JIPC Management, Inc.v.Incredible Pizza Co., Inc.

Trademark Trial and Appeal Board

Dec 29, 2017

No. 91170452 (T.T.A.B. Dec. 29, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: December 29, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
JIPC Management, Inc.
v.
Incredible Pizza Co., Inc.
________
Opposition No. 91170452
against Serial No. 78575077

Cancellation No. 92043316
against Registration No. 2500872
_______
Anne W. Glazer of Stoel Rives LLP for JIPC Management, Inc.
Mary M. Clapp of Clapp Business Law LLC for Incredible Pizza Co., Inc.
_______
Before Kuhlke, Shaw, and Larkin, Administrative Trademark Judges.
Opinion by Shaw, Administrative Trademark Judge:
Opposition No. 91170452 and Cancellation No. 92043316
2
Incredible Pizza Co., Inc. (“IPC” or Respondent) is the owner of Registration No.
25008721 for the mark:

for “Restaurant services” in International Class 42. IPC has disclaimed “Pizza Co.”2
IPC also owns Application Serial No. 785750773 for the mark:

for services identified as “Restaurant franchising; franchising, namely consultation
and assistance in business management, organization and promotion; franchising,
namely, offering technical assistance in the establishment and/or operation of
restaurants” in International Class 35. IPC has disclaimed “America’s” and “Pizza
Company.” The mark is described as follows: “The mark consists of a sector with the

1 Issued October 23, 1999; renewed.
2 After registration, IPC amended its drawing under Section 7 of the Trademark Act, 15
U.S.C. § 1057(e), to, inter alia, substitute the word “Company” for “Co.” The amendment was
accepted and a new certificate of registration was issued with the mark shown above. The
disclaimer, however, was not amended to conform to the new drawing.
3 Filed February 25, 2005, based on Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a),
with a claimed date of first use anywhere and in commerce of April 20, 2004.
Opposition No. 91170452 and Cancellation No. 92043316
3
words ‘America’s’ ‘Incredible Pizza Company’; rectangular background with the
words ‘Great Food, Fun, Family, & Friends’; checkerboard design; and ribbon design.”
In its petition for cancellation and notice of opposition, JIPC Management, Inc.
(Petitioner) alleges priority of use and likelihood of confusion with its marks, as well
as fraud on the USPTO in connection with Respondent’s applications to register its
marks. Petitioner claims ownership of the following relevant registrations:
• Registration No. 3025377 for the mark JOHN’S INCREDIBLE PIZZA CO.
in standard characters for services identified as “Restaurant services” in
International Class 43, issued December 13, 2005 and claiming a date of
first use in commerce and anywhere as early as September 1997, “PIZZA
CO.” disclaimed; and
• Registration No. 3058427 for the mark JOHN’S INCREDIBLE PIZZA CO.
in standard characters for services identified as “Entertainment services,
namely, providing play areas, miniature golf, laser tag, bumper cars, arcade
games, prize redemption games, and arcade rides; providing coin operated
video games in the nature of an amusement arcade; providing continuous
music video pre-recorded video broadcasts via television” in International
Class 41, issued February 14, 2006 and claiming a date of first use in
commerce and anywhere as early as September 1997, “CO.” disclaimed.
Opposition No. 91170452 and Cancellation No. 92043316
4
I. Procedural History
Because of the lengthy history of these proceedings we first provide a summary of
them. The petition to cancel Registration No. 2500872 was filed on May 21, 2004.4
The Notice of Opposition against Application Serial No. 78575077 was filed on April
19, 2006.5 The proceedings were consolidated by the Board on December 4, 2006 upon
Petitioner’s motion.6 After the close of the testimony periods, briefing was completed,
with the final brief being filed on July 10, 2008.7 During the briefing, however,
Petitioner filed a civil action alleging trademark infringement and unfair competition
in the U.S. District Court for the Central District of California. Shortly after the
briefing concluded, Respondent filed a motion to suspend the Board proceedings
pending the outcome of the district court case.8 The Board granted the motion and
suspended the proceedings on November 24, 2008, noting that “inasmuch as the civil
action clearly involves the same parties and the same marks, it appears that the civil
action will likely ‘have a bearing’ on the case before the Board.”9 Proceedings
remained suspended until the completion of the district court case, whereupon
proceedings resumed and supplemental briefing was ordered to address any issues
determined in the civil action.10 Supplemental briefing was completed on October, 6,

4 Cancellation No. 92043316, 1 TTABVUE.
5 Opposition No. 91170452, 1 TTABVUE.
6 10 TTABVUE. All further references to the record are to Opposition No. 91170452.
7 57 TTABVUE.
8 60 TTABVUE.
9 63 TTABVUE 3.
10 77 TTABVUE.
Opposition No. 91170452 and Cancellation No. 92043316
5
2016,11 and the case has been submitted on brief. The district court case is discussed
infra.
II. Evidentiary Objections
Each party has filed a number of objections against certain testimony and
evidence introduced by its adversary. We have considered each objection. Ultimately,
the Board is capable of weighing the relevance and strength or weakness of the
objected-to testimony and evidence in this case, including any inherent limitations,
which preclude the need to strike the challenged testimony and evidence if the
objection is well-taken. Given the circumstances, we choose not to make specific
rulings on each and every objection. We have accorded the testimony and evidence
whatever probative value it merits, keeping the parties’ objections in mind, and
comment as needed on its probative value elsewhere in the opinion. See Alcatraz
Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1755 (TTAB 2013),
aff’d mem., 565 Fed. Appx. 900 (Fed. Cir. 2014); Kohler Co. v. Baldwin Hardware
Corp., 82 USPQ2d 1100, 1104 (TTAB 2007). See also Krause v. Krause Publ’ns Inc.,
76 USPQ2d 1904, 1907 (TTAB 2005) (“Where we have relied on testimony to which
respondent objected, it should be apparent to the parties that we have deemed the
material both admissible and probative to the extent indicated in the opinion.”).
III. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the involved registration and application. In addition,

