THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed: March 20, 2013
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
C.F.M. Distributing Company, Inc.
v.
Theresa Costantine, as Personal Representative
of the Estate of Richard Costantine
______
Opposition Nos. 91185766
against Serial No. 77402411
________________________________________________________________________
Original Maryland Fried Chicken, LLC
v.
Theresa Costantine, as Personal Representative
of the Estate of Richard Costantine
_____
Opposition Nos. 91187377 and 91187378
against Serial Nos. 77402411 and 77497042
_____
Amber N. Davis of Beusse Wolter Sanks Mora & Maire P.A., for C.F.M. Distributing
Company, Inc., and Suzanne D. Meehle of The Meehle Law Firm, P.A., for Orig-
inal Maryland Fried Chicken, LLC.
Neil A. Saydah of the Saydah Law Firm for Theresa Costantine, as Personal Repre-
sentative of the Estate of Richard Costantine.
_____
Before Bucher, Holtzman and Taylor,
Administrative Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Opposition Nos. 91185766, 91187377 and 91187378
2
The involved applications were originally filed
in 2008 by Richard Costantine. He sought registra-
tion on the Principal Register of two marks, one an
image of a large exterior restaurant sign having
the words “Maryland Fried Chicken: Complete
Dinners To Go,” and a second of two chickens.
Both use-based applications recited the services as “restaurant services, includ-
ing sit-down service of food and take-out restaurant services” in International Class
43. After Richard Costantine passed away on October 8, 2008, his widow, Theresa
Costantine, was appointed as the personal representative of the estate of her late
husband, and is now “applicant” in these proceedings.
The first of these two applications, Application Serial No. 77402411, was filed
on February 21, 2008, by Richard Costantine, d.b.a. Maryland Fried Chicken, based
upon a claim of use anywhere and use in commerce since at least as early as Janu-
ary 1, 1980. The mark is described in the record as consisting of “a large vertical
rectangle containing an oval with a stylized design of a sign within the oval com-
prised of a small vertical rectangle with a checkerboard pattern and stylized designs
of a small chicken and a large chicken and the wording, ‘Complete Dinners To Go!’
superimposed over the rectangle and with a horizontal rectangle containing the
wording, ‘Maryland Fried Chicken’ and with the bottom legs of the sign terminating
in a stylized design of a flower patch comprised of flowers and bordered by bricks.”
Color is not claimed as a feature of the mark. Additionally, applicant has disclaimed
all the wording in the composite mark, namely, “no claim is made to the exclusive
Opposition Nos. 91185766, 91187377 and 91187378
3
right to use the word ‘Maryland Fried Chicken: Complete Dinners To Go’ apart from
the mark as shown.”
The second of these two applications, Application Serial No. 77497042, was filed
on June 12, 2008, based upon an identical claim of use of this mark anywhere and
use in commerce since at least as early as January 1, 1980. The mark is described in
the record as consisting of “little chicken standing next to big chicken.”
I. The Oppositions
C.F.M. Distributing Company, Inc. (C.F.M.) opposed Application Serial No.
77402411 only (Opp. No. 91185766) while Original Maryland Fried Chicken, LLC
(OMFC) has opposed both applications (Opp. Nos. 91187377 and 91187378) on the
following grounds:
1. Applicant’s marks resemble marks or trade names previously used by op-
posers, such that when such marks are used in connection with appli-
cant’s services they are likely to cause confusion, to cause mistake or to
deceive;
2. Applicant is not now the rightful owner of the marks, and was not the
rightful owner of the marks at the time of filing these applications;
3. Applicant has committed fraud on the United States Patent and Trade-
mark Office by filing these applications;
4. If applicant ever had any rights in these marks, such rights were lost
through abandonment of the marks, and they cannot be registered;
5. If applicant ever had any rights in these marks, such rights were lost
through naked licensing and an absence of quality control such that the
Opposition Nos. 91185766, 91187377 and 91187378
4
marks no longer identify a single source of goods and services, and there-
fore no longer function as trademarks and cannot be registered; and
6. If applicant ever had any rights in these marks, such rights were lost
through extensive third-party use of the marks, such that they no longer
identify a single source of goods or services, and therefore no longer func-
tion as trademarks and cannot be registered.
Applicant, in its answers, denied all the salient allegations of opposers’ original
and amended notices of opposition.1
II. The Record
The record in this case is voluminous and includes the pleadings, the files of the
involved applications; trial testimony and notices of reliance, with related exhibits,
submitted by each party. A partial listing of evidence submitted by opposers in-
cludes the following:
• Copies of extant, abandoned, expired and cancelled federal trademark applications
and registrations, owned by the parties to this litigation and by third parties;
• Copies of expired trademark registrations issued by the State of Florida;
• File history of several federal trademark applications for registration;
• Copies of assignment records from the Assignment Branch of the United States
Patent and Trademark Office;
• Corporate and leasing records for applicant’s Leesburg, FL restaurant and real es-
tate;
• Florida corporate records for enterprises involved in this litigation and of third
parties;
• Website printouts for third parties;
• Deposition Transcripts of Anthony Costantine, Theresa Costantine, Robert Cos-
tantine, Paul Dion and James Gourley;
• Copies of Opposers’ Request for Admissions and Applicant’s Responses to Request
for Admissions; Opposers’ Interrogatory Requests and Applicant’s Answer to Inter-
rogatories;
1 All three oppositions were eventually consolidated into a single proceeding, and separate
counsel for the opposers have coordinated their litigation strategies in these consolidated
proceedings.
Opposition Nos. 91185766, 91187377 and 91187378
5
• Corporate records for Maryland Fried Chicken, a general partnership; a Cross Col-
lateral Security Agreement dated April 1, 1975; and a Warranty Deed for Orange
Blossom Trail restaurant dated October 2, 1971; and
• Civil judgments of the Circuit Court for Orange County, Florida against Maryland
Fried Chicken, Inc. and James Mairs, dated May and September 1975.
The evidence submitted by applicant includes documents related to applicant’s
2009 litigation in an Orange County, Florida court against, inter alia, opposer, Orig-
inal Maryland Fried Chicken, LLC, along with a subsequent settlement agreement,
as well as the earlier affidavit of Richard Costantine dated February 28, 2008, with
attendant exhibits and the affidavit of Theresa Costantine dated August 26, 2010,
along with attendant exhibits. The parties filed lengthy briefs, and have consistent-
ly made arguments on a variety of matters, including some that we must determine
prior to reaching the merits of this litigation.
III. Preliminary matters
A. Applicant’s motion to strike
1. Deposition Transcript of Anthony Costantine: Notice of Reliance
filed March 30, 2012 (ESTTA Doc. # 75, Exhibit #AA ).
Applicant argues that the discovery deposition of Anthony Costantine should
be excluded from the record pursuant to Rule 2.120(j)(1). Applicant argues that
Anthony is not a party, he is not an officer, director or managing agent of the es-
tate, nor is he a witness designated by the estate to testify on its behalf, and that in
spite of the parties’ stipulations, applicant has not consented to the use of his
discovery deposition as evidence.
In response, opposer argues that there are multiple reasons why this discovery
deposition should be included. First, Richard Costantine did in fact file a fictitious
Opposition Nos. 91185766, 91187377 and 91187378
6
name registration in 2008 for Maryland Fried Chicken, and one of the listed co-
owners was Anthony Costantine.2 In many respects, Anthony holds himself out as
an agent of applicant given his long (more than 25 years) and direct (worker, man-
ager, etc.) involvement in the Maryland Fried Chicken restaurant in Leesburg, FL.
Finally, opposers argue that applicant’s counsel consented to the use of this testi-
mony on October 4, 2012.
We agree with opposers that throughout this proceeding, Anthony has played a
key role on applicant’s behalf,3 and he appears as a named principal in multiple en-
tities having claims to the involved logos (e.g., a Florida partnership, an entity reg-
istered with a fictitious name, and MTM Enterprises Group, LLC). Finally, it would
appear that applicant’s counsel had opportunity to object to this testimony and,
while objecting to some of the other submissions named by opposers, failed to object
to this deposition.4 Hence, we deny this motion, and have considered Anthony Cos-
tantine’s discovery deposition in reaching our decision herein.
2 See Exhibit X to Opposers’ Notice of Reliance.
3 For example, in addition to his own discovery testimony, he actually appeared with his
mother, Theresa, during her trial testimony and coached her at various points.
4 Opposer’s (OMFC’s) counsel sent a letter to applicant's counsel on September 23, 2012,
designed to secure a stipulation as to the documents being entered into evidence in Oppos-
ers’ Notice of Reliance. Attached to the letter was a list of the evidence that OMFC in-
tended to submit with its Notice of Reliance. This included item #4, “Deposition of Anthony
Costantine in the instant case.” The only deposition taken of Anthony Costantine at that
time was his discovery deposition, which was taken on March 23, 2011. On October 4,
2011, applicant's counsel, Mr. Saydah, responded objecting to six specific items of evidence,
but there was no objection to the deposition testimony of Anthony Costantine. Instead, after
his listed objections he indicated that “all other numbered items on the Evidence List
I will consent to.”
