Allied-Sysco Food Services, Inc.v.The Pizza Maker

Trademark Trial and Appeal Board

Jul 10, 1997

CANC (T.T.A.B. Jul. 10, 1997)

THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB JULY 10, 1997
Paper No. 77

U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Allied-Sysco Food Services, Inc.
v.
The Pizza Maker, Inc.
_____
Cancellation No. 21,309
Cancellation No. 21,321
_____
Paula D. Morris of Rosenblatt & Associates for Allied-Sysco
Food Services, Inc.
Mark O’Brien, President of The Pizza Maker, Inc., for The
Pizza Maker, Inc.
_____
Before Cissel, Hanak and Hohein, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
Registration 1,606,637 issued to respondent on the
Principal Register on July 17, 1990 for the mark shown below
for "franchising services, namely, offering technical
assistance in the establishment and/or operation of pizza
Cancellation Nos. 21,309 and 21,321
2
restaurants," in Class 35, and "restaurant services," in
Class 42. The words "THE PIZZA MAKER" were disclaimed apart
from the mark as shown. First use in 1979 was claimed.
Less than a year after the first registration was issued to
respondent, on March 17, 1992, Registration No. 1,679,573
issued on the Principal Register to the same corporation.
The mark there is "THE PIZZA MAKER!" and the goods are
specified as "pizza."1 The registration sets forth the
claimed date of first use of that mark as December 28, 1979.
Separate petitions to cancel these two registrations
were filed by the same petitioner on November 10, 1992. The
two proceedings were subsequently consolidated, and both
were argued in one set of briefs based on a single record.
No oral hearing was requested.
The sole ground asserted by petitioner for cancellation of
respondent’s registrations is abandonment on the basis of nonuse.
Responsive to the petitions to cancel, respondent denied that it
had abandoned use of the registered marks.
Petitioner’s standing is established by petitioner’s use of,
and applications2 to register, the mark "PIZZA MAKER" for products
involved in making pizza. Petitioner’s applications to register
its mark were refused registration based on the existence of
respondent’s registrations, and prosecution of both applications

1No disclaimer was offered by the applicant or required by the
Examining Attorney, however.
2S.N. 74/372,789 and 74/373,002 were filed on March 29, 1993.
Cancellation Nos. 21,309 and 21,321
3
has been suspended pending resolution of the instant cancellation
proceedings.
Respondent’s president, who apparently is not an attorney and
is not familiar with either the Trademark Rules of Practice or the
Federal Rules of Civil Procedure which are used in proceedings of
this nature before the Trademark Trial and Appeal Board,
represented his corporation without benefit of counsel. This fact
appears to be one reason for the protracted problems with
discovery and the overly extensive record presented to the Board
in this case, which, at the time this decision is being reached,
has been pending for over six years. Petitioner’s counsel is
commended for the patience and flexibility displayed in trying to
abide by the rules without unnecessarily confusing respondent.
The record in this proceeding includes the following: the
testimony, with exhibits, of Mark O’Brien, taken April 27, 1994;
the testimony, with exhibits, of Steve Rosenblatt, taken May 3,
1994; the testimony, with exhibits, of Elise Ciokajlo, taken April
27, 1994; the testimony, with exhibits, of Steven Noon, taken June
20, 1994; and the documents and exhibits specified in petitioner’s
notice of reliance, filed May 9, 1994.
Respondent takes the position in its brief that the
testimonial deposition of Mr. O’Brien taken on June 6, 1994, the
testimonial deposition of Mr. Damante taken June 20, 1994 and the
testimonial deposition of Mr. Burke taken July 1, 1994 also form
parts of the record before the Board, but petitioner has objected
based on the fact that respondent did not comply with Trademark
Rule 2.125(c) by serving petitioner and filing with the Board a
Cancellation Nos. 21,309 and 21,321
4
notice that this testimony and the associated exhibits had been
filed with the Board. Respondent has not argued to the contrary,
and the record does not reflect the filing of the notice with
either the Board or petitioner. Accordingly, the additional
testimony and exhibits to which petitioner has objected have not
been considered. We note for the record, however, that even if we
were to consider them, our decision would not be different.
Although some of the testimony, evidence and argument of
respondent appears to be directed to whether confusion is likely
between petitioner’s mark, as used with petitioner’s goods and
services, and respondent’s mark, as used with the goods and
services set forth in the challenged registrations, likelihood of
confusion within the meaning of Section 2(d) of the Lanham Act is
not an issue in either one of these consolidated cancellation
proceedings. The sole issue pleaded by petitioner and tried by
the parties is whether or not respondent abandoned use of the
marks in connection with the goods and services set forth in the
registrations.
The fundamental legal principles applicable to this issue are
not seriously disputed. Section 14(3) of the Lanham Act provides
for cancellation of a registration at any time if the mark has
been abandoned. Section 45 of the Lanham Act provides, in
pertinent part, that a mark has been abandoned "[w]hen its use has
been discontinued with the intent not to resume such use. Intent
not to resume may be inferred from circumstances. Nonuse for two
consecutive years shall be prima facie evidence of abandonment.
’Use’ of a mark means the bona fide use of that mark made in the
Cancellation Nos. 21,309 and 21,321
5
ordinary course of trade, and not made merely to reserve a right
in a mark."3
Based on careful consideration of the record in the case at
hand, we have reached the conclusion that the registered marks
were abandoned by respondent. This record does not contain any
evidence that the goods or services set forth in the registrations
were provided under the marks during the two years immediately
preceding the filings of these petitions to cancel. Further,
respondent has not established that its nonuse was excusable. The
record does show that respondent may have resumed at least token
use of the marks again after petitioner filed the petitions for
cancellation of the registrations, and it shows that respondent
would certainly like to sell petitioner the right to use the
registered marks, but this does not overcome the evidence that the
marks were abandoned, nor does it somehow lead to the conclusion
that respondent’s rights to the registrations were revived after
petitioner had begun using its mark during the period when
respondent had stopped using its marks.
The testimony of Mr. Noon establishes that petitioner began
using its "PIZZA MAKER" mark on cheese in December of 1990, and
that petitioner since then has expanded the line of products on
which it uses the mark to include a wide variety of both goods and

