Craig Martinv.Tusk Enterprises Inc.

Trademark Trial and Appeal Board

Jul 15, 1998

No. 92025012 (T.T.A.B. Jul. 15, 1998)

Paper No. 19
PTH
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Craig Martin
v.
Tusk Enterprises Inc.
_____
Cancellation No. 25,012
_____
Stephen G. Perry for Craig Martin.
Edward Sokolski for Tusk Enterprises, Inc.
_____
Before Simms, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
A petition has been filed by Craig Martin to cancel the
registration of the mark set forth below for restaurant
services.1

1 Registration No. 1,788,642 issued August 17, 1993. The word
“CAFE” has been disclaimed apart from the mark as shown.
Cancellation No. 25,012
2
The grounds for cancellation are essentially that
petitioner created and is the owner of a virtually identical
mark, CAFE 50’s VENICE CALIFORNIA and design, for restaurant
services, the only difference in the respective marks being
that petitioner’s mark includes the words VENICE CALIFORNIA;
that petitioner was the owner of Registration No. 1,353,365,
which issued on August 6, 1985, for his mark, the
registration having been canceled on January 14, 1992 for
failure to file a Section 8 affidavit; that petitioner
authorized respondent to use the “trade name under the
mark,” but never transferred, conveyed, assigned or in any
way relinquished exclusive right to ownership of the mark;
that petitioner has authorized other restaurants to use his
mark, with each restaurant substituting for VENICE
CALIFORNIA the name of the California city in which the
restaurant is located; that respondent obtained its
registration fraudulently; and that respondent’s use of the
registered mark in connection with restaurant services is
likely to cause confusion with petitioner’s mark.
Cancellation No. 25,012
3
Respondent, in its answer, denied the salient
allegations of the petition to cancel.
The record consists of the file of the pleaded
registration; the testimony depositions of petitioner’s
witnesses Joseph Rooney, Craig Martin, and Rick Ladd;
petitioner’s notice of reliance on, inter alia, portions of
the discovery deposition of Pat Wang and respondent’s
responses to petitioner’s interrogatories and requests for
admissions; and respondent’s notice of reliance on certain
documents.2
Both parties filed briefs on the case, but an oral
hearing was not requested.
The record shows that in 1983, petitioner Craig Martin,
with the assistance of a graphic designer, created the CAFE
50’s VENICE CALIFORNIA and design trademark. According to
Martin, he thereafter contracted with Inner Circle Graphics
to make T-shirts bearing the mark, and it was his intention
to open several restaurants featuring a 50’s theme under the
mark. In late 1983 or early 1984 the first such restaurant
opened in Venice, California. The owner of that restaurant
is respondent, Tusk Enterprises Inc., which at the time the