Opposition Nos. 91185766, 91187377 and 91187378
7
2. Opposer’s (C.F.M.’s) Notices of Reliance (ESTTA ##71, 72, 74,
and 75) were allegedly filed in an untimely manner, and hence
applicant argues they should be stricken.
The record shows that on three separate occasions, C.F.M.’s counsel tried to
file the involved Notices of Reliance. The first attempt was made in a timely
manner, but for some reason it appears as if the United States Patent and
Trademark Office website was unable to process the volume of documents sub-
mitted in conjunction with opposers’ Notices of Reliance. C.F.M.’s counsel made
several attempts immediately to correct this situation.5 There also was appar-
ently no harm to applicant inasmuch as it received copies of the filings without any
delay according to the Certificate of Service. Hence, we deny this motion, and have
considered the documents submitted via these Notices of Reliance in reaching our
decision herein.
3. Strike from the record Exh. A ((Doc. # 25, as attached to opposer
C.F.M.’s Amended Notice of Opposition) and strike all references
to Exh. A from opposer C.F.M.’s brief.
In response to this motion to strike, opposer C.F.M. acknowledges that it inad-
vertently failed to include this exhibit in the trove of other documents submitted
during its trial period, and so we grant this motion to strike, and have not consid-
5 We do note that the website for the Board's ESTTA electronic filing system (ESTTA)
(http://estta.uspto.gov/) states as follows: “Because unexpected problems can occur, you
should keep filing deadlines in mind and allow plenty of time to resolve any issue which
might arise. ... If ESTTA filing is not possible prior to a deadline for any reason, parties
should submit their filings in paper.”
Opposition Nos. 91185766, 91187377 and 91187378
8
ered a “Distribution Contract” between C.F.M. and Maryland Fried Chicken
(Exh. A) in our determination herein.6
B. Applicant’s motion to amend the dates of use
When filing the involved applications, Richard Costantine repeatedly claimed a
date of first use anywhere and use in commerce of January 1, 1980. Now applicant
has asked to amend its dates of use to claim first use anywhere almost twenty years
earlier, namely, on July 14, 1961, and use in commerce since at least as early as July
1, 1963.
These much earlier dates must be established by clear and convincing evidence.
See Bass Pro Trademarks LLC v. Sportsman's Warehouse, Inc., 89 USPQ2d 1844,
1856 (TTAB 2008) (respondent failed to provide clear and convincing proof of use
prior to the dates of use stated in the registration).
We note that although this record is extensive, the probative value of the record
has been significantly reduced by a variety of factors, inter alia: the imperfect or se-
lective memories of alleged business activities that happened as long as fifty years
ago; over the decades, key transactions claimed by applicant are supported by no
documentation, and critical testimony often seems to be contradicted by what doc-
umentary evidence is available; material witnesses who were principals of the par-
ties and who had personal knowledge of the business of the respective parties, in-
cluding adoption of their marks, died prior to this litigation; applicant’s principal
remaining witness, Theresa Costantine, presented credibility problems inasmuch as
6 This “Distribution Contract” of May 29, 1975, was attached to opposer’s (C.F.M.’s)
amended pleadings of October 14, 2009, but was not subsequently identified and introduced
in evidence during the period for the taking of testimony.
Opposition Nos. 91185766, 91187377 and 91187378
9
she professed in an earlier deposition to know substantially nothing of her late hus-
band’s business. Then in later testimony, in addition to contradicting her earlier
testimony, she seemed to have refreshed memories and more exacting details in ar-
eas where she earlier claimed to have no knowledge. Actually, at no time did There-
sa make any definitive statements on applicant’s dates of first use.7 We certainly
question whether her general statements tardily pulled from her memory concern-
ing these much earlier use dates of the marks were made based upon her own per-
sonal knowledge.
Similarly, Richard’s statements in his affidavit from the state court action con-
cerning earlier use dates are vague and are not supported by documentation. Then,
when comparing the testimony of Richard, Theresa and Anthony Costantine, when-
ever their statements move beyond vague and ambiguous generalities (“‘the compa-
ny’ went bankrupt in the late 70s”), the narratives surrounding ownership and con-
trol involve many contradictions and inconsistencies. This decreases significantly
the reliability of statements contained in some affidavits and testimony. In fact, as
to the specific first dates of use to which applicant wants to amend, we note that
even Richard merely recites to the undeniable fact that his brothers and extended
family members began using the mark in Orlando in the early 1960's. For example:
• Applicant was an original owner and operator of a restaurant at 2740 S. Or-
ange Blossom Trail, Orlando, which was the first restaurant that used the
Applicant’s trademark in approximately 1959, and in approximately June,
7 Theresa Affidavit, ¶10: “The Company opened a number of franchise restaurants in the
early 1960’s based on the original SOBT [South Orange Blossom Trail] restaurant, includ-
ing a Leesburg (Florida) Restaurant. The Leesburg Restaurant has operated continuously
and successfully since that time.”
Opposition Nos. 91185766, 91187377 and 91187378
10
1979, the Applicant purchased the Leesburg, Florida restaurant, which had
been using the Applicant’s mark from sometime in the 1960’s (and currently
is the only restaurant owned by the Applicant). Thus, the Applicant has con-
tinuously used the trademark since the inception of the first restaurant in
approximately 1959 to date.
• Applicant has continuously used the trademark either with the 2740 S. Or-
ange Blossom Trail, Orlando Florida restaurant or the Leesburg, Florida res-
taurant since approximately 1959.
• Richard Affidavit, ¶9: The Maryland Fried Chicken restaurant located in
Leesburg, Florida (the “Leesburg Restaurant”) was originally opened as a
franchise restaurant in the early 1960’s. The Leesburg Restaurant has oper-
ated continuously and successfully since that time.
Note that Richard does not state with specificity why he should be able at this
late date (i.e., 2008), shortly after alleging a first use date of 1980, to claim that he
continuously used the involved marks since very specific dates in 1961 or 1963.
Given the exacting standard against which we must weigh such an amendment,
we find that the affidavits and testimony put forward by applicant definitely fail to
provide clear and convincing support for an amendment to the dates of use. In fact,
as will be seen in much more detail below, based upon this entire record, it is ques-
tionable what rights applicant can even claim as of 1980.
IV. Background
We are faced herein with an extended family spat that has been building for
decades over the ownership of asserted source-indicators for restaurants selling
pressure-fried chicken. These disputes have survived the passing of three brothers
from what has been popularly referred to as “the greatest generation,” including
significantly for this proceeding, Richard Costantine’s death in 2008. The disagree-
ments all arise from a string of restaurants begun in the 1960s in the Orlando, Flor-
ida area trading under the name, “Maryland Fried Chicken.” While all the parties
Opposition Nos. 91185766, 91187377 and 91187378
11
to this litigation seem to agree that in the context of fast food restaurants, this
three-word term, “Maryland Fried Chicken,” retains substantially no source-
indicating capacity, that has not stopped constant disagreements over a range of
cartoon-like fowl images alone and within a variety of composite Maryland Fried
Chicken service marks and trademarks, apparently used in Central Florida by both
related and un-related parties since the 1960s.
A. The Constantine/Costantine family
In order to present the extended family relationships integral to this dispute in
an understandable context, we have created from the record an abbreviated Family
Tree as well as an undated photograph from happier times:
8
B. The fifty year narrative
Albert Constantine, a native of Wilmington, Delaware, moved to Orlando, Flori-
da in 1958-59. His full-menu, sit-down restaurant known as simply “Constantine’s”
was opened in 1959 at 2740 South Orange Blossom Trail (SOBT), Orlando, FL. Af-
8 In addition to observing their lack of “constancy” with business naming practices, one will
note a decidedly relaxed attitude toward spelling of the shared family name. While Albert
spelled his surname with the Latin “Constantine,” as did his father, the family patriarch,
his two younger brothers (and their families) seem to prefer the more familiar “Costantine.”
Opposition Nos. 91185766, 91187377 and 91187378
12
ter experimenting with thousands of combinations of ingredients and steps for pre-
paring chicken using pressure-fryers and pure peanut oil, he decided to target the
many Baltimoreans then in Central Florida by selling his delicious product as
“Maryland Fried Chicken.” This three-word term has evidently been used much fur-
ther north (e.g., in the Delmarva Peninsula) since at least as early as 1828, when
one Mary Randolph used the term “Maryland Fried Chicken” in her book, The Vir-
ginia House-Wife. By his own admission, Constantine also had grand ideas of taking
on an honorary Kentucky colonel named Harland Sanders, then becoming well-
known for his own popular brand of franchised fried chicken.
In February 1961, Albert Constantine and a partner of his, W.H. Truesdell, filed
a Florida trademark application for MARYLAND FRIED CHICKEN. The address of
applicant was Spartan Drive and Highway 17/92, in Maitland. According to later
federal trademark applications, Albert Constantine claimed July 14, 1961 as the
first date that the term MARYLAND FRIED CHICKEN was used.
