Doctor’s Associates Inc.v.Janco, LLC

Trademark Trial and Appeal Board

Jan 7, 2016

No. 91217243 (T.T.A.B. Jan. 7, 2016)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: January 7, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____
Doctor’s Associates Inc.
v.
Janco, LLC
________
Opposition No. 91217243
_______
Walter B. Welsh of Whitmyer IP Group LLC for Doctor’s Associates Inc.

D. Bruce Gardiner of The Gardiner Law Firm for Janco, LLC.
_______
Before Cataldo, Ritchie and Wolfson, Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
Janco, LLC (“Applicant”) seeks to register the mark FLATIZZA (in standard
characters) for “pizza” in International Class 30. Doctor’s Associates Inc.
(“Opposer”) opposes registration of the mark, pleading prior use of the mark
FLATIZZA for flat sandwiches, ownership of two pending applications for the marks
FLATIZZA1 and FLATIZZAS,2 and that Applicant did not make use of its mark in
interstate commerce prior to the filing date of its application, thereby rendering its
application void ab initio under Section 1(a) of the Trademark Act, 15 U.S.C. §

1 Serial No. 86250900, filed April 14, 2014, alleging first use dates of February 15, 2013.
2 Serial No. 86251566, filed April 14, 2014, alleging first use dates of February 15, 2013.
Opposition No. 91217243

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1051(a).3 By its answer, Applicant denies the salient allegations in the opposition
and asserts that it has made use of its mark in interstate commerce, thereby
according it priority of use and entitlement to registration of the mark FLATIZZA.
The Record
The record includes the pleadings and, by operation of Trademark Rule
2.122(b), 37 C.F.R. § 2.122(b), Applicant’s application file. In addition, the parties
agreed to resolve the instant proceeding by way of Accelerated Case Resolution
(“ACR”), and stipulated by written agreement that witness testimony would be
submitted by declaration, reserving their right to object “to reliance on any of the
above, for example, on the grounds of relevancy, hearsay, materiality, weight, and
competency.”4 All evidence would be submitted “through one or more declarations
and notices of reliance submitted during each party’s respective testimony periods.”5
The parties further agreed that documents exchanged during discovery are
authentic and that the Board may make determinations of genuine issues of
material fact.
Opposer’s Evidence
Opposer filed four Notices of Reliance.

3 Opposer offered two bases for this claim. First, that Applicant did not use its mark in
interstate commerce, and second, that Applicant’s only use of its mark constitutes a
mutilation or material alteration of what it seeks to register.
4 9 TTABVUE 3.
5 Id.
Opposition No. 91217243

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Pursuant to Opposer’s first Notice of Reliance,6 Opposer made of record the
March 25, 2015 discovery Deposition of Jon Anderson, Applicant’s President, with
Exhibits.
Pursuant to the second Notice of Reliance,7 Opposer made of record copies of
Applicant’s menus, sales reports, Opposer’s First Set of Document Requests to
Applicant and Applicant’s responses, Opposer’s First Set of Interrogatories to
Applicant and Applicant’s responses, and Opposer’s Requests for Admission to
Applicant and Applicant’s answers.
Opposer’s third Notice of Reliance8 made of record the declaration of Jessica
Johnson, a trademark attorney employed by Franchise World Headquarters, LLC,
which she describes as “a service organization for [Opposer] and companies
associated with SUBWAY restaurants.”9 Attached to her declaration are several
confidential Exhibits regarding sales and advertising of Opposer’s FLATIZZA
sandwiches.
Opposer’s fourth Notice of Reliance10 contains copies of Office records for
Applicant’s FLATIZZA application (Serial No. 86202552) as well as Opposer’s two
pending applications for FLATIZZA and FLATIZZAS (Nos. 86250900 and
86251566).
Applicant’s Evidence

6 At 11 TTABVUE.
7 At 13 TTABVUE.
8 At 14 and 15 TTABVUE. 15 TTABVUE contains confidential copies of Exhibits filed with
Opposer’s third Notice of Reliance.
9 14 TTABVUE 6.
10 At 16 TTABVUE.
Opposition No. 91217243

