Azeka Building Corp.v.Bryan Kenji Azeka

Trademark Trial and Appeal Board

May 3, 2017

No. 91218679 (T.T.A.B. May. 3, 2017)

THIS OPINION IS A
PRECEDENT OF THE TTAB

Mailed: May 3, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Azeka Building Corp.
v.
Bryan Kenji Azeka
_____

Opposition No. 91218679
_____

Martin E. Hsia of Cades Schutte LLP
for Azeka Building Corp.

Michael Gerity of Israel & Gerity PLLC
for Bryan Kenji Azeka.
_____

Before Quinn, Ritchie, and Shaw, Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Bryan Kenji Azeka (“Applicant”) filed an application to register the mark
AZEKA’S RIBS (in standard characters) (RIBS disclaimed) on the Principal Register
for “barbeque sauce” in International Class 30.1
Azeka Building Corp., successor-in-interest to Azeka Enterprises Inc. (“AEI”)
(collectively, “Opposer”) opposed registration on the following grounds:

1 Application Serial No. 86246563, filed April 9, 2014, pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intention to use the mark in
commerce.
Opposition No. 91218679

2

1) That the proposed mark is primarily merely a surname;
2) Lack of a bona fide intention to use the mark in commerce; and
3) Likelihood of confusion.
Applicant denied the salient allegations comprising these claims. Applicant also
alleged the defenses that Opposer lacks standing and that Opposer abandoned its
mark.2
The Record
Opposer set forth the record in detail in its brief (28 TTABVUE 9); Applicant
concurred with this description. (31 TTABVUE 7).3 The record consists of the
pleadings; the file of the opposed application; testimony with related exhibits, taken
by Opposer (20, 21, 22 TTABVUE); official records, excerpts of printed publications
and of third-party websites, and Applicant’s responses to Opposer’s discovery
requests, all introduced by Opposer’s notices of reliance (19 TTABVUE; 27
TTABVUE); testimony, with related exhibits, taken by Applicant (26 TTABVUE);
official records, excerpts of third-party websites, and various documents, all made of

2 The Board, in an order dated December 18, 2015, denied Opposer’s motion for partial
summary judgment, finding that genuine disputes of material fact remained with respect to
Opposer’s standing, specifically with regard to its alleged abandonment of the mark, and with
respect to Applicant’s bona fide intent to use the mark in commerce. The Board also struck
several allegations captioned as “Affirmative Defenses” in Applicant’s answer. (17
TTABVUE).
3 Citations in this opinion will be to the TTABVUE docket entry number and the electronic
page number where the document or testimony appears. Because the Board primarily uses
TTABVUE in reviewing evidence, the Board prefers that citations to non-confidential parts
of the record include the TTABVUE docket entry number and the TTABVUE page number.
Cf. TBMP § 801.01 (Jan. 2017) (parties should cite to record by referring to the TTABVUE
entry and page number).
Opposition No. 91218679

3

record by way of Applicant’s notice of reliance. (24 TTABVUE).4 The parties filed
briefs on the case.
Issues for Decision
Based on the evidentiary record, we sustain the opposition on the ground that
AZEKA’S RIBS is primarily merely a surname. After our decision on the surname
issue, there is no reason to consider the claim of a lack of a bona fide intent to use the
applied-for mark; both of these claims bear on the same ultimate issue, that is, the
registrability of Applicant’s mark based on the present application. We have
“discretion to decide only those claims necessary to enter judgment and dispose of the
case,” as our “determination of registrability does not require, in every instance,
decision on every pleaded claim.” Multisorb Tech., Inc. v. Pactive Corp., 109 USPQ2d
1170, 1171-72 (TTAB 2013) (citing Am. Paging Inc. v. Am. Mobilphone Inc., 13
USPQ2d 2036, 2039-40 (TTAB 1989)), aff’d, 923 F.2d 869, 17 USPQ2d 1726 (Fed. Cir.
1990) (non-precedential). The surname ruling ensures that the present application
will not proceed to registration and, thus, there is no reason to consider the bona fide
intent issue, because any determination that such intent exists or does not would not
be preclusive of any challenge to a future application.
Although sustaining the surname ground is dispositive of Applicant’s attempt to
register the mark based on the present application, we also appreciate the logic in

4 Some of the materials are not proper subject matter for a notice of reliance. (See, e.g., email
correspondence and press releases). Nevertheless, Opposer did not object to their
introduction, but rather treated them as properly of record. Accordingly, we deem the
evidence to be stipulated into the record, and consider all of the evidence submitted by the
parties to be of record for our consideration, as the parties likewise have done. See TBMP
§ 707.04.
Opposition No. 91218679

4

Applicant’s contention that the Board should decide the merits of Applicant’s
abandonment defense and its effect on priority, an essential element of Opposer’s
likelihood of confusion claim, which forms an important part of the controversy.
Applicant argues that deciding only the surname issue would be “a huge case of
failing to see the forest for the trees, and litigating issues for the sake of litigation.”
Applicant maintains that the main controversy between the parties is whether
Opposer has abandoned its mark, and that Opposer is attempting to have this
proceeding
resolved on a side issue that completely avoids the elephant
in the room. This approach makes no sense whatsoever
from any perspective. It makes no sense from a business
perspective, because ending the Opposition on this issue
still leaves the parties at odds as to future use of the mark.
It makes no sense from a judicial economy perspective,
because ending the Opposition on this issue will do nothing
more than to cause Applicant to file yet another application
for the same mark, this time under Trademark Act Section
1(a) because he is actually using the mark in commerce,
and force the parties and this Board through an entire
opposition process a second time, just to get back to the
exact same critical issue that is before the Board right now.
Such an approach finds no support in logic, reason or
business-sense.