Evidently sometime later, Albert’s two younger brothers, Angelo (Angel) R. Cos-
tantine (1923-2002) and Richard J. Costantine, Sr. (1927-2008), moved to Florida
from Delaware and allegedly bought out Mr. Truesdell's interest in the growing
business, although there appears to be no documentation in this extensive record
supporting when this alleged purchase took place, or indeed, whether it ever actual-
ly happened this way. In any case, a “chattel mortgage” document from February
1962 shows that brothers Angelo, Albert and Richard were “doing business as Con-
Opposition Nos. 91185766, 91187377 and 91187378
13
stantine’s Restaurant.”9 At some indeterminate point, Albert Constantine erected a
35-foot high sign saying “Maryland Fried Chicken” in front of Constantine’s Restau-
rant, and his fried chicken became an instant hit. It is the imagery of this sign that
is portrayed in the drawing of involved Serial No. 77402411 and several third-party
composite marks implicated herein.
Witnesses for applicant move from vague discussions of “the Company” (e.g.,
Albert and Truesdell, then Albert, Angelo and Richard) during the early sixties and
quickly morph into the history of “Maryland Fried Chicken, Inc.” However, despite
no evidence of the legal structure of “the Company” between 1959 and 1963, it
seems clear that “Maryland Fried Chicken, Inc.” was not created until 1963, and the
documents of record demonstrate no ownership interest in this entity by Richard or
Angelo.
On July 22, 1964, Maryland Fried Chicken, Inc., a Florida corporation (of Mait-
land, FL) filed USPTO Application Serial No. 72198364 for “carryout restaurants”
claiming first use anywhere as of July 14, 1961, and first use in com-
merce since at least as early as July 1, 1963, from which the resulting
Registration No. 0798190 issued on October 26, 1965. Registrant
agreed during the prosecution of this registration that “no claim was
made to the exclusive right to use the words ‘Maryland Fried Chicken’ or the repre-
sentation of the chicken apart from the mark as shown. This entity initiated a
9 ESTTA #64, Theresa, Exh. 3.
Opposition Nos. 91185766, 91187377 and 91187378
14
franchise system beginning with outlets in the
Orlando area. In any case, the record shows
that an inventory of restaurant equipment cre-
ated on December 9, 1964, was for the eatery
still known as “Constantine’s Restaurant.” As
seen in the above photo taken in early November 1967, the name Constantine’s Res-
taurant and Maryland Fried Chicken were both prominently displayed as service
marks for the establishment. Applicant actually argues that this photo of Richard’s
wife, Theresa (and the current “applicant”), taken in front of Constantine’s Restau-
rant is a piece of the overall proof of its continuous use of the marks since at least
1967. However, as noted by opposers, applicant has been unable to provide a single
piece of documentation that Richard Costantine was ever an officer, director or
owner of Maryland Fried Chicken, Inc., or that he or Angelo ever had a property in-
terest in the original Maryland Fried Chicken restaurant on SOBT (or any other in-
dividual restaurant in the 1960s to mid-70s).
While applicant suggests that “the Company was operated by the brothers Al-
bert, Richard, and Angelo Costantine” for some unspecified number of years, grow-
ing divisions among the brothers were apparent from the mid-1960s. Among the
confusing web of companies that have come and gone, two new corporations were
formed within days of each other in May 1967. First, on May 24th, National Restau-
rant Supply Inc., (Maitland FL) was formed by the two younger brothers, Angelo
Costantine, Pres. & Treas. (Apopka FL), and Richard Costantine, VP & Sec.
(Altamonte Spring FL), having a business mailing address of 1712 Hwy 17/92, Mait-
Opposition Nos. 91185766, 91187377 and 91187378
15
land.10 Among its roles was distribution of packaging, etc. Although applicant also
contends that this entity retained ownership of the five restaurants then in exist-
ence, there is nothing in the record to verify that to be true.11 Then days later, on
May 26th, “Maryland Fried Chicken of S.O.B.T., Inc.,” was allegedly formed, There-
sa (President), Robert (V.P.), and Michael Costantine (Sec./Treas./Director). We
have seen no evidence of any trademark assignments from Maryland Fried Chicken,
Inc. to National Restaurant Supply, to Maryland Fried Chicken of S.O.B.T., Inc., or
to Richard, Theresa or Angelo. Based upon the overall record and the lack of docu-
mentation supporting applicant’s position, there remain many unanswered ques-
tions about the purpose and role of these two corporations, what tangible or intan-
gible properties, if any, they may have owned, and how these entities related to the
Maryland Fried Chicken, Inc. entity formed on February 15, 1963. As of May 1967,
Albert seemed to be in control of Maryland Fried Chicken, Inc., which was still very
much in existence, and possessed a claim to the chain of title in the only existing
federal trademark registration owned by the family.
The next corporate iteration of Maryland Fried Chicken, Inc., was a Delaware
corporation listing principals named James F. Mairs (Winter Park FL), Carol Regis-
ter and Robert Warfield. This was formed on April 16, 1970, and was the surviving
entity after a merger with Maryland Fried Chicken, Inc., the Florida Corporation,
formed in February 1963, and Maryland Fried Chicken of America, Inc., a Georgia
10 Richard Affidavit, ¶10: “Maryland Fried Chicken, Inc. ultimately went bankrupt and
dissolved. At that time, Angelo and I formed National Restaurant Supply, Inc., which re-
tained ownership of five Maryland Fried Chicken restaurants … I took ownership of the
restaurant located on Orange Blossom Trail.”
11 Id.
Opposition Nos. 91185766, 91187377 and 91187378
16
Corporation (about this latter disappearing entity, the record reveals nothing). We
note that within these records of incorporation, there is no indication of the owner-
ship interest of Richard Costantine, or indeed, any member of the Constan-
tine/Costantine family. Nonetheless, Albert seems to have retained an interest in
the surviving Delaware corporation inasmuch as on July 23, 1971, he signed the
Sections 8 and 15 affidavits on Registration No. 0798190 as “president” of Maryland
Fried Chicken, Inc. The 1971 specimens of record refer to the fact that “Maryland
Fried Chicken” is “prepared from Al Constantine’s famous recipe … .”
Then on October 2, 1971, the original South Orange Blossom Trail property was
transferred from Maryland Fried Chicken, Inc. (with signatures by Pres. Albert C.
Constantine and Treas. Lee Jay Colling) to Albert C. Constantine, as an individu-
al.12 It was not until 1985-86 that Albert Constantine, in connection with the twen-
ty-year renewal of federal Registration No. 0798190, recorded a nunc pro tunc as-
signment to himself that he then declared had been effective as of January 1, 1972.
If these two documents are to be trusted, as of 1971-72, it appears as if Albert Con-
stantine considered himself then to be the sole owner of the original restaurant on
South Orange Blossom Trail as well as of the federal trademark registration.
The record contains some claims that Albert Constantine “went on to establish a
chain of [Maryland Fried Chicken restaurants] that earned him millions before he
12 See opposers’ Exhibit JJ. This would certainly seem to contradict applicant’s claim that
Richard “took ownership of the restaurant located on Orange Blossom Trail.”
Opposition Nos. 91185766, 91187377 and 91187378
17
finally sold the franchise operation in 1975.”13 Other witnesses claimed that after
“the Costantine brothers” built a successful franchise system of Maryland Fried
Chicken … in the 1960s and 1970s,” the “brothers sold the Company.”
While these two “successful” scenarios are contradictory in their details, the
documents in the record suggest that perhaps the unvarnished truth is even more
complicated. Between April and September of 1975, various contracts, security
agreements growing out of unpaid promissory notes, and multiple judgments
against Maryland Fried Chicken, Inc., and against James F. Mairs, support the
conclusion that the Maryland Fried Chicken enterprise was experiencing financial
difficulties. Sprinkled throughout the record is testimony about the company “going
bankrupt” in the 1970s.14 Also in the time frame of 1975-76, C.F.M. Distributing,
one of the opposers herein, agreed to handle the continued distribution of fast food
products and other supplies to Maryland Fried Chicken, Inc.’s restaurants. By the
time C.F.M. Distributing appeared on the scene in the mid-1970s, Angelo and Rich-
ard Costantine’s National Restaurant Supply Inc. was clearly no longer in business.
In June 1978, another entity known as Maryland Fried Chicken, Inc. was
formed by Evan and Zack Zagoria (South Miami FL), who also submitted a Florida
state trademark application for MARYLAND FRIED CHICKEN: COMPLETE DINNERS
TO GO. Although there may have been a franchisee in Miami at that time, this
short-lived Florida corporation seems to have had no relationship with any of the
13 Several citations within the record: see e.g., http://marylandfriedchicken.com/ as captured
on 10/01/2009; Original Article http://www.citypaper.com/special/story.asp?id=6651, in the
Baltimore City Paper.
14 See, e.g., Testimony of Anthony Costantine at 16, 19.
Opposition Nos. 91185766, 91187377 and 91187378
18
Constantine/Costantine family enterprises and no perceptible effects on the owner-
ship rights of anyone involved in this dispute.
There is no indication in the record that Richard Costantine was involved with
the family business at all between the mid-1970s and 1979. In fact, it was not until
June 1979 that Richard and Theresa Costantine leased a pre-existing Maryland
Fried Chicken restaurant located at 708 N. 14th St., Leesburg, FL. This conveyance
had a detailed listing of restaurant contents, including the “Henny Penny” pressure
fryers, but without any indication of a transfer of even the goodwill associated with
that restaurant. The town of Leesburg is located in Lake County, some distance
west of Orange County and the city of Orlando. Richard and Theresa’s son, Robert,
now estranged and a principal in opposer, Original Maryland Fried Chicken, LLC,15
was involved in 1979-80 with opening the Leesburg restaurant. Robert’s younger
brothers, Michael and Anthony were part of this family operation for years, and
continue to be employees of the Maryland Fried Chicken restaurant of Leesburg.