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Applicant filed the August 13, 2015 Declaration of Jon Anderson, with
Exhibits, under Notice of Reliance at 17 TTABVUE.
Standing
Standing is a threshold issue that must be proven by the plaintiff in every
inter partes case. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025
(Fed. Cir. 1999). To establish its standing, Opposer must prove that it has a “real
interest” in the proceeding (that is, a “direct and personal stake” in its outcome) and
a “reasonable basis” for its belief of damage. Ritchie 50 USPQ2d at 1026. Here,
Opposer has shown that it uses the mark FLATIZZA nationwide on food items that
are essentially identical to those on which Applicant uses its mark FLATIZZA. This
is sufficient to show that Opposer has a reasonable belief that it will be damaged by
registration of Applicant’s mark. Moreover, Applicant does not contest Opposer’s
standing in this case.
Analysis
The parties do not dispute that the marks are confusingly similar and the
goods related. The sole issue in this case involves their dispute over priority. In this
regard, the record evidence shows that Applicant’s founder and president, Jon
Anderson, conceived of the concept of a fast service, Italian style restaurant in 2003
that would be named Readi Spaghetti.11 To promote the restaurant, together with a
design team, Mr. Anderson developed several terms for specific menu items. One of
the terms they thought of was the term FLATIZZA for a flat pizza. Prior to opening

11 Declaration of Jon Anderson, 17 TTABVUE 5.
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the first Readi Spaghetti restaurant, Applicant created a business plan and mock-
up menus.12 A website was established approximately two weeks before the opening
of the first restaurant, which opened in Bothell, Washington on September 27,
2012.13 Applicant filed its application for the FLATIZZA mark on February 24, 2014
and opened a second restaurant in Kirkland, Washington in June 2014.14 Because
Applicant operated only one restaurant at a single location prior to the filing date of
its FLATIZZA application, Opposer claims that Applicant’s use was purely
intrastate and thus was insufficient to support the use-based application.
Under Trademark Act Section 1(a), only the “owner of a trademark used in
commerce may request registration of its trademark.” Trademark Act Section 1(a),
15 U.S.C. § 1051(a) (2015) (emphasis added). This provision is made applicable to
service marks under Section 3 of the Act, 15 U.S.C. § 1053. “Commerce” is defined
by Section 45 as “all commerce which may lawfully be regulated by Congress” and
“use in commerce” in association with services occurs when a mark “is used or
displayed in the sale or advertising of services and the services are rendered in
commerce, or the services are rendered in more than one State or in the United
States and a foreign country and the person rendering the services is engaged in
commerce in connection with the services, ….” 15 U.S.C. § 1127. It thus follows that
before a service mark owner may apply to register its mark with the USPTO on the
basis of actual use in commerce under Section 1(a), the mark must have been

12 17 TTABVUE 6; Exhibits 9 and 10.
13 17 TTABVUE 6.
14 Id.
Opposition No. 91217243

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displayed in the sale or advertising of the services and the services must have been
rendered in a type of commerce over which Congress has regulatory authority, such
as interstate commerce or commerce between the United States and a foreign
country. In other words, for an application filed under Section 1(a), use in commerce
must have been made before the filing date of the application or the application is
void. Trademark Act Section 1(a), 15 U.S.C. § 1051(a); Larry Harmon Pictures Corp.
v. Williams Rest. Corp., 929 F.2d 662, 18 USPQ2d 1292, 1293 (Fed. Cir. 1991) (“In
general, therefore, service marks must be ‘used in commerce’ before they may be
registered.”).
In Harmon, the court found that a single location restaurant used its mark in
connection with services rendered to customers traveling across state boundaries.
Acknowledging Congress’s broad powers to regulate interstate commerce under
Article 1, section 8 of the United States Constitution (the “commerce clause”), the
court held that these services had a direct effect on interstate commerce and were
sufficient to show that the applicant’s mark was used in commerce within the
meaning of Sections 3 and 45 of the Lanham Act. The evidence in that case
established that the applicant was located about an hour’s drive from Memphis,
Tennessee, a metropolitan statistical area made up of portions of three different
states, Tennessee, Mississippi and Arkansas. The restaurant attracted patrons from
Memphis and was featured in publications originating in New York, Washington,
D.C., Dallas, Texas and Palm Beach, Florida. The applicant’s witness estimated
that 15% of its business each year came from out-of-state customers and submitted
Opposition No. 91217243