11 87 TTABVUE.
Opposition No. 91170452 and Cancellation No. 92043316
6
the parties introduced the following items into evidence, either by stipulation or by
notice of reliance.
Petitioner’s Evidence:
1. The deposition testimony of John Parlet, Petitioner’s founder and CEO,
with exhibits thereto;
2. The deposition testimony of Richard Barsness, Respondent’s founder and
CEO, with exhibits thereto;
3. The deposition testimony of Cheryl Barsness, the wife of Richard Barsness
and co-owner of Respondent, with exhibits thereto;
4. Petitioner’s notice of reliance, including, inter alia, status and title copies
of Petitioner’s trademark registrations, news articles, customer emails and
business records,12 discovery responses, third-party trademark
registrations purporting to show the relatedness of the parties’ services,
and documents from unrelated litigation involving Respondent; and
5. The declaration of Steven E. Klein, Petitioner’s attorney, regarding the
California district court case, with exhibits attached thereto, including,
inter alia, copies of the parties’ pleadings, orders of the district court, trial
transcripts, and Findings of Fact and Conclusions of Law.
Respondent’s Evidence:
1. The deposition testimony of Larry Abbe, Respondent’s President, with
exhibits thereto;

12 Exhs. P-171-P-189, stipulated into the record. 15 TTABVUE 9-11.
Opposition No. 91170452 and Cancellation No. 92043316
7
2. The deposition testimony of Richard Barsness, with exhibits thereto;
3. Respondent’s notice of reliance, including, inter alia, discovery responses,
trademark registrations and other evidence purporting to show third-party
use of the term “incredible” in connection with food as well as restaurant
and entertainment services; and
4. The Declaration of Mary Clapp, Respondent’s attorney, regarding the
California district court case, with exhibits attached thereto, including,
inter alia, trial exhibits and transcripts.
IV. The Parties
The parties are restaurant companies operating all-you-can-eat pizza buffets
within entertainment complexes featuring video games, miniature golf, and bumper
cars. John Parlet is the founder and CEO of Petitioner. Richard Barsness is the
founder of Respondent. Prior to either parties’ opening of their current pizza and
entertainment complexes, Parlet and Barsness had a business relationship and
cooperated in other restaurant-related ventures. Following the opening of their pizza
and entertainment complexes, however, Parlet’s and Barsness’ relationship soured
due to the present trademark dispute.
V. The District Court Case
Before turning to the merits of this proceeding, and because the present record
includes evidence, findings, and rulings made in the district court case (see
Trademark Rule 2.122(f)), it is necessary to review the course of the district court
case which relates to the issues involved herein. As discussed supra, Board
proceedings were suspended pending the final outcome of the civil action between
Opposition No. 91170452 and Cancellation No. 92043316
8
Petitioner and Respondent. The district court case involved, in relevant part, a jury
trial on trademark infringement, and a bench trial on Respondent’s affirmative
defenses of unclean hands and trademark misuse, as well as damages and attorney’s
fees.13
The jury trial resulted in a verdict in Petitioner’s favor on the claim of
infringement with damages awarded in the amount of $112,500.14 However,
inasmuch as the parties’ overlapping use of their marks occurred only for a limited
period of time in limited geographic regions, the jury was instructed to consider
infringement only as to the time period after March 2008 in the states of California,
Nevada, Arizona, Oregon, and Washington.15 In addition, Respondent’s use of the
mark involved only franchising services because Respondent did not operate
restaurants in California, Nevada, Arizona, Oregon, and Washington.16 Thus, the
issues before the district court jury, particularly those relating to the parties’ use of
their marks, were significantly narrower than those before us.
Following the jury’s verdict, a bench trial was held on Respondent’s affirmative
defenses of unclean hands and trademark misuse, as well as damages and attorney’s
fees, after which the court issued its Findings of Facts and Conclusions of Law. The
court found, inter alia, that Petitioner’s first John’s Incredible Pizza Co. restaurant
opened in Victorville, California in September 1997, that Petitioner owns service
mark registrations for JOHN’S INCREDIBLE PIZZA CO., that Respondent failed to

13 Final Pretrial Order, pp. 37-38, 81 TTABVUE 141-42.
14 Id. at 81 TTABVUE 255-57.
15 Trial Transcript, pp. 244-45, 81 TTABVUE 244-45.
16 Id. at 81 TTABVUE 245.
Opposition No. 91170452 and Cancellation No. 92043316
9
prove its affirmative defenses of unclean hands and trademark misuse, and that
additional damages and attorney’s fees were not called for.17
During the bench trial, Petitioner also sought, under Federal Rule of Civil
Procedure 54(c), to have Respondent’s trademark registration cancelled. Rule 54(c)
provides that “a final judgment should grant the relief to which each party is entitled,
even if the party has not demanded that relief in its pleadings.” The court recognized
that the Trademark Act allows district courts to resolve registration disputes,
however, the court declined to grant cancellation stating:
Here, the jury’s verdict only reflects a likelihood of
confusion in certain states. Furthermore, Plaintiff
conceded that it had no claim for infringement until 2008,
while Defendants’ federal registration was issued in 2001.
The Court therefore finds that Plaintiff has not established
a valid ground for cancellation of the trademark, and the
request for trademark cancellation is denied.18
Significantly, in a footnote, the court recognized that:
Plaintiff did not plead a claim for trademark cancellation
or request cancellation in its prayer for relief. The Court
only discusses the request in light of Federal Rule of Civil
Procedure 54(c), which provides that a Court grant relief to
which a party is entitled, even if the party has not
demanded that relief.19
Respondent’s position here is that Petitioner may not now seek cancellation of
Respondent’s registration because the district court decided the issue of cancellation
in Respondent’s favor. In particular, Respondent states that “JIPC specifically