Although declarations and testimony submitted in support of applicant repeatedly
claim that the Leesburg restaurant has been operating continuously since the
1960s, there is no documentation to support this claim.16 To the contrary, the tract
of land located at 708 N. 14th St., Leesburg was leased to Burger Queen of Leesburg,
15 OMFC was not formed until decades later, around 2006.
16 In other affidavits, Richard claimed to have taken over ownership of the restaurant on
Orange Blossom Trail, perhaps rationalizing this bridge as support for continuous owner-
ship of a Maryland Fried Chicken operation continuously since the 1960s, but there are
several problems with this line of reasoning. First, there is nothing in the record corroborat-
ing the claim that Richard regained ownership of the SOBT restaurant, and it also seems
clear that the SOBT location closed before Richard took over the Maryland Fried Chicken
restaurant in Leesburg.
Opposition Nos. 91185766, 91187377 and 91187378
19
Inc., in February 1961, a building then had to be constructed, and the resulting res-
taurant was operated as a Burger Queen restaurant at that location at least until
1966. Throughout much of the 1970s, this restaurant location was an independent
Maryland Fried Chicken restaurant, operated by another tenant, U-MAC Fast
Foods Inc. of Leesburg (Cecil and Mary Harris), until at least 1976. It also seems
clear from Anthony’s testimony that his parents, Richard and Theresa, never ex-
panded beyond the Leesburg restaurant location (i.e., at any time since 1979-80).17
Then, as noted earlier, in 1985-86, Albert Constantine recorded his nunc pro
tunc assignment (allegedly as of January 1, 1972) to himself, and then immediately
renewed this federal trademark registration individually as the sole “owner” of the
federal trademark registration.
Almost ten years later, on October 26, 1995, Albert C. Constantine assigned his
entire interest in the federal registration to Edith Swain of Waycross GA.18 Appli-
cant questions whether this 1995 transaction involved the transfer of anything of
residual value. In fact, Anthony referred to family lore that sometimes Albert “tried
to make a quick buck.”19 Then in 1997-98, Richard Heavilon and Edith Swain, as
joint owners, filed applications for THE ORIGINAL MARYLAND FRIED CHICKEN (in
standard character format and in special form) and AL’S ORIGINAL MARYLAND
FRIED CHICKEN, all for “restaurant services.” Also in 1997, C.F.M. Distributing
Company, Inc., one of the opposers herein, filed a cancellation, resulting in the can-
17 Anthony testimony at 45.
18 Registration No. 0798190; assignment recorded at Reel 1539/Frame 0149.
19 Anthony testimony at 28.
Opposition Nos. 91185766, 91187377 and 91187378
20
cellation of Registration No. 0798190 that had issued on October 26, 1965. Despite
the alleged transfer of ownership to Ms. Swain, according to United States Patent
and Trademark Office records, Albert Constantine appeared pro se in this action.
The record contains a Florida Secured Transaction Registry document of April
23, 2002, that was filed on behalf of Maryland Fried Chicken, a Florida General
Partnership, and signed by Michael, Anthony and Richard Costantine.
On July 14, 2005, after almost a decade of some form of ownership of the federal
trademark registrations for MARYLAND FRIED CHICKEN, THE ORIGINAL MARY-
LAND FRIED CHICKEN, AL’S ORIGINAL MARYLAND FRIED CHICKEN, Ms. Edith
Swain, of Waycross Georgia, assigned her half interest in Registration No. 2428658
(THE ORIGINAL MARYLAND FRIED CHICKEN in special form) to Robin S. Heavilon,
an individual residing in Blackshear, Georgia.20
In July 2006, Robert Costantine, through Original Maryland Fried Chicken,
LLC, (opposer to both applications involved herein) opened his own Maryland Fried
Chicken restaurant (the “Apopka restaurant”) at 1672 South Orange Blossom Trail,
Apopka (Orange County), FL.
Then in February 21, 2008, one of the applications at issue (Serial No.
77402411) was filed by Richard Costantine, an individual, d.b.a. Maryland Fried
Chicken. A second application filed on the same day (Serial No.77403096) for the
mark MARYLAND FRIED CHICKEN (in standard character format) was refused by the
20 The record shows that at some point in the past, opposer C.F.M. was also involved in lit-
igation with Ms. Swain in order to ensure that they could continue supplying restaurants
with Maryland Fried Chicken imprinted products. See Testimony of James E. Gourley, at
35-37.
Opposition Nos. 91185766, 91187377 and 91187378
21
examining attorney as being merely descriptive. On the same day (February 21,
2008), co-owners Anthony, Michael and Richard Costantine, using the restaurant
address of 708 N. 14th St., Leesburg, FL, registered “Maryland Fried Chicken” as a
Fictitious Name for their group. Then on June 12, 2008, the second of the applica-
tions at issue (Ser. No. 77497042, i.e., “little chicken standing next to big chicken”)
was filed by Richard Costantine, d.b.a. Maryland Fried Chicken. We note that in all
three of these applications, the claimed date of first use is January 1, 1980, which is
generally consistent with the enlargement and re-opening of the Maryland Fried
Chicken restaurant in Leesburg by Richard and Theresa Costantine in the 1979-80
timeframe.
On October 8, 2008, Richard Costantine passed away and Theresa Costantine
was appointed as the personal representative of her late husband’s estate.
Within months of his father’s death, Robert Costantine opened a Maryland
Fried Chicken restaurant (Feb-March 2009) at 17195 US Hwy 441, Mt. Dora (Lake
County), FL. While Robert argues that no one entity or individual retained any ex-
clusive rights in the Maryland Fried Chicken logos as of that date, it does appear as
if Albert Constantine provided encouragement for his nephew, Robert.21 Following a
temporary injunction by an Orange County court, Robert signed a settlement
21 Richard Affidavit, ¶23: “I was recently provided a copy of a document signed by my
brother Albert purporting to give Robert the right to use the Mark and freely open Mary-
land Fried Chicken restaurants [2005]. My brother Albert is not of sound mind and has
spent the past few years in a nursing home. He has not been involved in the business for
well over twenty years and has no rights in the Mark. Notwithstanding his lengthy absence
from the business, this is not the first time Albert has attempted to convey his non-existent
rights to the Mark. He previously attempted to assign all of his rights in the Mark to a
woman in Georgia. It is my understanding that a court determined the assignment docu-
ment to be worthless during litigation between her and our distributor.”
Opposition Nos. 91185766, 91187377 and 91187378
22
agreement whereby Original Maryland Fried Chicken, LLC and Robert Costantine
agree not to place a Maryland Fried Chicken restaurant in Lake County, FL. In
ending what has been characterized by opposer C.F.M. as nothing more than a
“family dispute,” Robert testified that his “[signing the settlement agreement] was
just to – to make my mother happy. You know what I’m saying? …”
On June 5, 2009, Application Serial No. 77752805 (“Modern” Chicks Design)
was filed by MTM Enterprises Group, LLC, based upon applicant’s claim of use an-
ywhere and use in commerce since at least as early as May 1, 2009.22 This applica-
tion has been suspended awaiting the outcome of Application Serial No. 77497042,
the second application at issue. This application was not filed by applicant (i.e., the
estate of Richard Costantine). Rather, MTM Enterprises Group, LLC is a franchis-
ing company owned by Anthony Costantine, Michael Costantine and their previous
attorney in this case, Matthew McKinney.23 In this latest family chapter, it seems
that Richard's two youngest sons, Michael and Anthony Costantine, who had oper-
ated his Leesburg restaurant with him side-by-side for nearly thirty years, are still
hoping to capitalize on the family business by offering exclusive and authentic Mar-
yland Fried Chicken Franchises to potential franchisees in multiple areas. Howev-
er, as noted by opposers, Theresa Costantine is not listed as an owner of MTM En-
22 We also note that although this was a Section 1(a) application based on use in commerce,
applicant’s own witnesses have admitted that no one actually uses this mark and that the
applicant, MTM Enterprises Group, LLC, owns no restaurants.
23 Evidently any email inquiries sent to info@MarylandFriedFranchise.com go largely to
Matthew McKinney. Anthony testimony at 37.
Opposition Nos. 91185766, 91187377 and 91187378
23
terprises Group, LLC.24 And although the record contains testimony that Theresa
allegedly gave MTM a license, there is no documentation supporting this claim.
