CAFC Affirms TTAB: Opposer's Testimony Declaration Deemed Timely and Sufficient to Prove Priority

In a precedential ruling, the CAFC affirmed the Board's decision sustaining a Section 2(d) opposition to registration of the mark #TODECACHO for hair combs on the ground of likelihood of confusion with Opposer Framboise Holdings Inc.'s common law mark shown below, for shampoo and other hair products. Applicant Jalmar Araujo argued that the Board abused its discretion when it extended Framboise's testimony period on the last day, and further that the Board's finding of priority in favor of Framboise was unsupported by substantial evidence. The CAFC disagreed. Jalmar Araujo v. Framboise Holdings Inc., 2024 USPQ2d 791 (TTAB 2024) [precedential].

Four days after requesting an extension of the trial period by seven days, Framboise filed the testimony declaration of its Director, Adrian Extrakt. The Board granted the motion, finding that the few days of delay was minimal and that Framboise had met the applicable good faith standard. The Board then concluded that the Extrakt declaration was sufficient to prove prior use because it was clear, convincing, and uncontradicted.

Abuse of Discretion: The CAFC looked to FRCP 60(b) and to the TBMP [that's not the law - ed.] in observing that, when a party seeks an extension of time before the closing of a time period, the Board may grant the motion for good cause shown. "[T]he Board is liberal in granting extensions of time before the period to act has elapsed, so long as the moving party has not been guilty of negligence or bad faith and the privilege of extensions is not abused.” Am. Vitamin Prods. Inc. v. Dowbrands Inc., 22 U.S.P.Q.2d 1313, 1314 (T.T.A.B. 1992). The TBMP further provides that “[a] motion to extend must set forth with particularity the facts said to constitute good cause for the requested extension.” TBMP § 509.01(a).

Araujo argued that Framboise failed to allege facts that constituted good faith, and therefore that the Board abused its discretion in granting the extension. Not so, said the CAFC. The Board examined the record, found no evidence of bad faith or negligence, and noted that this was Framboise's first request for extension, that Framboise had submitted the bulk of its evidence during the original testimony period, and that the four-day delay in filing was "minimal." The CAFC deemed those findings "not clearly erroneous."

The court also found that, although Framboise's motion did not provide "the particular facts surrounding the need for an extension," email correspondence attached to Araujo's response to the motion indicated that Framboise "was experiencing an unexpected delay."

The CAFC concluded that the Board applied the correct good cause standard and reasonably found good cause to grant the extension, and so, it did not abuse its discretion.

Proof of Priority: The Board's determination of priority is a question of fact reviewed for substantial evidence. Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab., 859 F.3d 1023, 1028 (Fed. Cir. 2017). Araujo maintained that Framboise’s priority date was not supported by substantial evidence "because the Board relied on the testimony of a single interested witness, Extrakt, and that his declaration was merely naked general assertions of prior use."

The Board had found the Extrakt Declaration to be "clear, convincing, and uncontradicted." It included a list of products and specific dates of first use, along with representative examples of the mark as display on products in stores. Araujo did not offer any evidence nor did he depose Extrakt.

When presented with the evidence provided in the Extrakt declaration and nothing to contradict it, a reasonable mind could conclude that Framboise had established its priority date by a preponderance of the evidence. The Board’s decision finding that Framboise was entitled to a priority date of March 24, 2017, was therefore supported by substantial evidence. See Powermatics, Inc. v. Globe Roofing Prods. Co., Inc., 341 F.2d 127, 130 (CCPA 1965) ("[O]ral testimony, if sufficiently probative, is normally satisfactory to establish priority of use in a trademark proceeding ....").

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TTABlogger comment: Precedential? Nothing new here. Not likely that the granting of a one-week extension of time would be overturned, since the Board and the court prefer to decide cases on the merits.

Text Copyright John L. Welch 2024.