17 Findings of Fact and Conclusions of Law, pp. 2, 6, and 8-9, 81 TTABVUE 273, 277, and
279-280.
18 Id. at 81 TTABVUE 279. See 15 U.S.C. § 1119.
19 Findings of Fact and Conclusions of Law, p. 8, 81 TTABVUE 279, n.5.
Opposition No. 91170452 and Cancellation No. 92043316
10
requested the Court rule on the issue of cancellation; the Court denied cancellation;
and JIPC never appealed the Court’s ruling. As such, JIPC has no further recourse
on its claim for cancellation, whether in court or before this Board.”20
Citing Bd. of Trs. of the Univ. of Ala. v. Houndstooth Mafia Enters. LLC, 163 F.
Supp. 3d 1150, 1153 (N.D. Ala. 2016), Respondent first argues that “the [district
court’s] holding that JIPC is not entitled to cancellation of IPC’s federal registration
is dispositive of that issue and binding on the Board.”21 This argument is unavailing.
In the Houndstooth Mafia case, the district court specifically ordered the Board to
vacate its earlier decision regarding the opposition: “[a]s part of that judgment, and
due to the parties’ express settlement terms, the court ordered that the TTAB’s
decision ‘is VACATED.’” Houndstooth Mafia, 163 F. Supp. 3d at 1154. Here, the
district court has not issued an order to the Board regarding cancellation. Rather, the
district court simply found—on a much narrower set of facts—that petitioner did not
establish a valid ground for cancellation. Moreover, unlike the district court in the
Houndstooth Mafia case, the California district court was not reviewing a decision of
the Board and thus it was not “acting as a court of appellate jurisdiction over the
TTAB.” Id. at 1156.
From the district court’s language, supra, it is clear not only that the district court
did not issue an order to the Board but also that cancellation of Respondent’s
registration was not an issue tried by the parties. Instead, it was raised in the bench
trial only in the context of the scope of possible discretionary relief to be granted to

20 Respondent’s Supplemental br., p. 3, 84 TTABVUE 4.
21 Id. at 84 TTABVUE 12.
Opposition No. 91170452 and Cancellation No. 92043316
11
Petitioner under Rule 54(c). The fact that the court declined to grant particular relief
under Rule 54(c) does not elevate its order denying that relief to an order directed to
the Board, particularly if that relief was not demanded in the pleadings.
Respondent also argues that Petitioner’s claim for cancellation is barred by res
judicata. Under the doctrine of res judicata or claim preclusion, “a judgment on the
merits in a prior suit bars a second suit involving the same parties or their privies
based on the same cause of action.” Jet Inc. v. Sewage Aeration Sys., 55 USPQ2d 1854,
1856 (Fed. Cir. 2000) (quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n.5
(1979)). Even “[a] default judgment can operate as res judicata in appropriate
circumstances.” Id. at 1378 (citing Morris v. Jones, 329 U.S. 545, 550-51 (1947)).
However, “[f]or claim preclusion based on a judgment in which the claim was not
litigated, there must be: 1) an identity of the parties or their privies, 2) a final
judgment on the merits of the prior claim, and 3) the second claim must be based on
the same transactional facts as the first and should have been litigated in the prior
case.” Sharp Kabushiki Kaisha v. ThinkSharp, Inc., 79 USPQ2d 1376, 1378 (Fed. Cir.
2006).
When we compare the district court case and this proceeding, there is no debate
as to the first two factors: the parties are the same and there was a final judgment
on the merits of the case. As in Jet, Inc., however, the critical issue is the third factor,
requiring an analysis of the transactional facts involved in the two causes of action.
The likelihood of confusion issues presented in this cancellation proceeding differ
from the infringement claims presented in the district court case. Indeed, the Federal
Opposition No. 91170452 and Cancellation No. 92043316
12
Circuit has held that the “array of differences in transactional facts conclusively
demonstrates that claim preclusion cannot serve to bar a petition for cancellation
based upon an earlier infringement proceeding.” Jet Inc., 55 USPQ2d at 1857.
Moreover, the facts in the district court infringement case were significantly different
from the facts in this proceeding. In the district court case, (1) Respondent’s services
offered in California were limited to restaurant franchising services, not, as here, the
operation of restaurants; (2) the infringement action was based on Respondent’s
franchising services conducted after 2008 and not, as here, the offering of any
restaurant services, at any time, including before then; (3) Respondent was not
required to plead ownership of its marks in order to defend the district court case,
and (4) the infringement claim did not determine the registrability of Respondent’s
mark.22 See id. (“[C]ancellation requires the respondent ( i.e. , the party in the position
of defendant) to hold a federally registered mark, infringement does not; [and]
cancellation requires inquiry into the registrability of the respondent’s mark,
infringement does not.”).
For the foregoing reasons we find that res judicata does not bar Petitioner’s claim
for cancellation of Respondent’s mark because Petitioner’s claim is not based on the
same transactional facts as the infringement claim.
By contrast, we may and do rely on findings of fact by the district court under the
doctrine of collateral estoppel or issue preclusion. The doctrine can bar relitigation of
the same issue in a second action. See Mayer/Berkshire Corp. v. Berkshire Fashions