In October 2009, opposers accessed << http://marylandfriedchicken.com/ >> a
website allegedly owned by one Michael Smith of Conway, SC – but having no obvi-
ous connections to anyone associated with applicant.25
On September 29, 2010, this Board held Richard Costantine’s mark MARYLAND
FRIED CHICKEN (Ser. No. 77403096) to be merely descriptive, and furthermore, that
the claimed § 2(f) showing of acquired distinctiveness was insufficient.26
Then on January 12, 2011, Application Serial No. 85216239 for MARYLAND
FRIED CHICKEN was filed by Theresa Costantine d.b.a. Maryland Fried Chicken,
based upon applicant’s claim of use anywhere as early as July 14, 1961, and use in
commerce since at least as early as July 1, 1963. As seen earlier, there is a Mary-
land Fried Chicken entity recorded with a fictitious name, but the named owners
are her sons Anthony and Michael, and her late husband, Richard, but not There-
sa.27
C. The opposers in focus
1. Original Maryland Fried Chicken, LLC
24 See Exhibits D and M.
25 See Exhibit Z. Note, this should not be confused with http://www.marylandfried.com/ an-
other website shown in the record advertising the Melbourne (FL) “Original Maryland
Fried Chicken” restaurant – an operation that is located far away from Orange County.
Although other evidence in the record suggests that this restaurant is still in existence, the
website from which the screen print was copied is now defunct. Of course, applicant is not
shown to be affiliated in any way with either of these websites.
26 See Exhibits K1-K5.
27 See Exhibit C.
Opposition Nos. 91185766, 91187377 and 91187378
24
Robert Costantine helped his father set up the Leesburg, Florida restaurant in
1979-80. He opened a Maryland Fried Chicken restaurant in Apopka (Orange Coun-
ty) in 2006, which is still in operation. When Robert individually, along with Origi-
nal Maryland Fried Chicken, LLC, of which Robert is president, tried to open a se-
cond location in Mt. Dora in 2008, his late father sued him over the placement of
this restaurant in the same county – noting inter alia that the Mt. Dora site was on-
ly thirteen miles away from the Leesburg restaurant via a major U.S. highway. This
single action of suing his eldest living son was the only evidence in the record of
Richard’s policing the claimed marks on the part of applicant. Evidently Robert and
Richard were estranged from each other at the time of his father’s death. The even-
tual settlement agreement simply prohibits Robert from establishing another res-
taurant within Lake County.
2. C.F.M. Distributing Company, Inc.
C.F.M.28 was formed with the support and blessing of the owners of Maryland
Fried Chicken, Inc. The timing suggests it may well have taken over a role played
earlier by the then-defunct National Restaurant Supply, Inc. Since some indetermi-
nate date in the early 1970s, C.F.M. has served as the commissary and exclusive
distributor of goods and materials bearing the involved marks for the expanding
number of Maryland Fried Chicken restaurants as they cropped up across the
southeastern states. In the mid-1970s, C.F.M. began distributing C.F.M.’s proprie-
tary coleslaw and breading mix, food containers, disposable paper, plastics, T-shirts,
28 There is a hint of a sense of humor in the suggestion in the record that C.F.M. is simply
a reverse spelling of the initialism, M.F.C.
Opposition Nos. 91185766, 91187377 and 91187378
25
and chemical cleaners – substantially all of which were emblazoned with the Mary-
land Fried Chicken logos. By 1975, the hold of the Constantine/Costantine family on
its “franchise operations” seemed to be at risk with the financial difficulties being
experienced by the family business of fast-food restaurants.
Despite the confusing and conflicting record of Constantine/Costantine family
ownership, C.F.M. has been continuously providing fast food products and other
supplies to an ever-changing number of Maryland Fried Chicken restaurants (ap-
proximately thirty nationwide, and a dozen still in the state of Florida). Each of the-
se restaurants has continued to be independently owned and operated – some for
more than forty years and in some cases documented in the record, now inde-
pendently owned and operated by the second generation of family members.29 In
fact, it is interesting to note that for much of the past thirty years, C.F.M.’s custom-
ers have included applicant’s Leesburg restaurant, which purchases boxes and oth-
er supplies from C.F.M. bearing Maryland Fried Chicken trademarks and logos.
D. Timeline
Given the extensive record created during this litigation, we have set up a brief
timeline of relevant, documented events over the past fifty-five years:
1958 Albert Constantine (1921-2009) second son of Italian immigrants, Alphonse
and Rose Constantine (then of Delaware), moved to Orlando Fl. with plans
to open a restaurant
Feb/March
1959
Albert and his mother together purchased a restaurant property located at
27th and South Orange Blossom Trail from Burrell Chastain (formerly
“Chastain’s Restaurant”) 2740 South Orange Blossom Trail, Orlando, FL,
and soon thereafter opened “Constantine’s Restaurant”
29 Testimony of James E. Gourley, at 15-16, 20, 35, 45, 49.
Opposition Nos. 91185766, 91187377 and 91187378
26
Feb. 10, 1961 Florida state trademark application for MARYLAND FRIED CHICKEN was
filed by W.H. Truesdell and Albert Constantine30
Albert’s two younger brothers, Angelo (Angel) R. Costantine (1923-2002)
and Richard J. Costantine, Sr. (1927-2008), moved to Florida from Dela-
ware and bought out Mr. Truesdell's share of the Company
July 14, 1961 Date of first use anywhere as claimed on Maryland Fried Chicken Inc. fed-
eral trademark application
Feb. 21, 1962 Angelo R. Constantine, Albert Constantine and Richard Constantine, were
still doing business as Constantine’s Restaurant31
February 15,
1963
Maryland Fried Chicken Inc. a Flori-
da corporation, was formed
[Merged into Maryland Fried
Chicken, Inc., a Delaware corpora-
tion on April 16, 1970]
July 1, 1963 Date of first use in commerce as claimed on MFC Inc. federal trademark
application
July 22, 1964 Maryland Fried Chicken, Inc., a Flor-
ida corporation (of Maitland, FL) filed
Application Serial No. 72198364 for
“carryout restaurants” from which
the resulting Registration No.
0798190 issued on October 26, 1965.
No claim was made to the exclusive
right to use the words “Maryland
Fried Chicken” or the representation
of the chicken apart from the mark as
shown
Dec. 9, 1964 Equipment and Inventory lists for “Constantine’s Restaurant”
Oct. 26, 1965 Registration No. 0798190 issued to Maryland Fried Chicken, Inc.
May 24, 1967 National Restaurant Supply Inc., (Maitland, FL) formed by Angelo Costan-
tine, Pres. & Treas. (Apopka, FL), and Richard Costantine, VP & Sec.
(Altamonte Spring, FL); business mailing address, 1712 Hwy 17/92, Mait-
land
May 26, 1967 Maryland Fried Chicken of S.O.B.T., Inc., formed, Theresa (President),
Robert (V.P.), and Michael Costantine (Secretary/Treasurer/Director) Dis-
solved December 5, 1978
Aug. 8, 1968 Maryland Fried Chicken of Union Park, Inc., formed, listing Dannie Cos-
tantine as owner; Union Park Maryland Fried Chicken Restaurant is locat-
ed at 9710 E. Colonial Dr., Orland, FL.
April 16,
1970
Maryland Fried Chicken, Inc., a Delaware corporation listing James F.
Mairs (Winter Park FL), Carol Register / Robert Warfield was formed with
the merger of Maryland Fried Chicken, Inc., a Florida Corporation, and
Maryland Fried Chicken of American, Inc., a Georgia Corporation
30 See opposers’ Exhibit F.
31 Chattel Mortgage, ESSTA 64, Teresa, Ex. 3
Opposition Nos. 91185766, 91187377 and 91187378
27
July 23, 1971 Albert C. Constantine signed Sections
8 and 15 affidavits as “president” of
Maryland Fried Chicken, Inc.
August 1971 Promissory Note (See Security agreement of April 16, 1975)
October 2,
1971
South Orange Blossom Trail property transferred from MFC Inc. (Pres. Al-
bert C. Constantine and Treas. Lee Jay Colling) to Albert C. Constantine32
January 1,
1972
Date listed on Albert Constantine’s nunc pro tunc assignment of federal
Trademark Registration to himself, recorded January 16, 1986
April 16,
1975
Cross Security Agreement granting Southeast First National Bank of Mait-
land interest in four pieces of real estate and the restaurant inventory
(References promissory note of August 1971); signed by James W. Sackett
as V.P. of Maryland Fried Chicken, Inc. 33
May 28, 1975 Judgment for Bank of East Orange against Maryland Fried Chicken, Inc.,
and James F. Mairs34
September
23, 1975
Judgment for Continental Can Company against Maryland Fried Chicken,
Inc., and James F. Mairs35
December 11,
1976
National Restaurant Supply Inc., (Maitland FL) formed in May 1967, by
Angelo Costantine, Pres. & Treas. (Apopka FL), and Richard Costantine,
VP & Sec. (Altamonte Spring FL), is dissolved
June 21, 1978 Maryland Fried Chicken, Inc. formed by Evan & Zack Zagoria (S. Miami)
June 21,
1978
Florida state trademark app. for MARYLAND FRIED CHICKEN: COMPLETE
DINNERS TO GO was filed by Maryland Fried Chicken, Inc. (S.Miami)36
Dec. 5, 1978 Maryland Fried Chicken of S.O.B.T, Inc., was dissolved
June 28,
1979
Richard and Theresa Costantine executed a mortgage agreement on build-
ing at 708 N. 14th St., Leesburg, FL, with detailed listing of restaurant con-
tents; Son, Robert, is involved with formation of this restaurant
December 5,
1979
Dissolution of Maryland Fried Chicken, Inc., a Delaware corporation listing
James F. Mairs (Winter Park FL) formed in April 1970
December 16,
1981
Maryland Fried Chicken, Inc. formed by Evan and Zack Zagoria (South Mi-
ami FL) in June 1978 is dissolved
Dec. 17, 1985 Albert Constantine signed Renewal as “owner”
January 16,
1986
Albert Constantine recorded nunc pro tunc assignment (allegedly as of
January 1, 1972) to himself of federal Trademark Registration
October 26,
1995
Albert Constantine assigned his entire interest to Edith Swain (Waycross,
GA)37
April 29, ITU/1(b) Application Serial No.