(31 TTABVUE 25-26).
In its reply brief, Opposer acknowledges that this case “is essentially a dispute
over the exclusive right to use the family name [AZEKA] … between two branches of
the Azeka family.” (34 TTABVUE 6). The parties have focused much of their attention
on this issue, realizing its broader impact on rights in the mark going forward. The
parties have tried the issue of Opposer’s abandonment of its pleaded mark, and in
Opposition No. 91218679

5

doing so have expended time and money; and it is in the interest of judicial economy
to decide the issue that is the crux of the dispute, which promises to continue in the
absence of a complete resolution. There is nothing to be gained by forcing Applicant
to file a new application, and by requiring the parties to submit much of the same
evidence for a second time, which would needlessly increase the parties’ litigation
costs and burden the Board with largely duplicative litigation. Accordingly, we will
consider this issue.
Standing
Standing is a threshold issue that must be proven in every inter partes case.
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,
1062 (Fed. Cir. 2014). See also Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185, 189 (CCPA 1982) (“The facts regarding standing … must be
affirmatively proved. Accordingly, [plaintiff] is not entitled to standing solely because
of the allegations in its [pleading].”). Our primary reviewing court, the U.S. Court of
Appeals for the Federal Circuit, has enunciated a liberal threshold for determining
standing, namely that a plaintiff must demonstrate that it possesses a “real interest”
in a proceeding beyond that of a mere intermeddler, and “a reasonable basis for his
belief of damage.” See Empresa Cubana del Tabaco, 111 USPQ2d at 1062 (citing
Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)). A
“real interest” is a “direct and personal stake” in the outcome of the proceeding.
Ritchie v. Simpson, 50 USPQ2d at 1026.
Opposition No. 91218679

6

Azeka Building Corp. is the named Opposer, and its president is Tyler Azeka
(“Tyler”). The record establishes that in the 1970s, Tyler’s father, Kusuo Azeka, also
known as Bill Azeka (“Bill”), “invented” a recipe for marinated (with a “secret sauce”)
beef short ribs, and that the ribs were sold under the mark AZEKA’S RIBS at the
Azeka’s family business, Azeka’s Place (later changed to Azeka’s Market). (20
TTABVUE 9-10).
Based on the inclusion of AZEKA in Opposer’s corporate name, and the fact that
it is also the surname of Opposer’s president, these established facts are sufficient to
prove Opposer’s standing to bring the surname claim under the liberal threshold set
by controlling case law. Accordingly, Opposer has standing to pursue any of the other
pleaded grounds. See Jewelers Vigilance Comm. Inc. v. Ullenberg Corp., 823 F.2d 490,
2 USPQ2d 2021, 2023 (Fed. Cir. 1987) (“Once standing is established, the [plaintiff]
is entitled to rely on any of the grounds set forth in … the Lanham Act which negate
[defendants’] right to its subject registration.”).
Surname
Opposer argues that Applicant’s applied-for mark is primarily merely a surname
under Section 2(e)(4) of the Trademark Act, 15 U.S.C. § 1052(e)(4). Applicant
essentially did not respond, either with evidence or argument, to the merits of this
claim.
Section 2(e)(4) of the Trademark Act precludes registration of a mark on the
Principal Register that is “primarily merely a surname” without a showing of
Opposition No. 91218679

7

acquired distinctiveness under Section 2(f) of the Act, 15 U.S.C. § 1052(f).5 A term is
primarily merely a surname if, when viewed in relation to the goods or services for
which registration is sought, its primary significance to the purchasing public is that
of a surname. In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1277 (TTAB 2016); In re
United Distillers plc, 56 USPQ2d 1220, 1221 (TTAB 2000). This expression of the test
restates the rule set forth in In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831,
184 USPQ 421, 422 (CCPA 1975) (“[A] correct resolution of the issue can be made
only after the primary significance of the mark to the purchasing public is determined
…”) and In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir.
1985) (“Darty”). In Darty, the Federal Circuit considered several factors in
determining whether the purchasing public would perceive a proposed mark as
primarily merely a surname, including: whether the applicant adopted a principal’s
name and used it in a way that revealed its surname significance; whether the term
had a nonsurname “ordinary language” meaning; and the extent to which the term
was used by others as a surname. 225 USPQ at 653. The Board’s oft-cited “Benthin
factors,” see In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995), are
also examples of inquiries that may lead to evidence regarding the purchasing

5 As noted, the involved application was filed based on intent to use and thus, absent limited
circumstances not applicable in this case, could not include a claim of acquired
distinctiveness. See Trademark Manual of Examining Procedure (TMEP) § 1212.09 (Apr.
2017). Accordingly, approval of the mark in the application for publication for opposition
necessarily means that the Examining Attorney did not consider the involved mark to be
primarily merely a surname, and a review of the prosecution history of the file confirms that
conclusion. The Examining Attorney’s decision to publish the mark for opposition does not
preclude an opposition under Section 2(e)(4) and is in no way binding on the Board’s
determination of the claim.
Opposition No. 91218679

8

public’s perception of a term’s primary significance.6 These inquiries or “factors” are
not exclusive and any of these – singly or in combination – and any other relevant
circumstances may shape the analysis in a particular case.7 In re Eximius Coffee,
LLC, 120 USPQ2d at 1278.
When we are faced with a claim relying on Section 2(e)(4) as a bar to registration
of a term in standard character form, with no design elements, we consider the impact
the term has or would have on the purchasing public because “it is that impact or
impression which should be evaluated in determining whether or not the primary
significance of a word when applied to a product is a surname significance. If it is,
and it is only that, then it is primarily merely a surname.” In re Harris-Intertype
Corp., 518 F.2d 629, 186 USPQ 238, 239 (CCPA 1975) (quoting Ex parte Rivera Watch
Corp., 106 USPQ 145, 149 (Comm’r Pat. 1955)) (emphasis in original).
Whether the primary significance of an applied-for mark is merely that of a
surname is a question of fact. See Darty, 225 USPQ at 653-54. This question must be
resolved on a case-by-case basis. Id. at 654; see also, e.g., In re Pohang Iron & Steel