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affidavits and letters from persons out of state who had patronized the applicant’s
restaurant at various times prior to the application filing date. Larry Harmon, 18
USPQ2d at 1293 n.1.
While a certain threshold level of interstate activity is not required before
registration of the mark used by a single-location restaurant may be granted, some
use in commerce must be shown. In this case, Applicant has not shown that its
services were rendered to any out-of-state customers. Its restaurant was not shown
to have been listed in any travel or restaurant guide. No advertising has been
submitted. The record does not support a finding that any viewers (from out-of-state
or otherwise) accessed Applicant’s website, and the business plan and menu mock-
ups were for internal use only. Nor has Applicant shown that its services affected
interstate commerce. Although there are situations in which intrastate sales may be
found to have such an effect on interstate commerce that the activities constitute
acceptable use in commerce for purposes of trademark registration, there must be a
showing that the activities have such an effect. See In re Gastown, 326 F.2d 780,
140 USPQ 216, 218 (CCPA 1964) (federal registration granted for the service mark
of a chain of automobile and truck service stations located only in Ohio; held that
the location of some of these stations on interstate highways, the frequent
patronage by out-of-state vehicles and persons engaged in interstate commerce, the
road service provided to disabled vehicles from out-of-state, and the extension of
credit and out-of-state billing were sufficient to show that the services rendered had
a “direct effect” on commerce); compare Silenus Wines, 557 F.2d 806, 194 USPQ 261,
Opposition No. 91217243

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264 (CCPA 1977) (sale in Massachusetts intimately involved with shipment of wine
from France to seller in Massachusetts; activity held sufficient to affect interstate
commerce because shipments were necessary for the accomplishment of the sales)
with In re The Bagel Factory, Inc., 183 USPQ 553, 554 (TTAB 1974) (sales entirely
within Michigan cannot support federal registration even when a customer
transported the product to Ohio after sale).
Applicant argues in its brief that its Bothell restaurant is located about .7
miles from I-405 and 3 miles from Interstate-5, which “is the major North/South
corridor of the West Coast.”15 Applicant further argues that it “advertises on the
Web, on Facebook and Twitter, and is frequently rated on Yelp with reviews [from]
local and out-of-state patrons, such as Arizona, New York, Colorado, Singapore,
Florida, and Oregon.”16 These arguments are unavailing. First, assertions made in a
party’s brief are not recognized as evidence. In re Simulations Publications, Inc.,
521 F.2d 797, 187 USPQ 147, 148 (CCPA 1975); In re Vesoyuzny Ordena Trudovogo
Krasnogo Znameni, 219 USPQ 69, 70 (TTAB 1983); Spin Physics, Inc. v. Matsushita
Electric Co., 168 USPQ 605, 607 (TTAB 1970) (the arguments and opinion of
counsel are insufficient to overcome the facts). Secondly, there is no record evidence
supporting Applicant’s argument that any of its patrons has written a review of its
restaurant at any time, let alone before Applicant filed its application. And while
the copy of its webpage submitted with Opposer’s second Notice of Reliance invites
readers to “Become a fan on Facebook,” “Follow us on Twitter” and “Check Us out

15 Applicant’s Brief, 23 TTABVUE 12.
16 Id.
Opposition No. 91217243

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on Yelp,”17 the record does not show that anyone ever took advantage of these
entreaties and we do not take judicial notice of the contents of those websites or
that in fact, any viewers ever accessed them.18 In re Planalytics Inc., 70 USPQ2d
1453, 1457 (TTAB 2004) (the mere listing of a link to a website does not make the
material that might be found on that website of record).
In considering Applicant’s arguments, we have taken judicial notice of the
location of Bothell in the state of Washington as being approximately 20 miles
northeast of Seattle, but unlike in Larry Harmon, there is nothing in the record to
indicate the size or scope of the Seattle metropolitan area at the time the
application was filed, or the travel time between Bothell and Seattle, or whether
Seattle’s location puts it at a nexus of more than one state. Further, while I-5
traverses Seattle, it is speculation to assume that out-of-state travelers would travel
3 miles off the Interstate highway to patronize Applicant’s restaurant, especially
given that the route from I-5 to Bothell would require either driving the distance in
a reverse direction or taking side roads. As for the I-405 highway, it is not an
interstate highway. We are not convinced that the location of Applicant’s restaurant
is such as to compel a presumption that Applicant’s services have had an effect on
interstate commerce.