32 See opposers’ Exhibit JJ.
33 See opposers’ Exhibit II.
34 See opposers’ Exhibit GG.
35 See opposers’ Exhibit HH.
36 See opposers’ Exhibit G.
37 Registration No. 0798190; assignment recorded at Reel 1539/Frame 0149.
Opposition Nos. 91185766, 91187377 and 91187378
28
1997 75283437 was filed by Richard Heavi-
lon and Edith Swain, later amended
to 1(a) based upon applicant’s claim
of use anywhere and use in commerce
since at least as early as October 10,
1997.
THE ORIGINAL
MARYLAND FRIED CHICKEN
June 17,
1997
Application Serial No. 75310109 was
filed by Richard Heavilon and Edith
Swain, as joint owners from which
the resulting Registration No.
2428658 for “restaurant services” is-
sued on February 13, 2001
August 8,
1997
Registration No. 0798190 was cancelled as a result of Cancellation No.
92025732 brought by C.F.M. Distributing Company, Inc.; Albert Constan-
tine appeared pro se
August 27,
1998
Edith Swain and Richard Heavilon filed ITU Application Serial No.
75543675 for AL’S ORIGINAL MARYLAND FRIED CHICKEN, later aban-
doned
February 13,
2001
Registration No. 2428658 for “restaurant services” issued to Richard Heavi-
lon and Edith Swain, as joint owners
April 23,
2002
Florida Secured Transaction Registry filed on behalf of Maryland Fried
Chicken, a Florida General Partnership, signed by Michael, Anthony and
Richard Costantine38
July 14, 2005 Ms. Swain, an individual residing in Waycross Georgia, assigned her half
interest in Registration No. 2428658 to Robin S. Heavilon, an individual
residing in Blackshear Georgia, as recorded by the United States Patent
and Trademark Office on December 21, 2006 (at Reel 3448/Frames 0812
and 0853)
July 2006 OMFC / Robert Costantine opened his
own Maryland Fried Chicken restau-
rant at 1672 South Orange Blossom
Trail, Apopka (Orange County) FL
February 21,
2008
One of the applications at issue (Ser.
No. 77402411) was filed by Richard
Costantine d.b.a. Maryland Fried
Chicken, based upon applicant’s
claim of use since at least as early as
January 1, 1980
February 21,
2008
Application Serial No.77403096 was
filed by Richard Costantine d.b.a.
Maryland Fried Chicken, also based
MARYLAND FRIED CHICKEN
38 See Exhibit FF.
Opposition Nos. 91185766, 91187377 and 91187378
29
upon applicant’s claim of use since at
least as early as January 1, 1980; the
examining attorney found the mark
to be merely descriptive.39
February 21,
2008
Maryland Fried Chicken, filed as a Fictitious Name for joint owners An-
thony, Michael and Richard Costantine, with address of 708 N. 14th St.,
Leesburg, FL
June 12,
2008
The second of the applications at is-
sue (Ser. No. 77497042, i.e., “little
chicken standing next to big chicken,”
was filed by Richard Costantine d.b.a.
Maryland Fried Chicken, based upon
applicant’s claim of use since at least
as early as January 1, 1980
October 8,
2008
Richard Costantine passed away and Theresa Costantine was appointed as
the personal representative of her husband’s estate
Feb-March
2009
Robert Costantine opened a Maryland Fried Chicken restaurant at 17195
US HWY 441, Mt. Dora (Lake County), FL; following temporary injunction
by an Orange County court, settlement agreement where OMFC, LLC and
Robert Costantine agree not to place a MFC restaurant in Lake County, FL
June 5, 2009 App. Serial No. 77752805 filed by
MTM Enterprises Group, LLC; based
upon applicant’s claim of use any-
where and use in commerce since at
least as early as May 1, 2009; MTM
Enterprises Group, LLC is a franchis-
ing company owner by Anthony Cos-
tantine, Michael Costantine and their
previous attorney in this case, Mat-
thew McKinney. See Exhibit D40
October 1,
2009
Opposers accessed << http://marylandfriedchicken.com/ >> a website alleg-
edly owned by one Michael Smith of Conway, SC41
September
29, 2010
TTAB held Richard Costantine’s mark MARYLAND FRIED CHICKEN
(Ser. No. 77403096) was merely descriptive and that § 2(f) showing was in-
sufficient42
January 12,
2011
Application Serial No. 85216239 for MARYLAND FRIED CHICKEN was
filed by Theresa Costantine d.b.a. Maryland Fried Chicken, based upon ap-
plicant’s claim of use anywhere as early as July 14, 1961 and use in com-
39 See Exhibits K1-K5.
40 Application Serial No. 77752805 "Modern" Chicks Design; this application has been sus-
pended pending resolution of the instant Opposition Proceeding, because the examining at-
torney believes the new application is likely to cause confusion with Application Serial No.
77497042. See Exhibit M.
41 See Exhibit Z.
42 See Exhibits K1-K5.
Opposition Nos. 91185766, 91187377 and 91187378
30
merce since at least as early as July 1, 1963
April 30,
2011
MTM Enterprises Group, LLC
changes mailing address to
Leesburg MFC address
43
Oct. 5, 2011 Opposers access website of Mary-
land Fried Chicken Franchise
www.marylandfriedfranchise.com/
V. Legal Analysis
Although opposers have raised claims of priority and likelihood of confusion,
alleged fraud on the part of Richard Costantine in filing these applications, charged
that applicant has abandoned these marks through a pattern of naked licensing and
widespread, uncontrolled use by an array of third parties, we see all of these related
complaints as reflections of a long-term, complex, extended family battle over the
ownership of elusive property rights. As this Board has done in resolving trademark
ownership disputes in previous fact patterns involving other splintered family busi-
nesses, overlapping circles of not-for-profit companies, fifth-generation band mem-
bers and past managers, divided auto clubs in neighboring towns, etc., we turn to
an analytical framework drawing on evidentiary factors identified in Wrist-Rocket
Manufacturing Co. v. Saunders, 379 F. Supp. 902 (D. Neb. 1974), aff’d in part and
rev’d in part, 516 F.2d 846, 186 USPQ 5 (8th Cir. 1975), cert. denied, 423 U.S. 870
(1975).44
43 See Exhibit Y.
44 See Pamela S. Chestek’s helpful analysis at 96 TRADEMARK REP. 681 (2006).
Opposition Nos. 91185766, 91187377 and 91187378
31
Accordingly, in deciding which party, if any, owns these various composite
marks, we look to three separate interests, namely contractual expectation, respon-
sibility for the quality of the goods and/or services, and consumer perception.45
In reliving the timeline and narrative above, one witnesses an ever-changing
cast of characters constantly jockeying to try to protect a piece of the Maryland
Fried Chicken enterprise:
• Albert C. Constantine (from 1959 to 1995);
• W.H. Truesdell (1959 to 1962);
• Richard Costantine (from a variety of dates, including 1961-62-63 / 1968
/ 1979 / 1980, etc. to 2008);
• Theresa Costantine (from 1961-63, 1979 / 1980 to present);
• Maryland Fried Chicken, Inc., a Florida corporation (1961 to 1972);
• National Restaurant Supply Inc. (from 1967 to 1975-76);
• Maryland Fried Chicken of S.O.B.T., Inc.,” allegedly formed by Theresa
(President), Robert (V.P.), and Michael Costantine (Secre-
tary/Treasurer/Director (from 1967 until sometime in 1970s);
• Maryland Fried Chicken, Inc., a Delaware corporation -- James F. Mairs
(from 1970 to 1979);
• C.F.M. Distributing (from 1975 to present);
• Maryland Fried Chicken, Inc. -- Evan and Zack Zagoria, South Miami
(from 1978 to 1981);
• Edith Swain (from 1995 to 2005);
• Richard Heavilon (from 1997 to present);
• Robin Heavilon (from 2005 to present);
• Robert Costantine and Original Maryland Fried Chicken, LLC (from
2006 to present);
• Richard Costantine’s estate (2008 to present);
• MTM Enterprises Group, LLC (from 2009 to present);
Again, given the complexities of the transactions, the constantly changing al-
liances, and the extended period over which these events have unfolded, we present
the following pictorial:
45 Id., at 698-703.
Opposition Nos. 91185766, 91187377 and 91187378
32
In support of the position of applicant herein, Richard’s supporters, including
his two youngest sons, claim that he alone was the “only one [of his three brothers]
who continuously carried the family tradition and the same delicious Maryland
Fried Chicken secret recipe to the people for nearly fifty years.” However, we find
that applicant has not established a clear, uninterrupted chain of title for owner-
ship of these marks, and applicant’s claims to such ownership currently are very
much in dispute. Unfortunately for applicant, based upon the totality of this record,
Richard’s name was not attached to recorded ownership of any bundles of the ex-
tended family’s sticks for much of that fifty-year period – except for the same rights
Opposition Nos. 91185766, 91187377 and 91187378
33
exercised by thirty other restaurant owners to use his family’s marks at a single
restaurant location – in Richard’s case, in Leesburg, FL. Otherwise, there is sub-
stantially no evidence that Richard and/or Theresa Costantine maintained any for-
mal relationship with any of the dozens of third-party restaurant owners from the
mid-1960s to the present.