22 Findings of Fact and Conclusions of Law, p. 8, 81 TTABVUE 279, n.5.
Opposition No. 91170452 and Cancellation No. 92043316
13
Inc., 424 F.3d 1229, 76 USPQ2d 1310, 1312 (Fed. Cir. 2005). Issue preclusion is
applicable where: (1) there is an identity of an issue in a prior proceeding, (2) the
identical issue was actually litigated, (3) the determination of the issue was necessary
to the judgment in the prior proceeding, and (4) the party defending against
preclusion had a full and fair opportunity to litigate the issue in the prior proceeding.
See Jet Inc. v. Sewage Aeration Sys., 55 USPQ2d at 1859.
All of these elements are present with regard to the district court’s determination
of Petitioner’s first use of its JOHN’S INCREDIBLE PIZZA CO. mark, Petitioner’s
ownership of its service mark registrations, the similarity of the parties’ services, and
the resolution of Respondent’s affirmative defenses. That is, in order for the district
court to address Petitioner’s narrower infringement claims, the court determined
each of these issues. Respondent is precluded from re-litigating these issues here.
VI. Standing
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. Any person who believes that it is or will be damaged by registration of
a mark has standing to file a petition for cancellation under Section 14, 15 U.S.C.
§ 1064. Our primary reviewing court has enunciated a liberal threshold for
determining standing, namely that a plaintiff must demonstrate that it possesses a
“real interest” in a proceeding beyond that of a mere intermeddler, and “a reasonable
basis for his belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753
F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (quotation omitted). A “real
interest” is a “direct and personal stake” in the outcome of the proceeding. Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026 (Fed. Cir. 1999). A claim of likelihood
Opposition No. 91170452 and Cancellation No. 92043316
14
of confusion that “is not wholly without merit,” including prior use of a confusingly
similar mark, may be sufficient to establish a reasonable basis for a belief of damage.
Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982).
Petitioner has made of record status and title copies of its two relevant
registrations for JOHN’S INCREDIBLE PIZZA CO.23 Respondent argues that
Petitioner “failed to establish a proper chain of title” for its marks.24 However, as
discussed supra, the district court found that Petitioner properly proved ownership
of the claimed marks, therefore, Respondent’s arguments against Petitioner’s
standing are unavailing.25 Moreover, the district court’s finding of Petitioner’s
ownership of the marks comports with the current title listed in the status and title
copies of the pleaded registrations. In view of the district court’s decision and the
pleaded and proven registrations, we find that Petitioner has established a real
interest in the outcome of this proceeding and has standing.
VII. Priority
In view of the pleaded and proven registrations, priority is not an issue in the
opposition proceeding. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ2d 108, 110 (CCPA 1974). In a cancellation proceeding, such as this one, in
which both parties own registrations, Petitioner must, in the first instance, establish
prior rights in the same or similar mark. Trademark Rule 2.122(b)(2) provides that

23 15 TTABVUE 21-25.
24 Respondent’s br., p. 24, 53 TTABVUE 25.
25 Findings of Fact and Conclusions of Law, p. 2, 81 TTABVUE 273.
Opposition No. 91170452 and Cancellation No. 92043316
15
“[t]he allegation . . . in a registration[] of a date of use is not evidence on behalf of the
. . . registrant; a date of use of a mark must be established by competent evidence.”
Petitioner’s founder and CEO, John Parlet, has testified that he opened the first
JOHN’S INCREDIBLE PIZZA CO. restaurant in Victorville, California in September
of 1997 and that it is still operating.26 Petitioner then opened other JOHN’S
INCREDIBLE PIZZA CO. restaurants in the California cities of Bakersfield, Fresno,
Stockton, and Modesto, among others.27 Petitioner introduced financial statements
showing revenues from the Victorville restaurant dating back to 1997, as well as
photographs showing the front of the Victorville restaurant in 1997.28 Further, the
parties have stipulated to Petitioner’s claimed date of first use of September, 1997.29
The district court also made the following finding of fact:
The first John’s Incredible Pizza Co. restaurant opened in
Victorville, California in September 1997. It was owned
and operated by John’s Incredible Pizza Co., Inc., until
Parlet formed plaintiff JIPC, which then assumed
management of the store. Since then, JIPC has
continuously managed each of the John’s Incredible Pizza
Co. stores from the date the store opened to the present,
under agreements with the separate entities that own the
stores. (Internal citations omitted).30
The earliest date Respondent may claim to have used its mark is the September
21, 1999 filing date of the application that matured into the challenged registration,
which is Respondent’s date of constructive use under Section 7(c) of the Trademark

26 Parlet test., pp. 10-11, 19 TTABVUE 12-14.
27 Id.
28 Parlet test., pp. 15-17, 19 TTABVUE 18-20; Exhs. P-103 and P-104, 19 TTABVUE 140-43.
29 15 TTABVUE 5.
30 Findings of Fact and Conclusions of Law, p. 2, 81 TTABVUE 273.
Opposition No. 91170452 and Cancellation No. 92043316
16
Act, 15 U.S.C. § 1057(c). In October of 1999, Respondent opened its Amarillo, Texas
INCREDIBLE PIZZA COMPANY restaurant.31
Based on the record, including the findings of the district court, the testimony of
John Parlet with related deposition exhibits, the testimony of Richard Barsness, and
stipulations of the parties, Petitioner has proven by a preponderance of the evidence
its prior use as early as September 1997 of its mark JOHN’S INCREDIBLE PIZZA
CO. in connection with restaurant and entertainment services.
VIII. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence relevant to the factors set forth in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the services and the similarities between the marks. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods [or services] and differences in the marks.”). The relevant
du Pont factors in the proceeding now before us are discussed for each of the marks
below.