17 13 TTABVUE 8.
18 Applicant’s website evidence consists of a copy of a single web page at which the menu for
FLATIZZA pizza is displayed. The page bears a 2012 copyright notice, which supports
Applicant’s declarant’s assertion that the website was active prior to the opening of the
Bothell restaurant. However, the contents of the page do not support Applicant’s assertions
that viewers came from outside the state of Washington, or that it was ever rated on Yelp.
The links merely invite readers to link to Facebook, Twitter, or Yelp but do not demonstrate
that any readers did so, or where they originated from (in-state or out-of-state).
Opposition No. 91217243

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In order to meet the use requirement of the Lanham Act, it is not required
that the services be rendered in more than one state. Larry Harmon, 18 USPQ2d at
1295. However, if they are not, then it is required that the services impact
interstate commerce. Applicant has failed to show that its use of the mark
FLATIZZA prior to the filing date of its service mark application was either
rendered in more than one state or had an impact on interstate commerce.
Accordingly, Applicant has not satisfied the Trademark Act Section 1(a) use-in-
commerce requirement.
Because we find that Applicant did not make use of its mark prior to the
filing date of the application we need not reach the issue of whether Applicant made
proper use of the FLATIZZA mark, given that its specimens displayed the mark as
PIZZA – FLATIZZA! However, for the sake of completeness, we consider the
evidence and arguments regarding this issue. We find that Applicant’s use of PIZZA
– FLATIZZA! is not a mutilation or material alteration of the applied-for mark
FLATIZZA. See In re Servel, Inc., 181 F.2d 192, 85 USPQ 257, 260 (CCPA 1950)
(allowing registration for SERVEL where specimens of use displayed the mark as
SERVEL INKLINGS); In re Raychem Corp., 12 USPQ2d 1399 (TTAB 1989)
(registration refusal reversed; applied-for mark TINEL-LOCK had a separate
commercial impression from the other matter in the specimens that showed
TRO6AI-TINEL-LOCK-RING); In re Sansui Electric Co., Ltd., 194 USPQ 202
(TTAB 1977) (Board allowed registration of QSE and QSD; specimens showed use
Opposition No. 91217243

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as QSE-4 and QSD-4). Applicant’s use of the mark in the form PIZZA – FLATIZZA!
constitutes proper use of the mark FLATIZZA.
Nonetheless, because we find that Applicant used the mark FLATIZZA only
in connection with a single location restaurant prior to the filing date of its Section
1(a) application, and that such use was not in interstate commerce and had no
impact on interstate commerce, the application is void ab initio.
Concurrent Use
Seeking a concurrent use registration, Opposer has amended its FLATIZZA
application Serial No. 86250900 to a geographically restricted application and
named Applicant as the sole excepted user and owner of the application that is the
subject of this opposition proceeding. Opposer’s witness, Ms. Johnson, testified that
“[b]eginning on February 1, 2014, [Opposer] began using the FLATIZZA mark in
direct association [with] open-faced flatbread sandwiches in more than twenty-
seven thousand SUBWAY Restaurants in each of the fifty states of the United
States (‘National Launch’).”19 Opposer contends that it is entitled to a concurrent
use registration for the entire United States with the exception of Snohomish and
King counties in Washington State, the area in which Opposer alleges Applicant
has actually used its mark. By showing that it used the mark FLATIZZA on a
nationwide basis prior to the filing date of Applicant’s application, Opposer meets
the jurisdictional requirement for a concurrent use proceeding. Trademark Act
Section 2(d).

19 14 TTABVUE 9.
Opposition No. 91217243

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Decision: The opposition is sustained and Applicant’s application for the mark
FLATIZZA is refused registration under Section 1(a) of the Trademark Act.
A concurrent use proceeding will be instituted with respect to Serial No.
86250900 in due course.