We get an interesting peek inside the mind of Richard Costantine during the
heady days of 1968. In responding to the inquiries of a newspaper columnist from
Wilmington (in Delaware, the state of his birth) about the possibility that the family
might want to establish Maryland Fried Chicken franchise restaurants in Dela-
ware, Richard responded “We’re open to offers …” However, more than any focus on
the product – the famously delicious fried chicken prepared using the family’s secret
recipe – he seems personally to be taken more with tri-color packaging:
“We send out the mix, the seasoning, the paper – the packaging,” he
said. “The packaging is very important. We won a prize with our packaging
in Miami last year. Everybody came in with two colors, we came in with
three.”
He attributed a flush of new-found success to the hard work on the part of the
extended family in the period from 1963 to 1968, while also admitting to mistakes:
The second restaurant, specializing in fried chicken, was opened in Win-
ter Park. It was a success.
“After that, we started the franchise. Believe me, the first five years it
was strictly the family. We did the whole thing, without lawyers, CPAs, any-
thing. We made a lot of mistakes, but we got the job done.”
Now, he said, the firm has enough lawyers and CPAs to account for all
five years and the ones since. Maryland Fried Chicken recently merged with
Cherokee Insurance Co. of Macon, Ga., he said, and the expansion is continu-
ing.
“We have commissaries in Macon and Orlando; we still take care of the
Florida franchises out of Orlando.”
Opposition Nos. 91185766, 91187377 and 91187378
34
Finally, in a hint of the future challenges the family faced, he alludes to the
problems one faces with setting up a successful franchise operation:
There are problems with franchises, he said. Inspectors have to be sent
out regularly to make spot checks to see that the fried chicken is really Mary-
land Fried Chicken, that the paper carrying the name is in the form it’s sup-
posed to be, that all the sanitary rules are being observed.46
Whatever the family’s experience was with franchising by 1968, perhaps this
statement stands as dramatic foreshadowing of problems to come. We note that
while many witnesses continue to refer to the thirty-some odd Maryland Fried
Chicken restaurant owners as “franchisees,” the record shows that to be a misuse of
a legal term of art. There is clearly not a “franchisor” anywhere behind this curtain.
This old (and failed) “franchise system” involved an absence of franchise fees
and contractual obligations, splintered centers of alleged ownership, deals seeming-
ly based on the informality of a handshake,47 and independent restaurateurs able to
envision what they each wanted in a restaurant, and then doing just that. The most
rigorous consultation was with the commissary – who incidentally wanted to keep
all of its customers happy with consistent restaurant products and by encouraging
the prospective new guy on the block to check with the owner of the nearest extant
restaurant before opening a new restaurant.
More recently, we note that Richard and Theresa’s two youngest sons, Michael
and Anthony Costantine (along with applicant's former attorney, Matthew Kinney)
are attempting to benefit from the sale of “authentic” Maryland Fried Chicken fran-
chisees. Yet the very pitch contained on the website of MTM Enterprises Group,
46 Exhibit 3-D, “This Bears Mention,” by Tom Malone, undated but said to be from 1968.
47 Testimony of Paul Dion, October 26, 2011, at 11, 14.
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35
LLC ("MTM") << www.marylandfriedfranchise.com >> corroborates this history,
and seems to admit to the extended family’s failures at earlier franchising efforts.
A. Contractual expectation
In trying to determine which of the parties to this litigation, if any, first affixed
the mark onto relevant goods or services, we conclude that all parties to this dispute
agree that Albert Constantine was the initial driving force behind the Maryland
Fried Chicken phenomenon in Central Florida in the early 1960s. However, fifty
years later, no current party to this litigation can claim to have a clear, uninter-
rupted chain of title for ownership of these contested service marks.
To the extent that there is any advertising in recent years, it seems that each
independent restaurant owner is involved in placing and paying for local advertis-
ing much as would any other mom-and-pop dining operation. The advertising on the
Internet seems to be directed to current (C.F.M.) or prospective restaurant owners
(MTM).
We are intrigued by the process involved in opening up a new Maryland Fried
Chicken restaurant. We begin this discussion by noting that there is no indication
applicant approved any of the third-party restaurants that have been originated in
recent years. To the contrary, Paul Dion, the owner of the Maryland Fried Chicken
in Winter Garden since 1980 (and the manager for Doug Bartolo, at that same loca-
tion, since 1975) testified that over the past thirty years, he had never been in-
Opposition Nos. 91185766, 91187377 and 91187378
36
volved in any way with applicant (paying compensation, seeking any permissions,
being visited or audited by applicant, etc.).48
All the parties to this action agree that each restaurant owner is presumed to
have around its outlet a particular (if unwritten and undefined) geographic area of
exclusive operation. It seems that occasionally when someone wants to open a new
restaurant, the would-be owner contacts the nearest current restaurant owner for
approval. Mr. Gourley (C.F.M.) testified that other times, C.F.M. acts as the inter-
mediary in this process and makes sure that the prospective new owner does not
face an objection from a current owner. That is, if C.F.M. Distributing Company,
Inc. learns that someone wants to open a new Maryland Fried Chicken restaurant,
Mr. Gourley of C.F.M. tries to coordinate the desired new location with the affected
owners of nearby Maryland Fried Chicken restaurants.49
C.F.M. is not claiming a contractual right in playing this role. In fact, C.F.M.
agrees that it “has never licensed, or had negotiations to license, assign, or other-
wise grant rights to third parties to use the MFC trademarks … .” Rather, C.F.M.
appears simply to be filling a vacuum created by the absence for decades of an effec-
tive franchising system. C.F.M. is the largest and longest-lasting entity derived
from Albert Constantine’s initiatives fifty years ago. Faced with constant flux in a
largely uncontrolled marketplace,50 it seems that the C.F.M. business model de-
48 Testimony of Paul Dion, October 26, 2011, at 5-9.
49 Mr. Gourley testified about his role in this process in a number of specific restaurants
recently opened in SC, GA and FL. See Testimony of James E. Gourley, 15-18,
50 At various points in the record, it became clear that there was a constant churning of
stores. New restaurants were being opened and many restaurants closed. For example, in
comparing a 2011 list of Maryland Fried Chicken restaurants who were C.F.M. customers
Opposition Nos. 91185766, 91187377 and 91187378
37
pends in part upon the ongoing demand of a healthy volume of Maryland Fried
Chicken restaurants happily purchasing products bearing the involved Maryland
Fried Chicken marks.51
B. Responsibility for the quality of the goods and services
As to which party maintains the quality and uniformity of the product, there is
no simple answer. As noted above, since the mid-1970s, C.F.M. has been continu-
ously providing paper products, some fast food products as well as other restaurant
supplies imprinted with the involved marks to substantially all of the individual,
independent Maryland Fried Chicken outlets. Hence, over the past four decades,
C.F.M. has been responsible for the most consistent usage of the involved logos as
applied to goods-in-trade as seen by members of the consuming public.
Ironically, Richard Costantine’s own affidavit (drafted in the Florida state ac-
tion against his eldest living son, Robert) appears to ascribe to C.F.M. some continu-
ing responsibility for guaranteeing the quality and consistency of the Maryland
Fried Chicken experience:
“… Over the past 47 years, we have allowed numerous Maryland
Fried Chicken franchise restaurants to be opened in Florida. … More-
over, each Maryland Fried Chicken restaurant utilizes the same
distributor in order to ensure the quality and consistency of the
food being sold.52
with a 2008 listing, at least thirteen restaurants went out of business in the interim. See
Testimony of James E. Gourley, at 18-20.
51 “ … [Y]ou’re on your own. Just buy [C.F.M.’s] products, that’s all he [Mr. Gourley] want-
ed.” Dion at 14.
52 Richard Affidavit, ¶8.
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38
Nonetheless, the record demonstrates that this very limited control of the
marks by C.F.M. on paper products and other restaurant supplies, for example,
does not ensure consistent quality among the retail quality of the ready-to-eat food
products or related services offered in the various Maryland Fried Chicken restau-
rants.
Applicant has been using the applied-for marks on its restaurant services in the
Leesburg restaurant since 1980, and like other Maryland Fried Chicken restaurant
owners, buys products from C.F.M. that it uses in its store. However, except for a
single instance of litigation with son Robert over opposer's (OMFC’s) attempt to
place a store in Mt. Dora, Richard seems not to have exerted control over the use of
this mark by any other third-party restaurateur in more than thirty years. Much
like the other Maryland Fried Chicken restaurant owners, OMFC has been using
substantially similar marks on its restaurant services in the Apopka restaurant
since 2006, but otherwise has no claim to any larger rights.