31 Respondent’s br., p. 12, 53 TTABVUE 13; Barsness test., p. 69, 40 TTABVUE 59. Petitioner
disputes Respondent’s rights in the Amarillo restaurant because Respondent sold the
restaurant to a business associate around the same time that the restaurant opened.
Regardless, Respondent’s date of first use is later than Petitioner’s.
Opposition No. 91170452 and Cancellation No. 92043316
17
A. Registration No. 3682041
We begin with Petitioner’s allegation of a likelihood of confusion with the mark in
Respondent’s Registration No. 2500872:

for “Restaurant services” in International Class 42.
We focus our analysis on Petitioner’s Registration No. 3025377 because the
identified services are the same as Respondent’s services. If we do not find a
likelihood of confusion with respect to this registered mark and its services, then
there would be no likelihood of confusion with the mark in Petitioner’s other
registration. See In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
The similarity of the services, trade channels and conditions of sale
We first consider the du Pont factors regarding the similarity or dissimilarity of
the parties’ respective services, their channels of trade and conditions of sale. Both
Respondent’s and Petitioner’s services are identical, namely “restaurant services.”
Where, as here, the parties’ services are identical, we must presume that the
channels of trade and classes of purchasers for those services are the same as well.
See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even
though there was no evidence regarding channels of trade and classes of consumers,
the Board was entitled to rely on this legal presumption in determining likelihood of
confusion).
Opposition No. 91170452 and Cancellation No. 92043316
18
Respondent admits “there is little dispute that the goods and services and
channels of trade as they pertain to the marks at issue in the Cancellation are
similar.”32 Accordingly, the du Pont factors relating to the similarity of the services,
channels of trade, and classes of purchasers favor a finding of likelihood of confusion.
The number and nature of similar marks in use on similar services
We next consider the strength of Petitioner’s mark under the sixth du Pont factor.
Du Pont, 177 USPQ at 567. If the evidence establishes that the consuming public is
exposed to third-party uses of similar marks for similar services, it “is relevant to
show that a mark is relatively weak and entitled to only a narrow scope of protection.”
Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005). Evidence of the extensive registration
and use of a term by others can be “powerful” evidence of weakness. See Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 982
(2016); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671,
1674 (Fed. Cir. 2015).
Respondent focuses on the elements common to the parties’ marks, namely,
INCREDIBLE PIZZA CO., and correctly notes that PIZZA and COMPANY or CO.
have little or no trademark significance when used in connection with the parties’
services.

32 Respondent’s br., p. 30, 53 TTABVUE 31.
Opposition No. 91170452 and Cancellation No. 92043316
19
Respondent argues that “[w]idespread third party use of INCREDIBLE marks for
restaurant services demonstrates that the word INCREDIBLE – the only word in
common that might hold any trademark value at all – is weak, and that concurrent
use of INCREDIBLE by JIPCM, IPC, and others does not create any likelihood of
confusion.”33 In support, Respondent introduced testimony, photographs, and third-
party business documents, as well as registrations purporting to show third-party use
of INCREDIBLE in connection with food and restaurants.34 Respondent submitted
evidence showing the following third-party uses or registration of INCREDIBLE:
• Registration Nos. 2721015, 2854562, and 2723829 for marks containing
Incredibly Edible Delites, Inc. for various goods and services related to
floral and edible arrangements.35
• A Florida business named Buzzy’s Incredible Edibles, Inc. offering “bakes
[sic] goods, candies, and cookies and other specialty foods.”36
• A California bakery named The Incredible Cheesecake Company, Inc.37
• A California company named The Incredible Egg Restaurant.38
• A Michigan company doing business under the assumed name of The
Incredible Basket.39
• A Michigan restaurant and lounge named INGCREDIBLE.40
• A Michigan entertainment complex named Craig’s Cruisers with a pizza
buffet called “Craig’s Incredible Pizza Buffet.”41

33 Respondent’s br., p. 37, 53 TTABVUE 38.
34 We have not considered cancelled Registration Nos. 2941392 and 2980602 for POP’S
INCREDIBLE GOURMET PIZZA. A cancelled registration is not evidence of anything except
that it issued. See Action Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d
1307, 1309 (Fed. Cir. 1989); TBMP § 704.03(b)(1) (June 2017).
35 26 TTABVUE 277-89.
36 26 TTABVUE 66-72, 31 TTABVUE 295-97.
37 26 TTABVUE 74-76, 31 TTABVUE 274-77.
38 26 TTABVUE 78-79.
39 Id. at 81-84.
40 Id. at 265-69.
41 31 TTABVUE 264.
Opposition No. 91170452 and Cancellation No. 92043316
20
• A California restaurant named The Incredible Café.42
• A California restaurant named The Incredible Café Express.43
• A Georgia retail cookie store named The Incredible Chocolate Chip Cookie
Company.44
• An Ohio company named Eric’s Incredible Pizza Company.45
We do not find Respondent’s evidence of third-party registration or use to be
particularly persuasive. We note that only two of the third-party uses combine both
of the terms INCREDIBLE and PIZZA, as do the parties’ marks; several of the marks
are used in connection with services that differ from the parties’ restaurant services;
two of the marks use alternative spellings of INCREDIBLE; and only one of the third-
parties’ Incredible-formative marks is registered. In sum, the quantity of
Respondent’s evidence is much less than the evidence of registrations and actual use
in Juice Generation and Jack Wolfskin.46 Cf. Anthony’s Pizza & Pasta Int’l Inc. v.
Anthony’s Pizza Holding Co., 95 USPQ2d 1271, 1283 (TTAB 2009) (significant
registration and use of ANTHONY’S-formative marks for restaurant services
outweighed by evidence on other du Pont factors showing that confusion was likely).
Nevertheless, the third-party usage suggests that INCREDIBLE, as might be
expected, is used as a somewhat hyperbolic or laudatory term suggesting that the

