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

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.

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Opposition No. 91170452 and Cancellation No. 92043316

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.

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Opposition No. 91170452 and Cancellation No. 92043316

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.

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Opposition No. 91170452 and Cancellation No. 92043316

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.

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Opposition No. 91170452 and Cancellation No. 92043316

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.

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Opposition No. 91170452 and Cancellation No. 92043316

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

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Opposition No. 91170452 and Cancellation No. 92043316

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.

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Opposition No. 91170452 and Cancellation No. 92043316

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.

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Opposition No. 91170452 and Cancellation No. 92043316

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.

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Opposition No. 91170452 and Cancellation No. 92043316

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

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Opposition No. 91170452 and Cancellation No. 92043316

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.

12
Opposition No. 91170452 and Cancellation No. 92043316

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

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Opposition No. 91170452 and Cancellation No. 92043316

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.

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Opposition No. 91170452 and Cancellation No. 92043316

“[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.

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Opposition No. 91170452 and Cancellation No. 92043316

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.

31Respondent’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.

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Opposition No. 91170452 and Cancellation No. 92043316

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).

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Opposition No. 91170452 and Cancellation No. 92043316

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.

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Opposition No. 91170452 and Cancellation No. 92043316

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.

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Opposition No. 91170452 and Cancellation No. 92043316

• 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.

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Opposition No. 91170452 and Cancellation No. 92043316

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).

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Opposition No. 91170452 and Cancellation No. 92043316

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.

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Opposition No. 91170452 and Cancellation No. 92043316

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.

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Opposition No. 91170452 and Cancellation No. 92043316

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.

24
Opposition No. 91170452 and Cancellation No. 92043316

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.”

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Opposition No. 91170452 and Cancellation No. 92043316

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.

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Opposition No. 91170452 and Cancellation No. 92043316

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

27
Opposition No. 91170452 and Cancellation No. 92043316

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

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Opposition No. 91170452 and Cancellation No. 92043316

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.

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Opposition No. 91170452 and Cancellation No. 92043316

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.

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Opposition No. 91170452 and Cancellation No. 92043316

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.

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Opposition No. 91170452 and Cancellation No. 92043316

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

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Opposition No. 91170452 and Cancellation No. 92043316

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.

33