CAFC Affirms TTAB’s Refusal to Register Hair Products Mark Due to Opposer’s Prior Use
“When presented with the evidence provided in the Extrakt declaration and nothing to contradict it, a reasonable mind could conclude that Framboise had established its priority date by a preponderance of the evidence.”
The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential trademark decision affirming a Trademark Trial and Appeal Board (TTAB) ruling that sustained Framboise Holdings, Inc.’s opposition and refused registration of Jalmar Araujo’s mark #TODECACHO.
Framboise alleged ownership of the pictured design mark (below left) based on prior use of the mark in the United States in connection with hair products, including shampoo, conditioner, hair mask treatments, hair cream, curly hair activator, hair jelly, etc. When Araujo 
applied to register U.S. Trademark Application Serial No. 88/712823 #TODECACHO as a standard character mark for hair combs, Framboise opposed, arguing its prior use went back to March 24, 2017, and noting that it also owned a pending trademark application that had been filed in 2020 for the same mark and claimed the same date of first use.
At the end of the trial period for the opposition, on October 18, 2021, Framboise moved to extend the closing date of the trial period by seven days. Four days later, Framboise served Araujo with the expert declaration of Adrian Extrakt, Director of Framboise. Aruajo opposed the late submission of this declaration, but the Board allowed it and found that Framboise had met the applicable good cause standard. Framboise relied on the declaration to support its date of first use and the TTAB ultimately held that Framboise had met its burden to establish prior use. According to the CAFC opinion, the Board “found that the Extrakt declaration alone was sufficient to prove prior use because it was clear, convincing, and uncontradicted.” Based on the date of first use, the Board found a likelihood of confusion between the marks and refused registration of Araujo’s mark.
Araujo argued on appeal to the CAFC that the Board abused its discretion by granting the motion to extend the trial date and that the Board’s finding that Framboise established prior use of its design mark was not supported by substantial evidence.
In its analysis, the CAFC disagreed with Araujo’s argument that Framboise failed to allege facts constituting good cause as to why it needed the extension and that the Board therefore abused its discretion by granting the extension. The court explained that the Board determined the email exchanges between Araujo and Framboise “indicated that Framboise ‘was experiencing an unexpected delay’” and that there was no evidence Framboise was guilty of negligence or bad faith, that it was Framboise’s first extension request, that it had submitted most of its evidence by the close of its testimony period and that the four-day delay was minimal. “Those factual findings are not clearly erroneous,” wrote the CAFC.
Having found the Board did not abuse its discretion, the court then addressed Araujo’s second argument, that Framboise failed to establish prior use. The Board had determined that Araujo’s priority date was on December 3, 2019, which was the filing date of his application. Araujo said the expert declaration upon which the Board relied to establish prior use did not constitute substantial evidence because it was the testimony “of a single interested witness, Extrakt, and that his declaration was merely naked general assertions of prior use.” But the CAFC rejected this assertion, noting that “[w]hen presented with the evidence provided in the Extrakt declaration and nothing to contradict it, a reasonable mind could conclude that Framboise had established its priority date by a preponderance of the evidence.” The court explained:
“Contrary to Araujo’s assertion, the declaration provides more than general assertions. It states that it is based on Extrakt’s “personal knowledge and assessment of the records maintained by Framboise.”… It provides a list of products and a specific date on which Framboise began using the #TODECACHO design mark in connection with those products…. It also provides representative examples of the mark as displayed on products in stores in the United States….Araujo did not offer any evidence to dispute Framboise’s prior use and declined to depose Extrakt during the opposition proceeding despite the opportunity to do so….”
The CAFC therefore affirmed the Board’s decision to refuse registration of Araujo’s mark.
Image Source: Deposit Photos
Author: NiceIdeas
Image ID: 421287828
Eileen McDermott
Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at […see more]
