In First Stage of Cancellation Proceeding, TTAB Finds Discontinuance of Use of RASCAL HOUSE for Restaurant Services

The parties to this cancellation proceeding opted to litigate the case under the Accelerated Case Resolution (ACR) regime. In accordance with the parties' stipulation, the case was divided into two stages, the first stage addressing the issue of whether Respondent Jerry's Famous Deli had ceased use (for purposes of Section 45) of the registered marks RASCAL HOUSE, WOLFIE COHEN’S RASCAL HOUSE, and the word-and-design mark shown below, for restaurant services. The Board concluded that Jerry's had indeed stopped using the mark. The case will now proceed to the second stage, in which the Board will consider whether Jerry's intended to resume use of the mark, in which case Jerry's will avoid abandonment. Rascal House, Inc. v. Jerry’s Famous Deli, Inc., Cancellation Nos. 92075125, 92075180, and 92075185 (September 30, 2023) [not precedential] (Opinion by Judge David K. Heasley).

The Board found that Jerry's evidence purporting to show use of the three marks for restaurant services failed to pass mustard muster. Petitioner did not challenge any of the evidence showing display of the RASCAL HOUSE marks on Jerry's Deli menus and on advertising while the RASCAL HOUSE restaurants were operating.

But when the RASCAL HOUSE restaurants closed, Respondent no longer rendered services under the RASCAL HOUSE marks. It may have continued to display the RASCAL HOUSE marks at its other establishments, but the necessary second element—that of rendering the services under the RASCAL HOUSE marks—was missing.

Jerry's continuing display of the marks "does not constitute rendering of restaurant or carry-out/take-out services under the RASCAL HOUSE marks. It constitutes, at most, an attempt to take advantage of residual good will in a past iconic brand in connection with services rendered under other brands, such as JERRY’S or EPICURE."

The Board noted that there was no representation that services were being rendered under the RASCAL HOUSE RASCAL HOUSE in any part of the JERRY’S restaurant. The JERRY’S menu simply alluded to RASCAL HOUSE as another concern owned and operated by Respondent:

Respondent discontinued its use of all three RASCAL HOUSE marks in 2008, within the meaning of Section 45 of the Trademark Act, 15 U.S.C. § 1127. Consequently, for purposes of Stage Two, Respondent’s position on non-abandonment shall be limited to whether it intended to resume use of its marks.

The Board noted that this decision is final as to the issue addressed but cannot be appealed. A final, appealable decision will be rendered after Stage Two of the proceeding.

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TTABlogger comment: Good idea, this bifurcation.

Text Copyright John L. Welch 2023.