Precedential No. 26: TTAB Denies "HAPPIEST HOUR" Cancellation Petition for Failure to Prove Priority Via Technical or Analogous TM Use

Petitioner JNF LLC was undoubtedly unhappy with the result of its petition to cancel a registration for the mark HAPPIEST HOUR for bar and restaurant services. JNF claimed prior use of THE HAPPIEST HOUR for the identical services, but it failed to prove priority. Its evidence regarding its first rendering of services under the mark was "characterized by contradictions, inconsistencies, and indefiniteness." Its claim of use analogous to trademark use failed because its prior publicity "was not sufficiently clear, widespread and repetitive."  JNF LLC v. Harwood International Incorporated, 2022 USPQ2d 862 (TTAB 2022) [precedential] (Opinion by Judge David K. Heasley).

Registrant Harwood International enjoyed a constructive first use date of October 6, 2014, the filing date of its underlying application. Opposer JNF had filed an application to register its mark, with a claimed first use date "at least as early as October 10/00/2014." The Board noted that, when a specific day is not given, the USPTO, for examination purposes, presumes that the first use date is the last day of the month stated. TMEP Section 903.06 (2022).

After the registration was cited against JNF's application, JNF amended its alleged first use date to September 7, 2014 and then filed this petition for cancellation, "claiming prior use based on the amended date."

Technical Trademark Use: Normally, a cancellation petitioner must prove priority by a preponderance of the evidence. But when a party claims a first use date earlier that what it alleged in its application, "that is considered a change in position, contrary to the admission it made against interest at the time it filed the application; in these circumstances its proof of the earlier date must be clear and convincing." Hydro-Dynamics v. Putnam, 1 USPQ2d at 1773-74 (heavier burden imposed where applicant seeks to prove date of first use earlier than stated in its application) (citing Elder Mfg. Co. v. Int’l Shoe Co., 194 F.2d 114, 92 USPQ 330, 332 (CCPA 1952) and Stanspec Co. v. Am. Chain & Cable Co., 531 F.2d 563, 567, 189 USPQ 420, 424 (CCPA 1976)).

Declaration testimony may be considered clear and convincing evidence.  However, "[s]uch testimony should not be characterized by contradictions, inconsistencies, and indefiniteness, but should carry with it conviction of its accuracy and applicability." Elder Mfg. v. Int’l Shoe, 92 USPQ at 332; Baker v. Lebow, 66 USPQ at 236; see also Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1036 (TTAB 2010).

Petitioner JNF submitted two testimonial declarations, one from its CEO and the other from a friend of the CEO. Petitioner claimed that its restaurant had a "soft opening" in September 2014, with the mark THE HAPPIEST HOUR displayed on signage, but its evidence was "contradictory, inconsistent, and indefinite." Several press releases were issued at that time, but they did not constitute service mark use. Moreover, several restaurant reviews published in late October 2014 suggested that the restaurant opened on October 31, 2014.

Advertising and preparatory measures, such as taking reservations, may precede the rendering of services, but they are not the same as rendering those services." (Emphasis by the Board). The statutory language of Section 45 requires that the services be "rendered" under the mark in order to qualify as service mark use. See Couture v. Playdom, 113 USPQ2d at 2043-44; accord Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab., 123 USPQ2d at 1029 (“mere preparation and publication of future plans do not constitute use in commerce”); Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1307 (Fed. Cir. 2009) (“Mere adoption (selection) of a mark accompanied by preparations to begin its use are insufficient for claiming ownership of and applying to register the mark.”); Mars Generation v. Carson, 2021 USPQ2d 1057, at *21.

The Board observed that "[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. Am. Hygienic Labs. Inc. v. Tiffany & Co., 12 USPQ2d 1979, 1984 (TTAB 1989). And so it found that JNF had failed to prove prior service mark use.

Analogous Use: Mere advertising without the rendering of services would not constitute "technical trademark use" that would support an application to register, but in some circumstances it could be 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); Shalom Children’s Wear Inc. v. In-Wear A/S, 26 USPQ2d 1516, 1519 (TTAB 1993).

However, the party claiming analogous use must show prior use sufficient to create an association in the minds of the purchasing public between the mark and the petitioner’s services. See T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1883 (Fed. Cir. 1996). And it must do so by a preponderance of the evidence.

JNF's evidence consisted of a Sept. 7, 2014 press release, a September 2, 2014 New York Times article, and an August 24, 2014 article at Grubstreet.com. As to the press release, there was no information as to who received it or how many potential customers it reached. As to the two articles, they were not advertisements, and the mark was buried in the body of the articles. The Board was unimpressed.

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.

And so, the Board concluded that JNF failed to prove prior analogous use by a preponderance of the evidence.

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TTABlogger comment: No chance of a concurrent registration for the NY outfit. That would require technical trademark use before the registrant's filing date.

Text Copyright John L. Welch 2022.