Did The TTAB Reach The Right Result But With Flawed Reasoning?

Janco, LLC (the “Applicant”) applied to the United States Patent & Trademark Office (the “USPTO”) to register the mark FLATIZZA for pizza in international class 30. Doctor Associates, Inc. (the “Opposer”) filed an opposition with the Trademark Trial and Appeal Board (“the Board” or the “TTAB”) claiming prior use of the mark FLATIZZA for flat sandwiches. Opposer claimed that the Applicant did not use the mark in “commerce” prior to filing its trademark application. If Opposer can prove this allegation the application will be deemed void ab initio.

The parties do not contest that the marks are confusingly similar and that the goods are related. Therefore, the only issue to resolve in this matter is who maintains priority of use over the mark FLATIZZA. Applicant filed its trademark application on February 24, 2014. At this time, Applicant owned one restaurant in a single location. Under the Trademark Act Section 1(a) the owner must use the trademark in “commerce” and “commerce” has a legal definition. The definition includes the following types of commerce: (1) interstate; (2) territorial (commerce within a territory of the United States, Guam, Puerto Rico, American Samoa or the U.S. Virgin Islands or between the U.S. and a territory of the U.S.); and (3) between the United States and a foreign country. Commerce within one state only will not qualify as a basis for filing a federal trademark application unless it impacts one of the three types of commerce that Congress can regulate. If there is only intrastate commerce, see our web page entitled, State Trademark Registration, for details on how to file a state application.

In prior holdings, courts and the Board have found that a single restaurant location using its mark for restaurant services is engaged in commerce that Congress can regulate. See Larry Harmon Picture Corp. v. Williams Rest. Corp., 929 F.2d 662, 18 USPQ2d 1292 (Fed. Cir. 1991), where the court held that a single restaurant location used its mark in commerce based on customers traveling across state boundaries to reach the restaurant location. In that case, it was shown that the restaurant was approximately one hour from a city that contained a population from three different states and that the restaurant had been featured in publications from different states. The Court concluded that while there is no requisite level of interstate commerce required before filing a federal trademark application, some use in commerce must be shown.

In the case at bar, the restaurant did not submit evidence that it had been featured in any magazines or travel guides. No advertising was submitted either. The Applicant failed to show that its website was visited by out of state users. Nor was there proof that the product (pizza) was sold to consumers outside of the state or that the product was transported across state lines. Applicant argued that its restaurant was located .7 of a mile from an interstate highway and 3 miles from an interstate highway that is the major corridor of the West Coast. In addition, Applicant argues since it advertises on Facebook, Twitter, and the Internet, its activity rises to the level of interstate commerce. The Board did not agree and held there was no use in commerce prior to the filing of the application and found the application to be void ab initio.

The odd aspect about this case is that the Board treated the application as if it identified restaurant services for use with the trademark FLATIZZA. If that was the case, I would argue the Board incorrectly decided this case as most precedent applies the commerce clause to single restaurant locations especially ones that are located 3 miles from one of the primary interstate highways of the West Coast. However, here the Applicant applied to use the mark for goods (pizza). That being the case, the result may be correct since there was no evidence of the Applicant selling its pizza to consumers outside the state or transporting the pizza over state lines. However, in my opinion, although the correct result may have been reached, the reasoning used by the Board was flawed. See Doctor’s Associates Inc. v. Janco, LLC, Opposition No. 91217243 (January 7, 2016) [not precedential]. Whether an applicant has used his trademark in “commerce” is a legal question that should be raised with trademark counsel prior to filing the application at the USPTO.