3While we note that, as of January 1, 1996, Section 45 was
amended to provide that a period of three consecutive years of
nonuse, instead of a two-year period, constitutes prima facie
abandonment, we have applied the two-year standard, since these
proceedings were commenced prior to January 1, 1996, so as not to
give retroactive effect to the statutory amendment. See Clairol
Inc. v. Compagnie D’Editions et de Propagande du Journal La Vie
Claire-Cevic, 24 USPQ 1224, 1226 (TTAB 1992).
Cancellation Nos. 21,309 and 21,321
6
services. Petitioner’s annual sales under the mark exceed a
million dollars.
The record is far less clear concerning respondent’s use of
the two registered marks. At one time, respondent may well have
been using them in connection with the goods and services set
forth in the registrations. The record contains no evidence to
the contrary. The issue before the Board concerns what use
respondent made of its registered marks in the two years prior to
the November, 1992 filing of the petitions to cancel.
Several facts raise the inference that by November of 1992,
respondent had abandoned whatever rights it had in the registered
marks. Perhaps the most fundamental of these facts is that before
1990, respondent had a license from the Oakland County, Michigan,
Health Department to operate a retail food establishment at
respondent’s address on Elizabeth Lake Road in Union Lake,
Michigan, but that license was not renewed in 1990, 1991, or 1992.
After these proceedings were instituted, an application was filed,
but if respondent actually operated a food establishment there
during the period in question, it did so unlawfully, without a
license.
At the time petitioner was made aware of the registrations
owned by respondent, petitioner conducted an investigation to
determine if the registered marks were in use. To that end,
during the summer of 1992, Steve Rosenblatt, counsel for
petitioner, called the telephone number which respondent contends
is the number for its business there on Elizabeth Lake Road. Mr.
Rosenblatt’s testimony is that the phone was answered by an
Cancellation Nos. 21,309 and 21,321
7
answering machine, and the announcement was "Hi, this is Mark
O’Brien. I’m not home right now, but if you leave a message, I’ll
get back to you." This message is inconsistent with respondent’s
contention that the telephone was used in conducting an ongoing
pizza restaurant business. Moreover, it is certainly not evidence
of the use of the registered marks on the goods or services set
forth in the registrations.
Further testimony reveals that when Mr. Rosenblatt contacted
Mr. O’Brien and requested evidence that the registered marks were
in use in connection with the sale of the goods and services set
forth in the registrations, rather than sending the usual evidence
of an ongoing business, such as invoices from customers or vendors
of raw materials, or even current advertising, Mr. O’Brien mailed
petitioner’s lawyer a box containing a piece of dry ice and a
pizza, with a piece of paper bearing a photocopy of one of the
registered marks taped onto the box. Also included was an invoice
for fifty dollars. Mr. Rosenblatt sent the package back to Mr.
O’Brien without payment, but Mr. O’Brien proceeded to create a
deposit record on which he noted that the fifty dollar deposit was
being made by Mr. O’Brien because Mr. Rosenblatt did not pay for
the pizza! Thus by his own account, Mr. O’Brien put his own money
in his business’ account in an attempt to document a sale which
never occurred. This testimony and evidence falls far short of
establishing that the registered marks were in use in connection
with respondent’s goods and services during the period in
question.
Cancellation Nos. 21,309 and 21,321
8
The evidence, particularly the testimony and exhibits of Ms.
Ciokajlo, show that there was no ongoing business at respondent’s
business address. Although several photocopied reproductions of
the marks were displayed on the premises by the time her testimony
was given, the free-standing sign along the road next to the
building was totally blank. There was no seating for diners
inside the facility. There was no indication that even a carry-
out restaurant was operating there. There was no evidence that
respondent was rendering franchising services from that location.
The record does not include any evidence concerning any sales
transactions, any receipts, any expenditures for materials,
equipment or employees’ salaries during the period in question, or
any tax returns reflecting ongoing business activity during the
period, much less evidence that the goods and services set forth
in the registrations were marketed by respondent during the period
in question under the registered marks. There is no evidence
whatsoever that respondent was using the mark in connection with
franchising services. Not a single contract or other agreement
for these services is of record, nor is there even any credible
testimony that such agreements existed or that these services were
rendered to anyone under the registered mark.
Notwithstanding Mr. O’Brien’s self-serving testimony that his
corporation was using the marks in connection with the goods and
services during this period, there is no corroborating evidence of
record. The record is replete with attempts by petitioner to get
respondent to provide proof of the use it claims during the period
petitioner questions, but respondent steadfastly refused to