6 In Benthin, the Board stated that “factors” to be considered in determining whether a
term is primarily merely a surname include: (1) the degree of a surname’s rareness; (2)
whether anyone connected with applicant has that surname; (3) whether the term has
any recognized meaning other than that of a surname; (4) whether the term has the
“structure and pronunciation” of a surname; and (5) whether the stylization of lettering
is distinctive enough to create a separate commercial impression. Where, as here, the
mark is in standard characters, it is unnecessary to consider the fifth factor. In re Yeley, 85
USPQ2d 1150, 1151 (TTAB 2007).
7 See Benthin, 37 USPQ2d at 1333 (stating that notwithstanding the rareness of BENTHIN
as a surname, panel “would find” that it “would be perceived as primarily merely a surname”
because of lack of other meanings and because it is the name of applicant’s Managing
Director, but the highly stylized form shifted the balancing of factors to a finding that
BENTHIN is not primarily merely a surname).

Opposition No. 91218679

9

Co., 230 USPQ 79, 79 (TTAB 1986). The entire record is examined to determine the
primary significance of a term, and whether Opposer has shown, by a preponderance
of the evidence, that the term must be denied registration.
Among the circumstances that may be probative in determining if an applied-for
mark is primarily merely a surname are:
1) whether the term is the surname of anyone connected with the applicant;

2) whether the term has any recognized meaning other than as a surname;

3) whether evidence shows that the term has the structure and pronunciation of
a surname;

4) whether there is contextual use related to surname significance; and

5) whether the evidence shows use of the term as a surname is rare.
Eximius Coffee, 120 USPQ2d at 1278; see also In re Integrated Embedded, 120
USPQ2d 1504 (TTAB 2016).8 We will address the factors in the order presented
above, acknowledging that there is no significance to the order. Rather, we weigh the
circumstances together and accord the appropriate weight to each based on the
evidence of record.
The first factor is obvious; Applicant’s name is Bryan Azeka.
The second factor, whether AZEKA has a recognized meaning other than as a
surname, also weighs in favor of finding the proposed mark to be primarily merely a
surname. Opposer introduced “negative” dictionary evidence showing no listings for
“Azeka.” (19 TTABVUE 363-69). Further, Applicant indicated in his application that

8 No other factors have been discussed by the parties, nor is there evidence that implicates
the probative significance of any other possible factor, inquiry or circumstance.

Opposition No. 91218679

10

the term has no other meaning. Thus, this factor supports Opposer’s position that the
primary significance of AZEKA is as a surname. Eximius Coffee, 120 USPQ2d at
1280.
The record is devoid of any evidence bearing on the third factor, namely whether
AZEKA has the structure and pronunciation of a surname. Assessing whether
AZEKA has the structure and pronunciation of a surname, is a “decidedly subjective”
inquiry. Benthin, 37 USPQ2d at 1333; see also Binion, 93 USPQ2d 1531, 1537 (TTAB
2009). Under this factor, a party may submit evidence that, due to a term’s structure
and pronunciation, the public would or would not perceive it to have surname
significance. See Eximius Coffee, 120 USPQ2d at 1280 (reference to purported
surnames “without proving that they are surnames, without showing how common
such surnames with the suffix ‘OA’ are, and without providing some other objective
evidence of how members of the public perceive the structure and sound of ALDECOA
is not sufficient to enable us to determine that ALDECOA has a structure and
pronunciation similar to that of other purportedly common surnames”). As just noted,
Opposer did not submit any evidence on this point and, in the absence of evidence,
this factor is neutral.
With respect to the fourth factor relating to contextual clues, the mark AZEKA’S
RIBS includes the surname AZEKA in the possessive form. The surname significance
of a term is not diminished by the fact that the term is presented in its possessive
form. See In re Woolley’s Petite Suites, 18 USPQ2d 1810 (TTAB 1991). See also TMEP
§1211.01(b)(v). In point of fact, the possessive form of the term, AZEKA’S as used in
Opposition No. 91218679

11

the proposed mark AZEKA’S RIBS, is consistent with perception of the term as a
surname. In re Binion, 93 USPQ2d at 1537.
We also must consider the inclusion of the word RIBS in the mark. Indeed, “[t]he
test for determining whether a mark is primarily merely a surname is the primary
significance of the mark as a whole to the purchasing public.” In re Hutchinson Tech.
Inc., 852 F.2d 552, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988) (emphasis added). In
Hutchinson Technology, the applicant sought to register the mark HUTCHINSON
TECHNOLOGY for certain computer components. Registration was refused on the
ground that the mark was primarily merely a surname, and the Board affirmed. On
appeal, the Federal Circuit reversed the refusal. In doing so it made clear that the
assessment of a composite mark containing a surname is not limited to the inquiry of
whether the additional term is capable of functioning as a mark or not.9 Hutchinson
Tech., 7 USPQ2d at 1492-93 (in reversing, explaining that evidence did not establish
that “technology” was generic or merely descriptive of the identified goods). Rather,
as noted above, we must consider the meaning of the mark as a whole.
In the present case, the addition of RIBS in the mark does not detract from the
primary significance of the surname AZEKA. That is to say, the purchasing public,

9 In this respect, it appears that TMEP § 1211.01(b) is not consistent with the Federal
Circuit’s directive in Hutchinson Technology. The proper inquiry is the meaning of the mark
as a whole, which is not limited only to the question of whether the additional matter is or is
not capable of functioning as a mark, i.e., whether the additional matter is generic. Merely
descriptive terms are terms that have not acquired source identifying significance, and as
such are terms—like generic terms—that will typically not detract from the primary surname
significance in a mark containing a surname. Thus, if none of the additional matter that
makes up the mark is inherently distinctive or has acquired distinctiveness (e.g., it is merely
descriptive or incapable), refusal of the entire mark pursuant to Section 2(e)(4) will be
appropriate in most circumstances.
Opposition No. 91218679