2Both parties have submitted, under notice of reliance, documents
which are not printed publications and official records within
the meaning of Trademark Rule 2.122(e). However, since neither
party has objected to the documents relied on by its adversary,
but rather has treated the materials of record, the Board has
considered these materials for whatever limited probative value
they are entitled to.
Cancellation No. 25,012
4
restaurant opened was owned by petitioner Craig Martin (20%
interest), Yung Kim (40% interest), and Tony Soon (40%
interest). Pat Wang was the president of Tusk Enterprises,
Inc. and managed the day-to-day affairs of the restaurant.
Around 1990, Wang acquired Yung Kim’s interest in Tusk
Enterprises, Inc. According to Wang, the CAFE 50’s VENICE
CALIFORNIA and design mark was first used on restaurant
menus and possibly some advertising.
On March 15, 1984 Martin filed an application (Serial
No. 73/472,734) to register the CAFE 50’s VENICE CALIFORNIA
and design mark for restaurant services. Martin testified
that Wang and Tony Soon, i.e., the other owners of Tusk
Enterprises, Inc., were aware that he had filed an
application to register the mark. Wang, however, maintains
that Martin never discussed the matter with them. In any
event, Registration No. 1,353,365 issued to Martin on August
6, 1985, but was subsequently canceled on January 14, 1992
for failure to file a Section 8 affidavit.
Around 1985 or 1986 a second restaurant opened in
Sherman Oaks, California. This restaurant, which is now
closed, was owned by 50’s Nostalgia. 50’s Nostalgia was
owned by Martin, Wang, and two other individuals. Wang
testified that he and Martin authorized 50’s Nostalgia to
use the mark CAFE 50’s and design. While no document to
this effect was offered into evidence, Martin did not
Cancellation No. 25,012
5
dispute Wang’s testimony in this regard. Martin, however,
offered into evidence Exhibit H, which according to Martin,
consists of “escrow instructions for when the location in
Sherman Oaks was sold.” Martin testified that the document
is “letting the buyer know that the rights to the trademark
are currently in dispute.” The document states, in relevant
part, that:
Item No: 17C, the undersigned Tusk Enterprises
Inc. and Craig Martin, is or are the owners
and whichever is deemed to be the legal owners
of the tradename and logo of Cafe 50’s and have
granted to the Seller, use of the tradename
and logo for the subject business of Cafe
50’s located at 4609 Van Nuys Blvd, Los Angeles,
California.
. . . . . . .
Nowtherefore, [sic] it is agreed by and between
the Seller, Tusk Enterprises, Inc., Craig
Martin and Buyer that Seller will transfer
to Buyer, Seller’s right to use said tradename
and logo and Tusk Enterprises Inc. and Craig
Martin, will grant to Buyer a Non-Exclusive
Use of the Tradename and Logo of Cafe 50’s.
In late 1986 a third restaurant opened in Hermosa
Beach, California. This restaurant is owned by U.S.A.
Diners, Inc., which is owned by Martin, Wang and several
other individuals. Again, Wang testified that he and Martin
authorized the restaurant to use the mark CAFE 50’s and
design.
A fourth restaurant opened around 1989 or 1990 in West
Los Angeles, California. This restaurant is owned by Eat to
the Beat!, Inc., which is owned by Martin, and several other
Cancellation No. 25,012
6
individuals. Wang is not an owner of Eat To the Beat!, Inc.
Exhibit D is a copy of an agreement dated May 1, 1989
between the officers of Eat to the Beat!, Inc. and Wang and
Martin. The agreement provides, in relevant part,
that:
Pat A. Wang and Craig V. Martin (hereinafter
“P & C”) and Eat to the Beat!, Inc. &
its principals (hereinafter “Licensee”)
agree as follows:
Use of Trade Name: P & C shall give
licensee the non-exclusive right to use
the Business Name “Cafe 50’s for the
business located at 11623 Santa Monica
Blvd., Los Angeles, Ca 90025. Licensee shall
not have the right to use this name in
connection with any other business, unless
the prior written consent for such use is
obtained by P & C.
. . . . . .
Licensee recognizes and acknowledges that P & C
is the owner of the trade name “Cafe 50’s”
and has the right to license other persons,
companies, or legal entities to use said
trade name as P & C shall determine; provided,
however, that P & C shall not authorize or
license any other person, company, or legal
entity to utilize this trade name within a
two (2) mile radius of the premises wherein
the Business is now located.
On November 11, 1992 Pat Wang, as president of
respondent Tusk Enterprises, Inc., filed the application
which resulted in the involved registration. Wang admits
that he did not advise the other owners of Tusk (Martin and
Soon) that he was filing an application to register the mark
CAFE 50’s and design. According to Wang, he did not believe
Cancellation No. 25,012
7
it was necessary and he was simply attempting to protect the
rights of the corporation. Shortly after filing the
application, Wang sent letters on behalf of respondent to
Eat to the Beat!, Inc., U.S.A. Diners, Inc., and Inner
Circle Graphics to cease and desist use of the mark.
We turn first to the issue of fraud. Petitioner
maintains that the registration was fraudulently obtained
because Wang knew that Tusk Enterprises, Inc. was not the
owner of the mark. In particular, petitioner maintains that
Wang knew that it was petitioner who created the mark and
was at one time the owner of a registration for the mark;
and that Wang, in the above escrow instructions and
licensing agreement, has acknowledged that respondent did
not have exclusive rights in the mark.
First, ownership of a service mark is acquired through
its adoption and use in connection with the rendering of
services and the record shows that there was no use whatever
of the CAFE 50’s VENICE CALIFORNIA and design mark by
petitioner Martin in connection with restaurant services.
The fact that petitioner originated the idea of the CAFE
50’s VENICE CALIFORNIA and design mark and was at one time
the owner of a registration for the mark did not vest
ownership of the service mark in petitioner.3 See 2 J. T.