Cancellation Nos. 21,309 and 21,321
9
support its contention with documentary evidence. In view of the
fact that respondent, rather than petitioner, is uniquely in the
position to have access to information and documentation
concerning its use of its own marks, respondent’s failure to
substantiate its claim is significant. There may well have been a
fundamental misunderstanding on the part of Mr. O’Brien concerning
the requirement for him to provide petitioner with information and
documentation establishing respondent’s use or excusable nonuse,
but whatever the reason was, respondent stubbornly refused to
allow petitioner access to the information that might have met
respondent’s burden to overcome the evidence showing abandonment.
Petitioner argues that respondent should be considered to
have admitted the facts supporting petitioner’s claim of
abandonment because respondent refused to respond to petitioner’s
discovery requests and requests for admissions concerning
respondent’s use during the times in question. Regardless of
whether petitioner may be entitled to judgment in its favor on
this technical procedural point, as discussed above, a careful
evaluation of the record results in the inescapable conclusion
that there is no evidence in support of respondent’s contention
that it used the registered marks in connection with the goods and
services set forth in the registrations.
Respondent argues that a number of exhibits support its
position, but in fact none of them does. Because evidence and
information requested during discovery, but not produced then, may
not be made of record later, we will discuss only respondent’s
evidence which was produced during discovery and the arguments
Cancellation Nos. 21,309 and 21,321
10
based upon that evidence, as best we understand such arguments, in
the paragraphs which follow.
The affidavit of Lucille Yukon relates to the facts discussed
above concerning the fact that Mr. O’Brien shipped a pizza to
petitioner’s attorney. As we noted, the shipment to Mr.
Rosenblatt was not a sale at all, much less a sale or shipment in
the ordinary course of commerce within the meaning of the Lanham
Act.
The undated advertising materials do not establish that any
pizza bearing the marks was actually sold during the period in
question or that restaurant or franchising services were rendered
under the mark.
Mr. O’Brien’s affidavit is self-serving testimony that is not
corroborated by any other testimony or evidence.
The receipts from "American Speedy Printing Centers" bear
dates outside the period in question, and, in any event, they do
not establish that goods were sold or services were rendered under
the marks.
The copies of envelopes addressed to "The Pizza Maker, Inc."
do not show that respondent sold goods or rendered services under
the registered marks. These exhibits do not even show use of the
tradename by respondent, much less that respondent used the
registered trademarks in connection with the goods and services
identified in the registrations.
The bills for personal property tax do not identify the
property to which they relate. Mr. O’Brien either could not or
would not say what the referenced property was. Even if the tax
Cancellation Nos. 21,309 and 21,321
11
bills specifically related to some equipment or materials which
are typically used in connection with restaurant services or food
products, the bills would not be evidence showing use of the marks
in connection with the sale of goods or services under the marks
during the period in question.
The remaining evidence to which respondent points as proof of
the use of the mark are equally deficient. The undated copies of
respondent’s labels and fliers are not evidence of the use of the
mark during the period in question. The telephone directory
listing of respondent’s business phone number, discussed above,
does not show that goods or services were being provided under
either of respondent’s registered marks during the relevant
period. A statement from an employee of American Speedy Printing
Centers is to the effect that he had "conducted business over
several years and at the present time continues to do business
with THE PIZZA MAKER®! INC." The statement does not specify
whether respondent procured printing services from Speedy Printing
Centers or whether respondent's business provided goods or
services to the printing business. The registered trademark of
respondent appears in the statement with "INC." following it. As
such, it is used as a trade name in reference to the corporate
entity, rather than as an indication of the commercial source of
respondent's pizza.
As petitioner frequently points out, no matter how many times
respondent recites the foregoing materials, they still are not
evidence that any pizza was actually sold or that any services
were actually rendered at a commercial level under the marks
Cancellation Nos. 21,309 and 21,321
12
during the relevant time. The showing by petitioner that
respondent abandoned its marks is simply not rebutted by
respondent’s unsupported claims that it used the marks.
Accordingly, because respondent abandoned the marks, the
petitions to cancel the registrations are granted and Registration
Nos. 21,309 and 21,321 will be canceled in due course.
R. F. Cissel
E. W. Hanak
G. D. Hohein
Administrative Trademark Judges
Trademark Trial and Appeal Board
Cancellation Nos. 21,309 and 21,321
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