12

when encountering the proposed mark AZEKA’S RIBS, would perceive the mark in
its entirety as primarily merely a surname. See Miller v. Miller, 105 USPQ2d 1615,
1622 (TTAB 2013). RIBS has been disclaimed and there is no dispute that this word,
as used in connection with barbeque sauce, is at least merely descriptive, if not
generic. Applicant has offered no evidence or argument that RIBS alters the meaning
of the mark as a whole in such a way to displace the primary surname significance of
AZEKA, which as noted above is reinforced by the use of the possessive.
That brings us to consider the fifth factor, namely, the rarity of the surname
AZEKA. Opposer submitted excerpts of several phone directories throughout the
United States showing search results for “Azeka.” This evidence revealed a total of
868 listings of individuals with the surname AZEKA. Further, at least three websites
show use of AZEKA as a surname, apparently giving the surname at least some public
exposure in the media. (19 TTABVUE 13-15; 20-24; 37-41).
In sum, the record shows that Applicant’s surname is AZEKA; there is no other
meaning for AZEKA; the possessive form of the term, a contextual clue, is consistent
with surname significance; and AZEKA, as shown by telephone directories and
websites, has been exposed to the public as a surname. The circumstances and record
of this case establish that the primary significance of AZEKA is as a surname, and
the addition of RIBS does not diminish this primary significance when the proposed
mark AZEKA’S RIBS is considered as a whole. There simply is no evidence in the
Opposition No. 91218679

13

record that AZEKA would be perceived as anything other than as a surname, and
Applicant does not contend otherwise. 10
We therefore find that Opposer has established, by a preponderance of the
evidence, that AZEKA’S RIBS is primarily merely a surname and, pursuant to
Section 2(e)(4), is not registrable on the Principal Register absent a showing of
acquired distinctiveness. Accordingly, the opposition is sustained on this ground.
In anticipation of this decision, Applicant stated that it
has actually started to use the mark in commerce with the
listed goods, but because of this pending Opposition, he is
precluded by rule from amending his application to change
the basis for filing to Section 1(a). See 37 C.F.R. § 2.133.
Were it not for that rule, Applicant could easily resolve any
conclusion that the Subject Mark was merely a surname by
filing an acceptable allegation of use and amending the
application to the Supplemental Register. 37 C.F.R.
§2.47(d); TMEP §§ 816.02, 1102.03.

If the Board were to find that Applicant’s application is not
entitled to registration on the basis that the mark is merely
a surname, it should allow Applicant “time in which to file
a motion that the application or registration be amended to
conform to the findings of the Board.” 37 C.F.R. § 2.133.
Only that way can the parties and the Board avoid the
waste of tens of thousands of dollars of litigation costs and
over two years of litigation on this Opposition only to have
to start over and come right back to this position two years
and tens of thousands of dollars more down the road.
(31 TTABVUE 26-27).
To the extent that Applicant contends that he should be allowed an opportunity
to file an allegation of use along with an amendment to the Supplemental Register,

10 Applicant filed application Serial No. 86246558 to register the mark AZEKA’S SAUCE for
“barbecue sauce.” After registration was refused for that application under Section 2(e)(4),
the application was abandoned for failure to respond to the refusal. (19 TTABVUE 25-50).
Opposition No. 91218679

14

that is not possible because, even though the mark has been approved for publication,
the Office has not issued a notice of allowance. Trademark Act § 1(d)(1), 15 U.S.C.
§ 1051(d)(1); Trademark Act § 13(b)(2), 15 U.S.C. § 1063(b)(2). See TBMP § 219. “[A]
notice of allowance will not issue unless and until the opposition is dismissed,” so any
allegation of use filed prior to a decision by the Board to dismiss the opposition is
improper. Id. The Board’s decision to sustain the opposition on the surname claim,
and not to dismiss the opposition, means that Applicant cannot pursue his suggested
course of action.
Likelihood of Confusion
Because of our decision to sustain the opposition on the surname ground,
Applicant is not entitled to obtain a registration on the basis of the present
application. As indicated earlier, however, we appreciate that there is a significant
controversy between the parties as to which is entitled to claim prior trademark
rights in the AZEKA name going forward. Accordingly, we will proceed to consider
this issue in the context of the likelihood of confusion claim.
Applicant does not dispute that the contemporaneous use of Opposer’s pleaded
mark AZEKA’S RIBS for marinated ribs prepared with a “secret sauce” and
Applicant’s identical mark AZEKA’S RIBS for barbeque sauce is likely to cause
confusion. Rather, Applicant argues that the issue of likelihood of confusion is
rendered moot by Opposer’s abandonment of its rights in the pleaded mark. (31
TTABVUE 27).
Opposition No. 91218679

15

We agree with the parties’ conclusion that contemporaneous use of their marks
is likely to cause confusion in the marketplace among consumers; the marks are
identical and the goods are closely related if not identical.
Priority also is an element of the likelihood of confusion ground. United Global
Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1047 (TTAB 2014). Accordingly, we will
focus our attention, as the parties have done, on the issue of priority and the effect of
Opposer’s alleged abandonment, if any, on this issue. In order to prevail on its Section
2(d) claim, Opposer must establish that it has priority of use over Applicant. However,
when a mark is abandoned, as Applicant claims in this case, it becomes available for
others to adopt and use as a trademark. Thus, we turn to consider the facts
surrounding Opposer’s purported abandonment of its AZEKA’S RIBS mark.
By way of background, Tyler’s father, Bill, began selling AZEKA’S RIBS in the
1970s, enjoying success until Azeka’s Ribs and Snack Shop in Kihei, Maui closed in
August 2006. The marinated ribs were “near and dear to the hearts of Maui locals
and visitors alike,” and everyone familiar with the product apparently has been
disappointed for years that it was no longer available. (26 TTABVUE 98-101).
Azeka Building Corp.’s predecessor, AEI, owned Registration No. 1598804 for the
mark AZEKA’S RIBS for “special marinated ribs prepared with a secret sauce,”
issued May 29, 1990; the registration was cancelled on December 2, 1996 due to AEI’S
failure to file a Section 8 affidavit of continued use. AEI also owned Registration No.
2734818 for the mark AZEKA’S RIBS for “special marinated ribs prepared with a
sauce,” issued July 8, 2003; the registration was cancelled on February 14, 2014 due
Opposition No. 91218679