3 We should note that at the time respondent filed its
application, petitioner’s registration had been canceled under
Section 8 of the Trademark Act and was of no effect.
Cancellation No. 25,012
8
McCarthy, Trademarks on Trademarks and Unfair Competition
§16:4 (4th ed. 1998) and cases cited therein. Moreover,
while the record shows that Inner City Graphics made T-
shirts bearing CAFE 50’s VENICE CALIFORNIA and design for
petitioner, there is no evidence that petitioner sold the
shirts or otherwise made commercial use of CAFE 50’s VENICE
CALIFORNIA and design in connection with T-shirts. Rather,
the record shows that the T-shirts were worn by restaurant
employees. While the use of CAFE 50’s VENICE CALIFORNIA and
design in this manner may well constitute service mark use
by respondent for restaurant services, such use does not
constitute commercial use of the mark by petitioner for
restaurant services or T-shirts. In short, the fact that
petitioner had T-shirts made with CAFE 50’s VENICE
CALIFORNIA and design imprinted thereon did not vest
ownership of the mark in petitioner.
Further, in our analysis of the effect of the above
escrow instructions and licensing agreement, we must keep in
mind the principles of what constitutes fraud.
Fraud implies some intentional deceitful practice
or act designed to obtain something to which the
person practicing such deceit would not
otherwise be entitled. Specifically, it involves
a willful withholding from the Patent and Trademark
Office by an applicant or registrant of material
information or fact, which, if disclosed to the
Office, would have resulted in the disallowance
of the registration sought or to be maintained.
Intent to deceive must be “willful.” If it
can be shown that the statement was a “false
misrepresentation” occasioned by an “honest”
Cancellation No. 25,012
9
misunderstanding, inadvertence, negligent
omission or the like rather than one made with
a willful intent to deceive, fraud will not be
found. Fraud, moreover, will not lie if it
can be proven that the statement, though false,
was made with a reasonable belief that it was
true or that the false statement is not material
to the issuance or maintenance of the
registration. It thus appears that the very
nature of the charge of fraud requires that it
be proven “to the hilt” with clear and
convincing evidence. There is no room for
speculation, inference or surmise and,
obviously any doubt must be resolved against
the charging party.
Smith International, Inc. v. Olin Corp., 209 USPQ 1033,
1043-44 (TTAB 1981), citations omitted.
The above escrow instructions and licensing agreement
are not “clear and convincing evidence” that Wang knew that
respondent was not the owner of the mark. At most, the
documents raise a question as to ownership of the mark, and
petitioner himself has testified that there was a dispute
with regard to ownership of the mark. More importantly,
however, the record reveals that respondent was the first to
use the CAFE 50’s VENICE CALIFORNIA and design mark in
connection with restaurant services and it has continuously
done so. Additionally, we note the following “Covenant
Against Competition” contained in the minutes from the
meeting in which respondent (referred to as the
“Corporation” therein) was formed:
Craig Martin shall not utilize the name
or concept of the restaurant established
by the Corporation, In [sic] Marina Del
Ray, Venice and/or Santa Monica. Vitoon
Cancellation No. 25,012
10
Buranakulpyroy [aka Tony Soon], Yung Chan
Kim, and Pat Wing [Wang] shall not use
the name or concept of any restaurant
established by the Corporation within the
State of California.
This language, which implies that respondent controlled
the CAFE 50’s VENICE CALIFORNIA and design “name,” along
with the fact that respondent was the first to use CAFE 50’s
VENICE CALIFORNIA design would tend to indicate that
respondent was indeed the owner of the mark. To the extent
that petitioner authorized additional uses of the mark, he
appears to have done so as respondent’s agent and the later
uses of the CAFE 50’s VENICE CALIFORNIA and design mark
inure to respondent.
Under the circumstances, we cannot say that respondent
has obtained a registration through fraud. In this case,
Wang did not obtain the registration for himself, but rather
for respondent which is owned by Martin, Soon, and Wang.
Finally, with respect to the issue of likelihood of
confusion, in order to prevail on such a claim, petitioner
must show prior and continuous commercial use of CAFE 50’s
VENICE CALIFORNIA and design. As indicated above, the
record shows no commercial use whatever of CAFE 50’s VENICE
CALIFORNIA and design by petitioner. Thus, petitioner’s
likelihood of confusion claim must likewise fail.
Cancellation No. 25,012
11
Decision: The petition to cancel is denied.
R. L. Simms
G. D. Hohein
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board