West Florida Seafood, Inc. v. Jet Restaurants, Inc., 93-1377

• Decision Date: 25 July 1994
• Docket Number: No. 93-1377,93-1377
• Citation: 31 USPQ2d 1660,31 F.3d 1122
• Parties: 1994 Copr.L.Dec. P 27,282, 31 U.S.P.Q.2d 1660 WEST FLORIDA SEAFOOD, INC., Appellant, v. JET RESTAURANTS, INC., Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1122

31 F.3d 1122

1994 Copr.L.Dec. P 27,282, 31 U.S.P.Q.2d 1660

WEST FLORIDA SEAFOOD, INC., Appellant, v. JET RESTAURANTS, INC., Appellee.

No. 93-1377.

United States Court of Appeals Federal Circuit.

July 25, 1994.

Charles A. McClure, Tampa, FL, submitted for appellant.

Before ARCHER, Chief Judge, ^* RICH and NEWMAN, Circuit Judges.

RICH, Circuit Judge.

West Florida Seafood, Inc. (West) appeals the February 9, 1993, decision of the Trademark Trial and Appeal Board (TTAB) denying West's petition to cancel the service mark registration "FAST EDDIE'S FAMOUS HAMBURGERS" for restaurant services, Reg. No. 1,464,008, owned by Jet Restaurants, Inc. (Jet). ¹ We reverse and remand.

I. BACKGROUND

A. TTAB Proceedings

West, d/b/a FAST EDDIE'S PLACE, filed an application with the U.S. Patent and Trademark Office (PTO) on March 17, 1987, to register the mark "FAST EDDIE'S" ² for restaurant services, alleging a date of first use of February 2, 1981. In a communication mailed July 19, 1988, the PTO denied registration in light of Jet's registration, which was based on an application filed in mid-February of 1987 claiming a date of first use of December of 1986. The Examining Attorney concluded that there was a likelihood of confusion between Jet's registered mark and the mark for which West sought registration, and consequently denied registration of West's mark. ³

Approximately five months later, on December 15, 1988, West filed a petition to cancel Jet's registration on the basis of prior use. West asserted that it had used the mark "FAST EDDIE'S" prior to the date of first use claimed by Jet in its registration application, ⁴ and therefore, because there was a likelihood of confusion between West's and Jet's marks, Jet's registration should be cancelled. To establish prior use of the mark "FAST EDDIE'S," West submitted three advertisements placed in local newspapers, a Florida state registration for "FAST EDDIE'S PLACE--WARM BEER--LOUSY FOOD," three regulatory licenses, and a Florida Food Service Inspection Report.

B. TTAB Decision

The TTAB held that West had failed to prove prior use, and therefore, that it need not consider the issue of likelihood of confusion. The TTAB found the evidence West submitted insufficient to establish "either prior use or continuous use" of the mark "FAST EDDIE'S" by West before Jet's undisputed date of first use of that mark in 1986. To reach this conclusion, the TTAB individually discredited, at pages 3-4 of its opinion, each piece of evidence submitted by West as follows:

Although petitioner has submitted newspapers from 1983 and 1984 which contain advertisements for FAST EDDIE'S PLACE, it has not submitted any evidence that these advertisements were placed by petitioner or refer to petitioner's services.

....

The state registration shows that an application was filed by petitioner on June 19, 1985, claiming a date of first use of the mark on February 2, 1981; however, neither the claim made in the application nor the filing date of an application for a state registration constitutes proof of use of the mark. As for the regulatory licenses, the first, which is for the period February 4, 1981-September 30, 1981, was issued to Edwin Porter, rather than the petitioner herein. The second, which is for the period October 1, 1984-September 30, 1985, licensed petitioner to engage in the business of "Fast Eddie's Place on Pier restaurant," while the third licensed petitioner to engage in the business of "Fast Eddie's Place on the pier" between October 1, 1985 and September 30, 1986. While the second and third licenses show that petitioner was granted a license to do business under the name in question, none of these licenses proves that petitioner actually engaged in restaurant services under the mark during these periods. The final official record, a food service inspection report dated November 1, 1985, does not refer to petitioner, but indicates inspection of a business owned by "E. Porter."

Having dismissed all of the evidence that West submitted in the foregoing manner, the TTAB then reasoned in the alternative at page 4 of its decision:

Even if petitioner could rely on any of the printed publications or official documents to demonstrate its priority, none of the materials which have been submitted shows that petitioner has made continuous use of the mark FAST EDDIE'S, or any variant thereof. A necessary component of the ground of likelihood of confusion under Section 2(d) of the Trademark Act is that the plaintiff's mark must have been previously used in the United States and not abandoned. In the present case, none of the materials submitted by petitioner bears a date later than November 26, 1985. Thus, even if we were to deem petitioner's materials as demonstrating use of its mark as of the dates shown therein, petitioner's claim must fail because it has not submitted evidence of the use of its mark for the two years prior to the filing of its petition or any time thereafter. [Emphasis added.]