16

to the failure to file a Section 9 renewal.11 The record shows that AEI dissolved in
December 2013. (20 TTABVUE 18-19). After that date, Tyler, the president of AEI,
continued to wind up AEI’s business affairs, including disposition of intellectual
property assets. (20 TTABVUE 21-28). This process included execution of a purported
assignment (dated May 9, 2014) of the common law rights in the mark to Azeka
Building Corp., as well as trade secrets.12 As noted earlier, Tyler is the president of
Azeka Building Corp.
The parties are not strangers. Tyler and Applicant are second cousins (or,
according to Tyler, first cousins once removed). (20 TTABVUE 52; 26 TTABVUE 10).
Applicant never lived on Maui, but visited during summers. (20 TTABVUE 53). Their
fathers worked together at the AZEKA’S RIBS shop in Maui. (26 TTABVUE 35).
In 2013, Applicant called Tyler to inquire about the status of AEI, indicating that
he was completing college, and also offering to help with the marketing of any
resumption of business under the mark AZEKA’S RIBS. Applicant proposed to do this

11 The Office accepted, on December 31, 2009, a Section 8 affidavit on the basis of AEI’S
explanation of its nonuse of the registered mark since August 2006. In its explanation, AEI
referred to two licensing negotiations with potential licensees to use the mark. AEI stated:
“Because registrant is pursuing two independent avenues for resuming use of the mark on
the goods of the registration, one of these avenues should succeed, so it is expected that use
of the mark will resume before July 1, 2010.” (24 TTABVUE 10). This use was never resumed
and the registration was cancelled. “[C]ancellation of a trademark registration does not
necessarily translate into abandonment of common law trademark rights. Nor does it
establish its owner’s lack of intent to use the mark.” Crash Dummy Movie, LLC v. Mattel,
Inc., 601 F.3d 1387, 94 USPQ2d 1315, 1317 (Fed. Cir. 2010).
12 Given AEI’s abandonment of the mark through nonuse (see discussion, infra), this
assignment of the common law rights in the mark amounted to nothing more than an
assignment in gross, which passed no rights to Azeka Building Corp. Money Store v.
Harriscorp Finance, Inc., 689 F.2d 666, 216 USPQ 11, 19 (7th Cir. 1989) (“[a]n abandoned
trademark is not capable of assignment”). Opposer’s standing in this case remains unaffected
as standing was established in the context of the surname claim, based upon Opposer’s
corporate name and the name of its president.
Opposition No. 91218679

17

work in conjunction with a college entrepreneurial class project he was formulating.
(20 TTABVUE 53). Tyler indicated that AEI was still searching for a licensee, and no
mention was made about the rights pertaining to the trademark or the recipe for the
ribs sauce. Applicant called a second and third time in 2013, wanting updates on
AEI’s attempt to “restart” the ribs business. (20 TTABVUE 55-56). Tyler stated that
he never gave Applicant permission to use the AZEKA’S RIBS mark. (20 TTABVUE
56-57). Tyler first learned of Applicant’s business on April 19, 2014 in an article in
The Maui News. (20 TTABVUE 57-58; Ex. 8). Upon reading the article, Tyler was
“shocked” because it implied Applicant’s business “was a continuation of my father’s
original product.” (20 TTABVUE 58). Tyler went on to testify: “I was shocked, number
one, that it was a family member that was – that appeared to me to be trying to ride
on the coattails of my father’s reputation and product.” (20 TTABVUE 58). Tyler
received phone calls from family and friends after they read the same article,
inquiring about any connection with the former family business. (20 TTABVUE 59-
60).13
Applicant gave his version of the circumstances surrounding his adoption of the
AZEKA’S RIBS mark: His plan “was to start the selling of the ribs, the Azeka’s Ribs,
as well as the Azeka’s sauce ... [He] intended to start it as a family business. (26
TTABVUE 10). According to Applicant, he and Tyler had “mostly over-the-phone
conversations as well as e-mail conversations” about the business and trademark
“and what I intend to do with the business as well as my intentions to sell the ribs

13 See testimony of Clyde Kono (21 TTABVUE) and Kimberly Vinoray (22 TTABVUE).
Opposition No. 91218679

18

and the sauce.” (26 TTABVUE 11). When asked about Tyler’s plans on actively
resuming use of the AZEKA’S RIBS mark, Applicant stated: “Every time we talked
he said he would eventually get around to it. I’m not sure exactly what that means
from his intent, but I always took that as he is not doing it at this time and he does
not intend to use it at this time.” (26 TTABVUE 12). Applicant testified that when he
expressed his intent to start using the mark, Tyler responded “You can go ahead and
try.” When asked what Applicant understood by that, he stated “That I can move
forward with my plans.” Applicant’s sense of Tyler’s comment was that if he tried, he
would fail. Further, when asked “But he did specifically say it was okay for you to
try?” Applicant responded “Yes.” (26 TTABVUE 13). On cross-examination, Applicant
conceded that he did not remember Tyler’s exact words, but that from Tyler’s answer
to Applicant’s question, his only interpretation was that “You can try to use the
Azeka’s Ribs trademark in your business.” (26 TTABVUE 37-38; 50-51). Applicant
then proceeded to draft a business plan as part of his college entrepreneurial class
project, and began raising money to form a business using the mark AZEKA’S RIBS.
(26 TTABVUE 14-24). Applicant subsequently began selling the ribs with sauce
under the mark. (26 TTABVUE 25-26).
Applicant asserts that Opposer (and its predecessor AEI) have had multiple
periods of nonuse of at least three years, the most recent being 2012-2015. According
to Applicant, Opposer has no evidence of development, testing, design or manufacture
of any product, let alone sales since 2006; rather, it merely has sent out a few batches
Opposition No. 91218679

