “the evidence of record, including the testimony and documentary evidence, shows use of the mark at the King Street location on window signs, and on menus…,” Petitioner's evidence that it displayed its mark on the restaurant premises during the soft opening is contradictory, inconsistent, and indefinite. See Martahus v. Video Duplication Svcs., 27 USPQ2d at 1852 n. 7 (“VCDS has not provided in the record before us clear and convincing evidence that VCDS installed a sign bearing the ‘VCDS' mark at its office prior to May 1, 1985, or that such an installation would have amounted to service mark use.”).

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          Advertising and preparatory measures, such as taking reservations, may precede the rendering of services, but they are not the same as rendering those services.

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          Petitioner's testimony, offered years after the fact, is impaired by its owner's lack of knowledge of key aspects of his business and his lack of credible corroborating documentation. His testimony “carries no conviction of its accuracy and is grossly evasive, inconsistent, and self-serving.” Fuji Med. Instruments Mfg. Co., Ltd., 2021 USPQ2d 831, * 28 (TTAB 2021) (citing Baker v. Lebow, 66 USPQ at 236). Testimony 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. Am. Hygienic Labs. Inc. v. Tiffany & Co., 12 USPQ2d 1979, 1984 (TTAB 1989). “In addition, we cannot ignore [Petitioner's] lack of any records or other documentation corroborating [its] testimony…. The presence of business records would strengthen the case that these transactions occurred in the ordinary course of trade, and the absence of such records does the opposite.” Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1053 (TTAB 2017); Elder v. Int'l Shoe, 92 USPQ at 333 (“Oral testimony is obviously strengthened by corroborative documentary evidence.”).

With respect to the menus, the TTAB noted that the CEO “did not testify that the 200 menus bore the mark THE HAPPIEST HOUR.” With respect to the September 22, 2014 draft menu that JNF had introduced into the record, the CEO “did not testify that that draft menu was shown to the soft opening guests in that form,” and “did not recall who printed the menus; and he was still deciding on various brand logos and styles that month.”

JNF also submitted the declaration of a college friend of the CEO, stating that he ordered food and drink at THE HAPPIEST HOUR “prior to October 6, 2014.” But, at his deposition, he could not recall why his declaration specifically mentioned October 6th. He did, however, understand that the “soft opening” was for friends and family.

The TTAB also found the testimony of the college friend to be “conclusory.” He offered “no explanation of how the mark was displayed, if at all, in connection with restaurant and bar services, or whether his recollection is simply retrospective, identifying what he now knows to be THE HAPPIEST HOUR restaurant and bar.”

Rather than clear and convincing of an earlier date of first use for priority, the TTAB found JNF's evidence to be “characterized by contradictions, inconsistencies, and indefiniteness.”

Nor Analogous to Trademark Use

In the alternative, 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. Malcolm Nicol & Co. v. Witco Corp., 881 F.2d 1063, 11 USPQ2d 1638, 1639 (Fed. Cir. 1989); L. & J.G. Stickley, Inc. v. Cosser, 81 USPQ2d 1956, 1968 (TTAB 2007).

Analogous use is any non-technical use of a mark, such as advertising or similar pre-sale activities, sufficient to create in the mind of the relevant public an association between the goods and their source. Central Garden & Pet Co. v. Doskocil Mfg. Co., Inc., 108 USPQ2d 1134, 1142 (TTAB 2013). To establish priority, analogous use must have substantial impact on the purchasing public and create the necessary association in the mind of the consumer. T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1882 (Fed. Cir. 1996). For example, such “advertising of sufficient clarity and repetition . . . must have reached a substantial portion of the public that might be expected to purchase the service.” Id. at 1883. Analogous use would need to be proven by a preponderance of the evidence.

Here, information about the opening of the restaurant was “buried” in the body of articles discussing one or two dozen other restaurants. See Old Swiss House, Inc. v. Anheuser-Busch, Inc., 569 F.2d 1130, 196 USPQ 808, 810 (CCPA 1978). Nor could the CEO recall any public response to the restaurant's press release.

The TTAB found that the alleged 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.”

Thus, the TTAB denied JNF's petition to cancel Registration No. 5008661 for the HAPPIEST HOUR mark.

The trademark attorneys at Thomas P. Howard, LLC enforce trademarks or defend against infringement nationwide including in Colorado.