JIPC Management, Inc. v. Incredible Pizza Co., Inc.

• Decision Date: 29 December 2017
• Docket Number: 91170452
• Court: Trademark Trial and Appeal Board
• Parties: JIPC Management, Inc. v. Incredible Pizza Co., Inc.

JIPC Management, Inc. v. Incredible Pizza Co., Inc.

No. 91170452

United States Patent and Trademark Office, Trademark Trial and Appeal Board

December 29, 2017

THIS OPINION IS NOT A PRECEDENT OF THE TTAB

Anne W. Glazer of Stoel Rives LLP for JIPC Management, Inc.

Mary M. Clapp of Clapp Business Law LLC for Incredible Pizza Co Inc.

Before Kuhlke, Shaw, and Larkin, Administrative Trademark Judges.

OPINION

Shaw Administrative Trademark Judge.

Incredible Pizza Co., Inc. ("IPC" or Respondent) is the owner of Registration No. 2500872^[1]

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for the mark: for "Restaurant services" in International Class 42. IPC has disclaimed "Pizza Co."^[2]IPC also owns Application Serial No 78575077^[3] for the mark:

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for services identified as "Restaurant franchising franchising, namely consultation and assistance in business management, organization and promotion; franchising, namely, offering technical assistance in the establishment and/or operation of restaurants" in International Class 35. IPC has disclaimed "America's" and "Pizza Company." The mark is described as follows: "The mark consists of a sector with the words 'America's' 'Incredible Pizza Company'; rectangular background with the words 'Great Food, Fun, Family, & Friends'; checkerboard design; and ribbon design."

In its petition for cancellation and notice of opposition, JIPC Management, Inc. (Petitioner) alleges priority of use and likelihood of confusion with its marks, as well as fraud on the USPTO in connection with Respondent's applications to register its marks. Petitioner claims ownership of the following relevant registrations:

• Registration No. 3025377 for the mark JOHN'S INCREDIBLE PIZZA CO. in standard characters for services identified as "Restaurant services" in International Class 43, issued December 13, 2005 and claiming a date of first use in commerce and anywhere as early as September 1997, "PIZZA CO." disclaimed; and

• Registration No. 3058427 for the mark JOHN'S INCREDIBLE PIZZA CO. in standard characters for services identified as "Entertainment services, namely, providing play areas, miniature golf, laser tag, bumper cars, arcade games, prize redemption games, and arcade rides; providing coin operated video games in the nature of an amusement arcade; providing continuous music video pre-recorded video broadcasts via television" in International Class 41, issued February 14, 2006 and claiming a date of first use in commerce and anywhere as early as September 1997, "CO." disclaimed.

I. Procedural History

Because of the lengthy history of these proceedings we first provide a summary of them. The petition to cancel Registration No. 2500872 was filed on May 21, 2004.^[4]The Notice of Opposition against Application Serial No. 78575077 was filed on April 19, 2006.^[5] The proceedings were consolidated by the Board on December 4, 2006 upon Petitioner's motion.^[6] After the close of the testimony periods, briefing was completed, with the final brief being filed on July 10, 2008.^[7] During the briefing, however, Petitioner filed a civil action alleging trademark infringement and unfair competition in the U.S. District Court for the Central District of California. Shortly after the briefing concluded, Respondent filed a motion to suspend the Board proceedings pending the outcome of the district court case.^[8] The Board granted the motion and suspended the proceedings on November 24, 2008, noting that "inasmuch as the civil action clearly involves the same parties and the same marks, it appears that the civil action will likely 'have a bearing' on the case before the Board."^[9] Proceedings remained suspended until the completion of the district court case, whereupon proceedings resumed and supplemental briefing was ordered to address any issues determined in the civil action.^[10] Supplemental briefing was completed on October, 6, 2016, ^[11] and the case has been submitted on brief. The district court case is discussed infra.