19

of emails, and received a few more, idly discussing the possibility of licensing.
Applicant sums up his argument as follows:
[Opposer] stopped all use of its mark in commerce clear
back in 2006—over ten years ago now. It dissolved its
business, took its website down, and let its registration for
“AZEKA’S RIBS” become abandoned. Not until it learned
of Applicant’s business and trademark application did it
suddenly jump to attention and start taking steps to try to
reclaim its mark. And, not until it was required to provide
proof of its licensing efforts did it suddenly undertake a
mini-barrage of specious efforts to seek a license. The
timing of these steps actually does more harm to Opposer’s
case than it helps, because it demonstrates that Opposer’s
real intent is nothing but to hoard its mark and keep it
from Applicant.
(31 TTABVUE 28).

Opposer acknowledges that its predecessor AEI stopped selling food products
under the mark AZEKA’S RIBS in 2006, and that no products were sold by either of
them between the August 11, 2006 closing of AEI’s store and now. (34 TTABVUE 6-
7). When AEI closed its shop in 2006, it issued an announcement on its website
thanking the community for its support. (24 TTABVUE 28). Opposer maintains,
however, that it did not intend to abandon its trademark rights. Instead, Opposer
intended to resume use; although it has not resumed use to date, Opposer points to
its licensing efforts from 2007 through 2016 as evidence of its intent to resume use
and, accordingly, no abandonment. Opposer contends that the licensing discussions
show that goodwill associated with the mark has not dissipated since the mark was
last used in 2006. According to Opposer, “[a] finding of abandonment is particularly
inappropriate in this case, not only because it would impose an inequitable forfeiture
Opposition No. 91218679

20

of Opposer’s rights, but also because of the apparent continuing recognition of the
‘AZEKA’S RIBS’ mark in the marketplace.” (28 TTABVUE 34).
Under Section 45 of the Trademark Act of 1946, 15 U.S.C. § 1127, a mark shall
be deemed abandoned:
(a) When its use has been discontinued with intent not to
resume such use. Intent not to resume may be inferred
from circumstances. Nonuse for 3 consecutive years
shall be prima facie abandonment. “Use” of a mark
means the bona fide use of such mark made in the
ordinary course of trade, and not made merely to
reserve a right in the mark.

There are two elements to an abandonment claim: nonuse of the mark and intent
not to resume use. Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118
USPQ2d 1413, 1417 (TTAB 2016). If a plaintiff or, as in this case, a defendant raising
abandonment as an affirmative defense against prior common law rights, can show
three consecutive years of nonuse, it has established a prima facie showing of
abandonment, creating a rebuttable presumption that the mark was abandoned with
intent not to resume use. The burden of production (i.e., going forward) then shifts to
the defendant, or, as in this case, the plaintiff, to produce evidence that it has either
used the mark or that it has intended to resume use. The burden of persuasion
remains with the party attempting to prove abandonment by a preponderance of the
evidence. See On-Line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d
1471, 1476 (Fed. Cir. 2000); Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d
1575, 14 USPQ2d 1390, 1393 (Fed. Cir. 1990); Cerveceria Centroamericana, S.A. v.
Cerveceria India, Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1310 (Fed. Cir. 1989); J.G.
Opposition No. 91218679

21

Hook, Inc. v. David H. Smith, Inc., 214 USPQ 662, 665 (TTAB 1982), citing Burroughs
Wellcome Co. v. Warner-Lambert Co., 203 USPQ 191 (TTAB 1979). In the present
case, of course, it is Applicant who is claiming that Opposer has abandoned its mark,
thereby freeing up the mark for Applicant’s adoption and use and, accordingly,
negating Opposer’s claim of priority.
Tyler, Opposer’s president, testified that his father Bill began making ribs with
a “secret sauce” in the 1970s on Maui, Hawaii: “The product was marinated beef short
ribs, the marinate of which was my father’s product/invention that he developed and
perfected over time, into which the meat, the beef short ribs were marinated and then
subsequently sold in uncooked form.” (20 TTABVUE 9-10). The product was sold at
Azeka’s Market (originally named Azeka’s Place), a grocery store Bill owned. In 1996,
the Azeka family business formed into AEI, of which Tyler was president. Bill died in
2000 and, upon his death, the business was “turned over” to Tyler. (20 TTABVUE 11-
12). AEI stopped selling ribs under the pleaded mark in August 2006. (20 TTABVUE
12; 29-30). Tyler indicated that sales were discontinued because the lease for Azeka’s
Market expired; although the market never reopened at another location, Tyler
stated that there was no intent “to forever discontinue” use of the mark. (20
TTABVUE 15). Since that time, neither Opposer nor AEI resumed use of the
AZEKA’S RIBS mark.
The testimony clearly shows that Opposer has not used the mark in the ordinary
course of trade for over ten years. Accordingly, this nonuse for a period in excess of
Opposition No. 91218679