West asserts in this appeal that the TTAB erred in finding the evidence of record to be non-probative, and consequently holding that West failed to establish prior and continuous use. West further asserts that this error led the TTAB to improperly refuse to consider the issue of likelihood of confusion.

II. DISCUSSION

We have jurisdiction over this appeal pursuant to 28 U.S.C. Sec. 1295(a)(4)(B) (1988).

Section 3 of the Lanham Act provides for the registration of service marks. 15 U.S.C. Sec. 1053. Section 2(d) of the Act, however, bars the registration of a service mark which

[c]onsists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. [Emphasis added.]

15 U.S.C. Sec. 1052(d). A "service mark" is any word, name, symbol, or device, or any combination thereof, used to identify and distinguish services from those of others and to indicate the source of those services. 15 U.S.C. Sec. 1127; National Cable Television Ass'n., Inc. v. American Cinema Editors, Inc., 937 F.2d 1572, 1576, 19 USPQ2d 1424, 1428 (Fed.Cir.1991); see also 1 J. Thomas McCarthy, Trademarks and Unfair Competition Sec. 4.04 (3d ed. 1992).

A. Prior Use

A party claiming prior use of a registered mark may petition to cancel the registration on the basis of such prior use pursuant to section 14 of the Lanham Act. 15 U.S.C. Sec. 1064. The burden of proof in a cancellation proceeding for a service mark registration is no different from that for a trademark or certification mark. Thus, a presumption of validity attaches to a service mark registration, and the party seeking cancellation must rebut this presumption by a preponderance of the evidence. Martahus v. Video Duplication Services, Inc., 3 F.3d 417, 421, 27 USPQ2d 1846, 1850 (Fed.Cir.1993). See Cerveceria Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 1023, 13 USPQ2d 1307, 1309 (Fed.Cir.1989); 15 U.S.C. Sec. 1057(b). This court reviews factual findings underlying a priority determination for clear error. Martahus, 3 F.3d at 421, 27 USPQ2d at 1850; Weiss Assoc., Inc. v. HRL Assocs., Inc., 902 F.2d 1546, 1548, 14 USPQ2d 1840, 1841 (Fed.Cir.1990); Stock Pot Restaurant, Inc. v. Stockpot, Inc., 737 F.2d 1576, 1578, 222 USPQ 665, 666 (Fed.Cir.1984). In this case, the TTAB committed clear error in holding that West failed to meet its burden as to priority of use.

To reach its conclusion, the TTAB viewed each piece of evidence submitted by West to be insufficient, standing alone, to establish that West used the mark "FAST EDDIE'S" prior to December of 1986. The TTAB reasoned that, when viewed in isolation, each piece of evidence was deficient in some respect and could not serve to establish prior use. For the reasons set forth below, the TTAB erred in so holding.

(1) Food Service Inspection Report

The TTAB committed clear error in failing to recognize that the Food Service Inspection Report by itself sufficiently establishes prior use of the mark "FAST EDDIE'S." The TTAB's error stemmed from its erroneous conclusion that the Inspection Report should be disregarded as having no evidentiary value because it "does not refer to petitioner, but indicates inspection of a business owned by 'E. Porter.' " The TTAB failed to note, however, that the Inspection Report does specifically identify that the business inspected was "Fast Eddie's Place" at "101 S. Bay Dr., Anna Maria." When this fact is taken into account, the Inspection Report on its face evidences that a restaurant was operating under the name "FAST EDDIE'S" as of the date of the inspection, November 1, 1985, which is prior to Jet's admitted earliest date of use in December of 1986. The Inspection Report thus supports West's claim that the mark "FAST EDDIE'S" was being used in connection with restaurant services prior to Jet's date of first use, and Jet has failed to present any evidence or arguments to the contrary. ⁵

(2) Cumulative Value of Additional Evidence

Notwithstanding the above, the additional evidence as a whole further substantiates West's prior use claims. The TTAB concluded that each piece of evidence individually failed to establish prior use. However, whether a particular piece of evidence by itself establishes prior use is not necessarily dispositive as to whether a party has established prior use by a preponderance. Rather, one should look at the evidence as a whole, as if each piece of evidence were part of a puzzle which, when fitted together, establishes prior use. The TTAB failed to appreciate this. Instead, the TTAB dissected the evidence to the point that it refused to recognize, or at least it overlooked, the clear interrelationships existing between the several pieces of evidence submitted. When each...