In spite of claims made by Richard in his earlier affidavit,53 as restated in the
subsequent testimony of Theresa and Anthony, we find that since the mid- to late-
70s, as the Constantine/Costantine family was engaged in a frenetic game of corpo-
rate/partnership/proprietorship/joint-grouping musical chairs, no one has really
maintained any responsibility for the quality of the food products or services offered
at retail under these marks.
53 Richard Affidavit, ¶16: I have also controlled the use of the Mark by others. I have ap-
proved each and every Maryland Fried Chicken restaurant that uses the Mark in com-
merce, with the exception of the restaurants recently opened by my son Robert.
Opposition Nos. 91185766, 91187377 and 91187378
39
Specifically, we note the testimony, photos54 and documentation provided by
James Gourley, vice president and general manager of opposer, C.F.M. Distributing
Company.55 He has been an officer of C.F.M. for more than twenty years, with a to-
tal of more than thirty years of employment with the company.56 His insights are
most instructive in this context. Other than the actual food itself (e.g., chicken, po-
tatoes, cabbage, etc.), C.F.M. provides most everything else that most Maryland
Fried Chicken restaurants use day-in and day-out. This includes breading mixes, its
proprietary coleslaw dressing, five different sizes of carry-out food containers, pre-
packaged meal kits (e.g., napkins, spork/fork, wet towelette, salt packets, etc.), all
imprinted with the Maryland Fried Chicken logo, as well as paper towels, toilet pa-
per, chemical cleaners, etc.57
Otherwise, all the Maryland Fried Chicken restaurants are quite different.58
James Gourley and Paul Dion testified that each one of the thirty Maryland Fried
Chicken restaurants can serve whatever its owner desires.59 There is no require-
ment that a Maryland Fried Chicken restaurant serve the same fried chicken prod-
ucts. In fact, the taste of the fried chicken products at retail can vary widely. Some
restaurants are offering chicken that is crunchier than that of other Maryland Fried
Chicken outlets. A customer will notice the chicken as served at various outlets has
54 See Exh. E. Mr. Gourley’s photographs of the street-level views of Maryland Fried Chick-
en restaurants in Florida, Georgia and South Carolina demonstrate the incredible differ-
ences in the exterior look-and-feel of the various storefronts.
55 Testimony of James E. Gourley, October 25, 2011.
56 Id. at 5-6.
57 Id. at 6-12.
58 Id. at 20-54; Dion at 10-15.
59 Gourley at 46-47, 49.
Opposition Nos. 91185766, 91187377 and 91187378
40
more or less salt, more or fewer spices, different cooking oils and different styles of
marination.60 Although C.F.M. provides a consistent breading mix product, individ-
ual restaurant owners use it quite differently in deriving the house recipe – some
using the C.F.M./MFC branded breading mix alone, other using it with its own
unique ingredients, while yet others choose not to use a C.F.M. breading mix at
all.61 For example, the owner of the Winter Garden restaurant uses the C.F.M.
house brand of breading mix (not that traded by C.F.M. under the Maryland Fried
Chicken label) and then adds another completely different mix of his own choos-
ing.62
While most Maryland Fried Chicken restaurants do sell fried chicken, even that
is not strictly a requirement. Some sell barbeque chicken,63 while others specialize
in steak, pork, Brunswick stew, pizza or seafood. In fact, a number of Maryland
Fried Chicken outlets are known more prominently as “Shrimper Seafood” outlets
because an entire chain of seafood restaurant owners decided this was a convenient
way to offer chicken in addition to shrimp.64 The record also shows that some Mary-
land Fried Chicken restaurants specialize in Greek, Mexican, Chinese or other
Asian cuisine. Therefore, consumers can get one product and product selection from
one Maryland Fried Chicken restaurant and something entirely different at another
Maryland Fried Chicken location.
60 Id. at 38-39.
61 Id. at 20-21, 41-42.
62 Id. at 42.
63 Id. at 25.
64 Id. at 27-30.
Opposition Nos. 91185766, 91187377 and 91187378
41
As to the external appearance of Maryland Fried Chicken buildings, outdoor
painting schemes are quite different, as is the signage.65 The Albany store has a
rooster mural,66 some chicken logos have the hen with two little chicks,67 another
prominently displays the image of a chef with a hat,68 while yet another features a
large mural of Bob Marley on the outside wall of the restaurant.69 The internal dé-
cor is also quite different among the stores,70 including some featuring Asian dé-
cor.71 The outlets each display significantly different type of menus,72 menu boards
and internal signage. Some smaller locations have minimal seating, while others
are fairly large sit-down restaurants.73
As one travels from restaurant to restaurant, one will notice that there are not
similar uniforms provided for staff members. Some owners provide employees with
T-shirts from C.F.M., while others create their own artwork and hire a silk-screen
artist or local T-shirt company to make whatever designs they want.74 In some res-
taurants, employees simply wear regular street clothes, while in yet others they
65 Id. at 21.
66 Id. at 25-26, 34.
67 Id. at 30.
68 Id. at 48.
69 Id. at 33.
70 Id. at 39.
71 Id. at 32-33.
72 Id. at 44-50.
73 Id. at 39.
74 Id. at 39-40, 52.
Opposition Nos. 91185766, 91187377 and 91187378
42
might don aprons. No one provides standardized training for employees from res-
taurant to restaurant,75 and the retail prices vary widely from outlet to outlet.
C. Consumer perception
The members of the public in the southeastern portion of the United States, and
especially in Central Florida, have been faced for decades with products and ser-
vices bearing visually similar Maryland Fried Chicken trademarks and service
marks. However, with each outlet having such diverse qualities, we find that these
logos have totally lost any of their earlier abilities to identify a sole source. It would
seem at this late date that very few members of the consuming public in Central
Florida (or elsewhere) still contemplate a single enterprise as standing behind the
Maryland Fried Chicken products or services. Those few who do anticipate the con-
sistent quality of the prototypical franchise operation will likely find themselves
disappointed as they take their business from one Maryland Fried Chicken outlet to
another. Certainly, if one has an unpleasant experience at a particular Maryland
Fried Chicken restaurant, there is not one single entity to whom that aggrieved cus-
tomer could turn with a complaint.
D. Conclusions
Whether or not one relies upon language of abandonment or naked licensing,
the uncontrolled use of an alleged mark by many different parties is anathema to
the role and function of a source indicator. Through conscious acts of commission
taken by various family members, any property rights that existed in the 1960s ap-
75 Id. at 40-41.
Opposition Nos. 91185766, 91187377 and 91187378
43
pear to have been totally splintered. Repeated and inconsistent transfers of alleged
bundles of sticks by constantly realigned individuals and groups of persons has cre-
ated total confusion about who, if anyone, was in charge of this one-time family en-
terprise. Continuing acts of omission over recent decades on the part of applicant
have further caused these alleged marks to lose any remaining significance as indi-
cators of source.
The record contains not a single copy of a licensing or franchising document.
Even if arguably there were mutual but informal understandings between the Con-
stantine/Costantine family members and their implicit licensees at some point with-
in the last forty years, no one seems to have exercised ongoing control or supervi-
sion over the restaurant owners. In the absence of any formal contracts, it is not
surprising that each restaurant owner viewed himself/herself as an independent op-
erator without any responsibilities to the Constantine/Costantine family. The most
consistent products involved paper products imprinted with the familiar logos, but
this involved no control over the quality of the restaurant services at the retail loca-
tions.
As to what any one of these parties may represent to others about the source or
origin of their chicken products or restaurant services, whatever the designs of Al-
bert Constantine in the early 1960s, the current confusing state of affairs seems to
have been accepted by most of the actors, and no one rocks the boat until such point
as one party makes a play for exclusivity that threatens the other players. The liti-
gation surrounding these applications seems to have been such an event. Unfortu-
nately, we see no reason to think the pieces of this would-be franchise can ever be
Opposition Nos. 91185766, 91187377 and 91187378
44
put back together. These parties have lost their trademark rights against the world,
and thus against each other. Accordingly, despite, for example, C.F.M.’s claims of its
priority over that of applicant, we view the several opposers’ actions herein to be
less an attempt to claim rights in these marks for themselves, but instead merely
wanting to maintain the status quo by keeping applicant from being able in the fu-
ture to assert a right to which it is not entitled, under the facts of the case.
The current hodge-podge arrangement that is Maryland Fried Chicken is clear-
ly not optimal. On the other hand, given the state of play, the status quo is prefera-
ble to the scenario where a single player, like applicant, is given the imprimatur of
a federal registration and the appearance of exclusivity, when in reality – to quote
Gertrude Stein’s famous observations about Oakland – “There is no there there.”
In conclusion, we find that applicant was not the owner of these marks at the
time the applications were filed, and consequently, both of these involved applica-
tions are deemed to be void ab initio. As discussed throughout this opinion, we find
that the traditional concepts of priority and likelihood of confusion are of little help
in resolving these disputes, and we do not reach the questions of whether applicant
has committed fraud on the United States Patent and Trademark Office by filing
these applications.
Decision: The oppositions to the registration of applicant’s two marks are
hereby sustained, and the issuance of registrations to applicant is herein denied.