II. Evidentiary Objections

Each party has filed a number of objections against certain testimony and evidence introduced by its adversary. We have considered each objection. Ultimately, the Board is capable of weighing the relevance and strength or weakness of the objected-to testimony and evidence in this case, including any inherent limitations, which preclude the need to strike the challenged testimony and evidence if the objection is well-taken. Given the circumstances, we choose not to make specific rulings on each and every objection. We have accorded the testimony and evidence whatever probative value it merits, keeping the parties' objections in mind, and comment as needed on its probative value elsewhere in the opinion. See Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 U.S.P.Q.2d 1750, 1755 (TTAB 2013), aff'd mem., 565 Fed.Appx. 900 (Fed. Cir. 2014); Kohler Co. v. Baldwin Hardware Corp., 82 U.S.P.Q.2d 1100, 1104 (TTAB 2007). See also Krause v. Krause Publ'ns Inc., 76 U.S.P.Q.2d 1904, 1907 (TTAB 2005) ("Where we have relied on testimony to which respondent objected, it should be apparent to the parties that we have deemed the material both admissible and probative to the extent indicated in the opinion.").

III. The Record

The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the involved registration and application. In addition, the parties introduced the following items into evidence, either by stipulation or by notice of reliance.

Petitioner's Evidence:

1. The deposition testimony of John Parlet, Petitioner's founder and CEO, with exhibits thereto;

2. The deposition testimony of Richard Barsness, Respondent's founder and CEO, with exhibits thereto;

3. The deposition testimony of Cheryl Barsness, the wife of Richard Barsness and co-owner of Respondent, with exhibits thereto;

4. Petitioner's notice of reliance, including, inter alia, status and title copies of Petitioner's trademark registrations, news articles, customer emails and business records, ^[12] discovery responses, third-party trademark registrations purporting to show the relatedness of the parties' services, and documents from unrelated litigation involving Respondent; and

5. The declaration of Steven E. Klein, Petitioner's attorney, regarding the California district court case, with exhibits attached thereto, including, inter alia, copies of the parties' pleadings, orders of the district court, trial transcripts, and Findings of Fact and Conclusions of Law.

Respondent's Evidence:

1. The deposition testimony of Larry Abbe, Respondent's President, with exhibits thereto;

2. The deposition testimony of Richard Barsness, with exhibits thereto;

3. Respondent's notice of reliance, including, inter alia, discovery responses, trademark registrations and other evidence purporting to show third-party use of the term "incredible" in connection with food as well as restaurant and entertainment services; and

4. The Declaration of Mary Clapp, Respondent's attorney, regarding the California district court case, with exhibits attached thereto, including, inter alia, trial exhibits and transcripts.

IV. The Parties

The parties are restaurant companies operating all-you-can-eat pizza buffets within entertainment complexes featuring video games, miniature golf, and bumper cars. John Parlet is the founder and CEO of Petitioner. Richard Barsness is the founder of Respondent. Prior to either parties' opening of their current pizza and entertainment complexes, Parlet and Barsness had a business relationship and cooperated in other restaurant-related ventures. Following the opening of their pizza and entertainment complexes, however, Parlet's and Barsness' relationship soured due to the present trademark dispute.

V. The District Court Case

Before turning to the merits of this proceeding, and because the present record includes evidence, findings, and rulings made in the district court case (see Trademark Rule 2.122(f)), it is necessary to review the course of the district court case which relates to the issues involved herein. As discussed supra, Board proceedings were suspended pending the final outcome of the civil action between Petitioner and Respondent. The district court case involved, in relevant part, a jury trial on trademark infringement, and a bench trial on Respondent's affirmative defenses of unclean hands and trademark misuse, as well as damages and attorney's fees.^[13]

The jury trial resulted in a verdict in Petitioner's favor on the claim of infringement with damages awarded in the amount of $112, 500.^[14] However, inasmuch as the parties' overlapping use of their marks occurred only for a limited period of time in limited geographic regions, the jury was instructed to consider infringement only as to the time period after March 2008 in the states of California, Nevada, Arizona, Oregon, and Washington.^[15] In addition, Respondent's use of the mark involved only franchising services because Respondent did not operate restaurants in California, Nevada, Arizona, Oregon, and Washington.^[16] Thus, the issues before the district court jury, particularly those relating to the parties' use of their marks, were significantly narrower than those before us.

Following the jury's verdict, a bench trial was held on Respondent's affirmative defenses of unclean hands and trademark misuse, as well as damages and attorney's fees after which the court issued its Findings of Facts and Conclusions of Law. The court found, inter alia, that Petitioner's first John's Incredible Pizza Co. restaurant opened in Victorville, California in September 1997, that Petitioner owns service mark registrations for JOHN'S INCREDIBLE PIZZA CO., that Respondent failed to prove its...