42 Id. at 279-81.
43 Id. at 287-88.
44 Id. at 290-93.
45 Id. at 302-06.
46 In Juice Generation, there were at least twenty-six relevant third-party uses or
registrations of record, 115 USPQ2d at 1672 n.1, and in Jack Wolfskin, there were at least
fourteen, 116 USPQ2d at 1136 n.2.
Opposition No. 91170452 and Cancellation No. 92043316
21
particular goods or services are “too extraordinary and improbable to be believed” or
“amazing.”47
Thus, we find that the term INCREDIBLE in Petitioner’s mark is not inherently
strong, but we point out that even weak marks are entitled to protection. See
Matsushita Elec. Co. v. Nat’l Steel Co., 442 F.2d 1383, 170 USPQ 98, 99 (CCPA 1971)
(“Even though a mark may be ‘weak’ in the sense of being a common word in common
use as a trademark, it is entitled to be protected sufficiently to prevent confusion from
source arising”). This du Pont factor slightly favors Respondent.
Fame of Petitioner’s mark
We next consider the du Pont factor regarding the possible fame of Petitioner’s
mark. Fame, if it exists, plays a dominant role in the likelihood of confusion analysis
because famous marks enjoy a broad scope of protection or exclusivity of use. A
famous mark has extensive public recognition and renown. Bose Corp. v. QSC Audio
Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002).
Petitioner does not claim that its mark is famous, but rather argues that it has
cultivated extensive goodwill during its operations whereas Respondent argues that
Petitioner’s marks are not famous. Petitioner points to extensive sales during the

47 Https://www.merriam-webster.com/dictionary/incredible. The Board may take judicial
notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co.,
213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including
online dictionaries that exist in printed format or have regular fixed editions. In re Cordua
Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014); Threshold.TV Inc. v. Metronome Enters.
Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378
(TTAB 2006).
Opposition No. 91170452 and Cancellation No. 92043316
22
period from 1997 to 2004, as well as to extensive marketing efforts, as having
“strengthened consumer recognition.”48
However, Petitioner’s significant revenues do not equate to the fame of its mark.
Because there is no context for Petitioner’s marketing and sales figures, we cannot
gauge the relative level of success or the degree of exposure the general public has
had to the JOHN’S INCREDIBLE PIZZA CO. mark. The extent to which consumers
have been exposed to Petitioner’s restaurant services vis-à-vis competitors is
unknown and, thus, it is not possible to determine the renown of Petitioner’s mark.
Ultimately, and considered as a whole, Petitioner’s evidence falls well short of clearly
establishing that Petitioner’s mark is famous. See Leading Jewelers Guild Inc. v.
LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007). This du Pont factor is
neutral.
Instances of actual confusion
Petitioner argues that there have been “numerous instances” of actual confusion.49
Petitioner introduced a number of emails and one job application from individuals
who appeared to confuse Petitioner’s restaurants with those of Respondent.50
Respondent has stipulated to the admission of the emails but nevertheless objects to
them as hearsay.51 Petitioner also seeks to introduce from the district court case the

48 Petitioner’s br., p.46, 43 TTABVUE 53. In view of the confidential nature of Petitioner’s
revenues, we do not discuss any specific information and restrict our discussion to general
information provided.
49 Petitioner’s br., p. 28, 43 TTABVUE 35.
50 15 TTABVUE 127-46.
51 54 TTABVUE 17.
Opposition No. 91170452 and Cancellation No. 92043316
23
testimony of Evangelene Franco, a customer who purportedly was confused about the
parties’ marks.52
Proof of actual confusion is not necessary to show a likelihood of confusion. See
Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1843 (Fed.
Cir. 1990). A showing of actual confusion may be highly probative, if not conclusive,
of a likelihood of confusion. Yet the opposite is not true; an absence of evidence of
actual confusion carries little weight. See J. C. Hall Co. v. Hallmark Cards, Inc., 340
F.2d 960, 144 USPQ 435, 438 (CCPA 1965). Furthermore, it has often been recognized
that such evidence is difficult to obtain. Lebanon Seaboard Corp. v. R&R Turf Supply
Inc., 101 USPQ2d 1826, 1834 (TTAB 2012).
The emails and job application offered in support of actual confusion are arguably
hearsay, and are entitled to little weight in any event because they are based upon
database searches involving the words “Incredible Pizza,” or involve inquiries
regarding a possible affiliation between the parties. Without direct testimony from
the individuals who sent the emails, there is insufficient information to ascertain
what they were thinking, or what caused the purported confusion. See Georgia-Pacific
Corp. v. Great Plains Bag Co., 614 F.2d 757, 204 USPQ 697, 701 (CCPA 1980) (court
held statements offered to prove the state of mind of a third party concerning
confusion between two marks is hearsay, observing: “Actual confusion is entitled to
great weight but only if properly proven . . . Such is not the case here.”).