22

three consecutive years establishes prima facie abandonment of the mark AZEKA’S
RIBS. Opposer does not deny its nonuse of the mark since 2006. (34 TTABVUE 11).
Given Applicant’s prima facie case of abandonment, there is a rebuttable
presumption that Opposer abandoned its mark with intent not to resume use. The
burden of production (i.e., going forward) shifts to Opposer to produce evidence that
it has intended to resume use. We thus turn to consider Opposer’s evidence related
to its purported intent to resume use.
In an attempt to rebut Applicant’s prima facie case, Tyler testified that after use
of the mark ceased, “we started our search for potential candidates for licensure …
qualified candidates that we could license to continue the product under our licensing
agreement.” (20 TTABVUE 16; Ex. 2, 20 TTABVUE 84-107). He then went on to
recount the various search activities. Tyler testified concerning Exhibit 7 to his
testimonial deposition, which comprises a series of emails and letters from and to
various individuals. (20 TTABVUE 118-138). The record shows these activities as set
forth below.
Barbara Mosle of Saag’s Sausages, located in California, had discussions with
Tyler about a license in 2007. They exchanged emails, but no formal negotiations ever
took place. (20 TTABVUE 50-51).
In March 2008, Tyler received an email inquiry from Stella Blues (via one of its
owners, Kale Bovermann), a restaurant on Maui about a license. No discussions were
held, and the restaurant is no longer in business. (20 TTABVUE 49-50).
Opposition No. 91218679

23

In 2008, Kenichi Akiyama, a self-employed travel agent, approached Opposer,
which then drafted a proposed license agreement. (20 TTABVUE 16; Ex. 2, 20
TTABVUE 84-107). Mr. Akiyama expressed an interest, upon hearing that Opposer
had ceased operations, to have his proposed Aki’s Café produce and sell AZEKA’S
RIBS. The license was never completed due to the loss of financial backing for Mr.
Akiyama’s proposed restaurant, as the economic recession hit in 2008. Tyler and Mr.
Akiyama remained acquaintances, with some interactions at different business and
social functions. Mr. Akiyama “continued to express interest in wanting to take over
or continue manufacturing and selling AZEKA’S RIBS because it was such a popular
product.” (20 TTABVUE 17-18). The most recent discussions between the two
occurred in February 2016, when Mr. Akiyama expressed a continuing interest in the
mark in connection with “his second attempt at establishing Aki’s Café”; nothing in
the record indicates, however, that the café ever opened. (20 TTABVUE 20).
According to Tyler, the only “active discussions” with anyone about licensing the
mark are with Mr. Akiyama. (20 TTABVUE 40).
Tyler drafted a letter to the meat department manager of Costco on Maui in
November 2010, but never heard back, and Costco is not considered a licensing
candidate. (20 TTABVUE 47-48). That same month, Tyler also contacted Whole Foods
grocery store about AZEKA’S RIBS, but never received a response. (20 TTABVUE 48-
49).
Opposition No. 91218679

24

Opposer received in 2011 a letter from a Mr. Barbieri (living in Washington state)
who had an interest in obtaining a license; however, Opposer did not follow up with
him. (20 TTABVUE 37-38; Ex. 7, 20 TTABVUE 128, 137-138).
Through a mutual contact, Tyler received in 2011 an inquiry from Peter Lappin
of Western Quality Meats about licensing the mark in Canada. Although Tyler
responded, no negotiations followed. (20 TABVUE 38-40; Ex. 7, 20 TTABVUE 132,
135).
Higa Market, a wholesaler and retailer of meat products in Honolulu, Oahu, by
way of Todd Oda (Opposer’s former sales representative), from whom Opposer
purchased ribs, expressed an interest in a license, and there were “a few” calls during
2011-2012 between Tyler and Mr. Oda. Although Tyler considers Higa Market to be
“a potential candidate for licensing,” there have been no discussions since 2012. (20
TTABVUE 43-44; Ex. 7, 20 TTABVUE 134).
Opposer also received an email in 2012 from an interested party, Mr. Noguchi, in
Japan to produce AZEKA’S RIBS under license in Japan. Other than the one email
(translated and forwarded by Yuji Takagi), there was no contact between the two. (20
TTABVUE 34-35; Ex. 7, 20 TTABVUE 124-126).
After 2012, there appears to be a three-year gap until the next licensing activity
in 2015, coming after the commencement of this proceeding in September 2014. There
is an email to Jan Tsukazaki (a cousin of Tyler) of Food Solutions (parent company of
Zippy’s food outlet located in Hawaii), and there were discussions in 2015 regarding
Zippy’s desire to sell pre-cooked ribs, rather than raw ribs (as Opposer sold them
Opposition No. 91218679

25

when it was an active business). Opposer previously indicated in 2006 that it was not
willing to offer Food Solutions an exclusive license, and reiterated in 2015 that it
wanted to keep its options open. Thus, no additional discussions took place. (20
TTABVUE 31-32; 64-66; Ex. 7, 20 TTABVUE 118-119, 123).
Also in 2015 Opposer and Lynn Araki-Regan exchanged emails. Tyler discovered
that years earlier she had expressed an interest in a license. Being unsure if he had
ever followed up on her inquiry, Tyler got in touch with Ms. Araki-Regan, but she did
not express a present interest in a licensing opportunity. (20 TTABVUE 33-34; Ex. 7,
20 TTABVUE 120-122).
John and Christine Arabatzis, through their restaurant Pita Paradise Bistro on
Maui, contacted Tyler in May 2015. They were “big fans” of AZEKA’S RIBS, serving
the product at employee functions, and indicated to Tyler that “if you ever give up
doing Azeka’s Ribs or retire, I’d be interested in continuing Azeka’s Ribs.” Tyler
delivered a “licensing brochure” to them. Although Tyler considers them to be a
“potential continuing candidate” for licensing, there were no discussions after
delivery of the brochure. (20 TTABVUE 40-42).
Also in May 2015 Tyler sent a licensing brochure to Kono Sai Akao, owner of two
restaurants on Maui, Kono’s on the Green and Antonio’s. The record is silent as to
any actual follow-up discussions. (20 TTABVUE 42).
In three additional instances, Tyler could not pinpoint a time frame in which
contact was made regarding a license. Tyler contacted Ah Fook’s, a grocery store on
Maui, and discussed (via Raymond Hew) a license, but Mr. Hew explained that the
Opposition No. 91218679

