Pending trademark applications for the RAMEN HOOD mark filed by Ramen Hood, LLC, a California company, were suspending in view of earlier-filed trademark applications for RAMEN HOOD composite word-and-design marks filed by Ramenhood LLC, an Arizona company. Both applications were for restaurant services.

When the earlier-filed intent-to-use (“ITU”) applications for the RAMEN HOOD composite word-and-design marks were published for opposition, the California company opposed them under Section 2(d) for likelihood of confusion. Ramen Hood, LLC v. Ramenhood LLC, Opposition Nos. 91254894 and 91256310 (TTAB Jan. 24, 2023).

For an inter partes opposition, the opposer must establish its entitlement to a statutory cause of action based upon a reasonable belief it will suffer damage to the zone of interests protected by the statute, 15 U.S.C. § 1063. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *6-7 (Fed. Cir. 2020), cert. denied, 141 S. Ct. 2671 (2021).

Here, the California company's suspended trademark applications established its entitlement to a statutory cause of action. See, e.g., Rapid Inc. v. Hungry Marketplace, Inc., 2022 USPQ2d 678, at *11 (TTAB 2022) (entitlement found where opposer's application suspended pending disposition of subject application which was cited as a potential bar); Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d 1953, 1959 (TTAB 2008) (“Opposer's evidence of its pending trademark application, and evidence that the application has been suspended pending resolution of the subject application demonstrate that opposer has a reasonable belief that it would be damaged by registration of applicant's mark, thus establishing [entitlement].”).

Further, Opposer's sole and managing member Rahul Khopkar, testified that Opposer has used the name RAMEN HOOD for a restaurant in Los Angeles featuring Asian-themed cuisine including ramen and noodles continuously since 2015.

Rahul Khopkar

To prevail, the opposing California company needed to prove that it has priority in the use of its pleaded mark and that use of Applicant's marks is likely to cause confusion, mistake, or deception as to the source or sponsorship of Opposer's services, by a preponderance of the evidence. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000); DeVivo v. Ortiz, 2020 USPQ2d 10153, *3 (TTAB 2020) (sustaining opposition based on common law trademark rights).

The California company asserted that it had common law rights in the RAMEN HOOD mark for restaurant services featuring Japanese cuisine prior to Arizona company's constructive first use dates based on ITU applications filed in December 2017 and April 2018, respectively.

The unchallenged testimony and corroborating documentary evidence submitted by the California company, however, established that it had common-law rights in the distinctive RAMEN HOOD mark in connection with Asian-themed restaurant services as early as November 6, 2015, which was prior to either of Applicant's constructive dates of first use. Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965) (oral testimony alone of a single, credible witness is enough to establish common law use of a mark for the identified goods or services). Accordingly, the TTAB found that the California company established its priority over the Arizona company's 2017 and 2018 constructive use dates.

The TTAB then found that—in view of the similar marks, and their identical in part services and inherently related goods which travel in the same or overlapping channels of trade to the same classes of ordinary consumers who consume inexpensive fast casual Asian-themed cuisine—confusion was likely.

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.