52 Petitioner’s supplemental br., p. 23, 81 TTABVUE 25, 285-315.
Opposition No. 91170452 and Cancellation No. 92043316
24
The testimony of Evangelene Franco is admissible, however, we are not persuaded
that one instance of confusion is sufficiently significant to be dispositive, particularly
because her confusion was based in part on the trade dress of the parties. But her
testimony does serve to underscore the findings of similarity under the other du Pont
factors. In view thereof, the factor of actual confusion weighs slightly in favor of
Petitioner. However, we caution that our determination would not be altered if this
factor were neutral.
The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression
Lastly, we consider the du Pont factor relating to the similarity of the marks. In
comparing the marks we must consider their appearance, sound, connotation and
commercial impression. Palm Bay Imports, 73 USPQ2d at 1692. The emphasis of our
analysis must be on the recollection of the average purchaser who normally retains a
general, rather than specific, impression of trademarks. See, e.g., In re Bay State
Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016). Although we consider the marks
as a whole, “in articulating reasons for reaching a conclusion on the issue of confusion,
there is nothing improper in stating that, for rational reasons, more or less weight
has been given to a particular feature of a mark.” In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
In comparing the marks, we are mindful that where, as here, the services are
identical, the degree of similarity necessary to find likelihood of confusion need not
be as great as where there is a recognizable disparity between the services. Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Opposition No. 91170452 and Cancellation No. 92043316
25
Cir. 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992).
Respondent’s mark is . The dominant portion of the mark is the
phrase INCREDIBLE PIZZA because it is the largest wording, and likely would be
used by consumers to call for the services. In re Viterra Inc., 101 USPQ2d at 1911
(“[T]he verbal portion of a word and design mark likely will be the dominant portion”);
In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (holding that
“if one of the marks comprises both a word and a design, then the word is normally
accorded greater weight because it would be used by purchasers to request the goods
or services” and noting the “propensity of persons to try restaurants based on word-
of-mouth recommendations.”); In re Dixie Rests., 105 F.3d 1405, 41 USPQ2d 1531,
1534 (Fed. Cir. 1997) (noting that “‘restaurants are often recommended by word of
mouth and referred to orally….’”) (quotation omitted). Thus, the design portion is less
significant, especially, as here, if Petitioner’s mark is in standard characters and can
be used in any form. Similarly, the wording “Company” and “Great Food, Fun, Family
& Friends” is less significant because it is smaller, appears below INCREDIBLE
PIZZA, and is less likely to be used to call for the services. Taken as a whole,
Respondent’s mark creates the connotation or commercial impression of a pizza
restaurant that is “too extraordinary and improbable to be believed” or “amazing.”
Opposition No. 91170452 and Cancellation No. 92043316
26
Petitioner’s mark is JOHN’S INCREDIBLE PIZZA CO. in standard characters.
The parties’ marks are similar in that they both create the same connotation or
commercial impression, namely, a pizza restaurant that is “too extraordinary and
improbable to be believed” or “amazing.” Obviously, Petitioner’s mark begins with the
term JOHN’S. However, even if JOHN’S is considered to be the dominant term in
Petitioner’s mark, JOHN’S nevertheless serves to complement or define
INCREDIBLE PIZZA CO., rather than to obscure it. Thus, the presence of JOHN’S
does not distinguish the marks “because [Respondent’s] mark shares with
[Petitioner’s] mark that element responsible for creating its overall commercial
impression, the marks are confusingly similar.” Appetito Provisions, 3 USPQ2d at
1554; Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001,
1004 (Fed. Cir. 2002) (finding that, even though applicant’s mark PACKARD
TECHNOLOGIES does not incorporate every feature of opposer’s HEWLETT
PACKARD marks, a similar overall commercial impression is created).
Respondent argues that JOHN’S is the dominant element of Petitioner’s marks
and that Petitioner’s restaurants “have always been known primarily as ‘John’s” as
opposed to ‘John’s Incredible Pizza Company.’”53 This argument is unpersuasive. It is
well settled that consideration of the marks must be made based on the drawings of
the mark in the respective registrations and not on how they may be used in the
marketplace. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed.

53 Respondent’s br., p. 32, 53 TTABVUE 33.
Opposition No. 91170452 and Cancellation No. 92043316
27
Cir. 1993) (holding use of the mark in other forms was not considered in the
likelihood-of-confusion determination).
Respondent also argues that the common words INCREDIBLE PIZZA COMPANY
“have little or no trademark value here.” We disagree. We find that the hyperbolic
wording INCREDIBLE is suggestive, although somewhat weak, in that it implies
that the parties’ services will be “too extraordinary and improbable to be believed” or
“amazing.” But “even weak marks are entitled to protection against registration of
similar marks, for the same services.” In re Colonial Stores, 216 USPQ 793, 795
(TTAB 1982); see also, Anthony’s Pizza, 95 USPQ2d at 1283; In re Max Capital Grp.,
93 USPQ at 1246.
We find that when the marks are compared in their entireties, they are similar in
connotation and commercial impression. In coming to our determination on the
similarity of the marks, we again emphasize that the applicable test is not whether
the marks can be distinguished when subjected to a side-by-side comparison. Spoons
Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991). Rather, the proper
focus is on the recollection of the average customer, who retains a general rather than
specific impression of the marks. Bay State Brewing Co., 117 USPQ2d at 1960; see
also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234
(CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB
2014). While we fully recognize their differences, we find that the marks are similar
in connotation and commercial impression. Considered as a whole, the marks are
more similar than dissimilar “in their entireties as to appearance, sound, connotation
Opposition No. 91170452 and Cancellation No. 92043316
28
and commercial impression.” Palm Bay, 73 USPQ2d at 1691 (quoting du Pont, 177
USPQ at 567). This du Pont factor favors a finding of a likelihood of confusion,
particularly given the identity of the relevant services, channels of trade, and classes
of customers, which reduces the degree of similarity between the marks that is
required for confusion to be likely.
Balancing the factors
After considering all the evidence and argument on the relevant du Pont factors
regarding likelihood of confusion between Respondent’s mark and the
Petitioner’s mark, JOHN’S INCREDIBLE PIZZA CO. (in standard characters), both
for “restaurant services,” we find that there is a likelihood of confusion. The services,
channels or trade, and conditions of sale are identical. And although somewhat weak,
the phrase INCREDIBLE PIZZA CO. (or COMPANY) creates the same connotation
or commercial impression in both marks and the additional material in both marks
is not sufficient to distinguish them.
B. Application Serial No. 78575077
We next turn to Petitioner’s allegation of a likelihood of confusion with Application
Serial No. 78575077 for the mark