26

store was not interested, and is not considered to be a licensing candidate. (20
TTABVUE 45). Tyler contacted Pukalani Superette, which was “interested briefly”
but declined to pursue further negotiations. (20 TTABVUE 46-47). Opposer’s
accountant indicated to Opposer that he had a client who managed a grocery store,
Haiku Grocery Store, and that he was interested in a licensing opportunity. However,
contact was never made between Opposer and the grocery store. (20 TTABVUE 35-
36).
Opposer’s statement that it never had an intention to abandon the mark, without
more, is of little importance. See Imperial Tobacco Ltd. v. Philip Morris Inc., 14
USPQ2d at 1394 (“In every contested abandonment case, the respondent denies an
intention to abandon its mark; otherwise there would be no contest.”). See also
Cerveceria Modelo S.A. de C.V. v. R.B. Marco & Sons Inc., 55 USPQ2d 1298, 1303
(TTAB 2000). Thus, to support a finding of intent to resume use of the mark the owner
must do more than simply assert a vague, unsubstantiated intent to make use of the
mark at some unspecified time in the future. Rather, the owner must build a record
“with respect to what activities it engaged in during the nonuse period or what
outside events occurred from which an intent to resume use during the nonuse period
may reasonably be inferred.” Imperial Tobacco Ltd. v. Philip Morris Inc., 14 USPQ2d
at 1394.
“Once the challenger shows discontinued use, the owner must produce evidence
of intent to resume use ‘within the reasonably foreseeable future.’ … Of course, what
is meant by the ‘reasonably foreseeable future’ will vary depending on the industry
Opposition No. 91218679

27

and the particular circumstances of the case … it might be reasonable for a fire truck
manufacturer to spend five or six years considering the reintroduction of a brand,
even though the same passage of time would be unreasonable for a maker of a more
ephemeral product, say potato chips.” Emergency One Inc. v. Am. FireEagle Ltd., 228
F.3d 531, 56 USPQ2d 1343, 1348 (4th Cir. 2000). A food preparation business does
not have particularly high barriers to entry. Here, Opposer’s goods are an easily
produced and distributed food product. Opposer cannot rely on desultory efforts to
license a mark for such a product to keep someone else from adopting a mark it has
abandoned – a mark it can neither maintain on the register nor use in a commercially
significant way. See Gen. Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87
USPQ2d 1179, 1183 (TTAB 2008); Hornby v. TJX Cos. Inc., 87 USPQ2d 1411, 1421
(TTAB 2008).
Upon close and careful consideration of Opposer’s attempts to license the mark,
we find that the attempts, both individually and collectively, fall short of rebutting
the presumption of abandonment. The period of Opposer’s nonuse of the mark
AZEKA’S RIBS exceeds ten years. This lengthy period of nonuse heightens the
inference of intent not to resume use, especially given the nature of the product. The
only licensing attempt of any consequence appears to be the one with Aki’s Café; even
then, however, those discussions occurred in 2008, over 8 years ago; more recent
discussions in 2016 revolved around a planned restart of Aki’s Café, but nothing in
the record reveals that the café was ever opened. All of the other sporadic licensing
activities, which effectively added up to nothing more than isolated discussions, do
Opposition No. 91218679

28

not establish an intent to resume use. After use stopped in August 2006, until 2016,
Opposer recounted approximately fifteen contacts with licensee prospects; virtually
all of the contacts involved a single email or discussion, with little to no follow-up. In
several instances, the contact was initiated by a third party, not Opposer; in these
instances, the record falls short of showing that Opposer responded to or seriously
considered any of the unsolicited inquiries in a manner that permits us to infer an
intent to resume use of the AZEKA’S RIBS mark. Essentially the evidence in this
case does not show, except in one instance, focused negotiations toward execution of
a license agreement; rather, these mostly “one and done” contacts were sporadic,
cursory and, given the lack of Opposer’s follow-up in most instances, half-hearted,
with zero licenses executed. Opposer’s efforts were neither consistent nor sustained.
Evidence of vague discussions concerning the potential use of the mark at some
unknown point in the future are insufficient to show an intent to resume use. Rivard
v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376-77 (Fed. Cir. 1998); Imperial
Tobacco Ltd. v. Philip Morris Inc., 14 USPQ2d at 1396; Auburn Farms Inc. v. McKee
Foods Corp., 51 USPQ2d 1439, 1443-45 (TTAB 1999). See also Emergency One Inc. v.
Am. FireEagle Ltd., 56 USPQ2d at 1347-48 (“Requiring the owner to have an intent
to use the mark in the reasonably foreseeable future ensures that valuable
trademarks are in fact used in commerce as the Lanham Act intends, rather than
simply hoarded or warehoused.”). In any event, putting aside its licensing attempts,
Opposer has not given any explanation or reason why it could not use the mark
AZEKA’S RIBS on its own in the absence of a license; the record simply is devoid of
Opposition No. 91218679

29

any evidence showing a specific and consistent plan to resume use during a period of
ten years. See Hornby v. TJX Cos. Inc., 87 USPQ2d at 1421 (“Petitioner has not
provided any excuse or indeed any reason at all for this long period of nonuse, nor
has she provided any evidence about her plans to resume use of the mark … ‘Use’ of
a mark means ‘the bona fide use of such mark made in the ordinary course of trade,
and not made merely to reserve a right in a mark.’ Merely because a party used a
mark a long time ago and it could use the mark in the future is not sufficient to avoid
abandonment.”). See also Silverman v. CBS Inc., 870 F.2d 40, 9 USPQ2d 1778, 1783
(2d Cir. 1989).
Accordingly, we conclude that Opposer’s pleaded mark is abandoned, that is,
there has been nonuse since 2006 with intent not to resume use. Opposer cannot
demonstrate priority of use of its pleaded mark, and the likelihood of confusion claim
fails.
Decision:
The opposition is dismissed on the ground of likelihood of confusion. The
opposition is sustained on the ground that the proposed mark is primarily merely a
surname, and registration to Applicant is refused.