Opposition No. 91170452 and Cancellation No. 92043316
29
for services identified as “Restaurant franchising; franchising, namely consultation
and assistance in business management, organization and promotion; franchising,
namely, offering technical assistance in the establishment and/or operation of
restaurants” in International Class 35. Respondent has disclaimed “America’s” and
“Pizza Company.”
As with Respondent’s Registration No. 2500872, we focus our analysis on
Petitioner’s Registration No. 3025377 because the identified services are most similar
to Respondent’s services. If we do not find a likelihood of confusion with this
registered mark and its services, then there would be no likelihood of confusion with
the mark in Petitioner’ other registration. See Max Capital Grp., 93 USPQ2d at 1245.
The similarity of the services, trade channels and conditions of sale
We begin with the du Pont factor regarding the similarity or dissimilarity of the
parties’ respective services. Petitioner argues that restaurant services and
franchising of restaurants are similar. In support, Petitioner made of record twenty-
four third-party registrations covering both services. These registrations show that a
number of restaurant chains, including Roy Rogers, Golden Skillet, Dairy Queen,
Checkers, Orange Julius, and Howard Johnson, provide both restaurant services as
well as franchising services.54
These registrations show that both Petitioner’s and Respondent’s services are of a
kind that may emanate from a single source under a single mark. “Third-party
registrations which cover a number of differing goods and/or services, and which are

54 16 TTABVUE 237-260.
Opposition No. 91170452 and Cancellation No. 92043316
30
based on use in commerce, although not evidence that the marks shown therein are
in use on a commercial scale or that the public is familiar with them, may
nevertheless have some probative value to the extent that they may serve to suggest
that such goods or services are of a type which may emanate from a single source.” In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). The fact that
Respondent also provides restaurant services under a similar mark only reinforces
the finding that Petitioner’s and Respondent’s services are of a type which may
emanate from a single source. In addition, in the infringement action, the district
court found that Respondent’s franchising activities in California were sufficiently
related to Petitioner’s restaurant services to support the jury’s finding of
infringement.55 Based on the evidence of record and the findings of the district court,
we find that restaurant services and restaurant franchising services are related.
The relationship between restaurant and franchising trade channels and
conditions of sale is less clear. On the one hand, the offering of franchises does not
appear to be directed to average restaurant customers and, given the amount of
money expended for a franchise, franchisees would be expected to exercise greater
care in pursuing franchising opportunities. On the other hand, the franchising of
consumer-oriented businesses appears to be inseparable from the underlying
businesses being franchised. Consumers are regularly exposed to numerous
franchises on a daily basis. This conclusion is supported by the third party
registrations covering both restaurants and franchising services. In addition, it is

55 Findings of Fact and Conclusions of Law, p. 3, 81 TTABVUE 273.
Opposition No. 91170452 and Cancellation No. 92043316
31
well-settled that “being knowledgeable and/or sophisticated in a particular field does
not necessarily endow one with knowledge and sophistication in connection with the
use of trademarks.” In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988). Nor does
it render one immune from source confusion. See Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014).
We find the du Pont factors regarding similarity of the services, trade channels
and conditions of sale favor a finding of a likelihood of confusion.
The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression
The only difference between Respondent’s mark in the pending application and its
registration, supra, is the addition of the word “AMERICA’S,” which Respondent has
disclaimed, along with PIZZA COMPANY. This addition does not significantly change
the connotation or commercial impression of the mark, namely, a pizza company that
is “too extraordinary and improbable to be believed” or “amazing.” Rather, it is likely
that prospective consumers will simply think that JOHN’S INCREDIBLE PIZZA CO.
is now boasting that it has become AMERICA’S INCREDIBLE PIZZA CO. in order
to sell more franchises.
Respondent argues that the addition of the term AMERICA’S “render[s] the
marks visually and audibly dissimilar.”56 We disagree. The wording INCREDIBLE
PIZZA is still the largest and most prominent wording in Respondent’s mark. Even
assuming, arguendo, that the addition of AMERICA’S renders the marks visually and
audibly dissimilar, when viewed in their entireties, the marks remain similar in

56 Respondent’s br., p. 52, 53 TTABVUE 54.
Opposition No. 91170452 and Cancellation No. 92043316
32
connotation and commercial impression. A finding of similarity as to any one factor
(sight, sound or meaning) alone “may be sufficient to support a holding that the marks
are confusingly similar.” In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988);
see also Krim-Ko Corp. v. The Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA
1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely
to cause confusion.”).
Balancing the factors
After considering all the evidence and argument, including those discussed in
connection with Respondent’s registration, on the relevant du Pont factors regarding
likelihood of confusion between Respondent’s mark for restaurant
franchising services and the Petitioner’s mark, JOHN’S INCREDIBLE PIZZA CO. (in
standard characters), for restaurant services, we find that there is a likelihood of
confusion. The services, channels or trade, and conditions of sale are similar. And
although somewhat weak, the phrase INCREDIBLE PIZZA CO. (or COMPANY)
creates the same connotation or commercial impression in both marks and the
additional material in both marks is not sufficient to distinguish them.
IX. Conclusion
After considering all of the evidence of record as it pertains to the relevant du Pont
factors, including all of the parties’ arguments and evidence, even if not specifically
discussed herein, we find there is a likelihood of confusion between Petitioner’s mark
Opposition No. 91170452 and Cancellation No. 92043316
33
and Respondent’s marks. In view of our decision on the likelihood of confusion claims
we do not reach the fraud claim.

Decision: The petition for cancellation of Registration No. 2500872 is granted. The
opposition to Application Serial No. 78575077 is sustained and registration is refused.