Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA635587
`ESTTA Tracking number:
`10/28/2014
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91189063
`Defendant
`Incredible Pizza Co., Inc.
`MARY CLAPP
`AMERICA'S INCREDIBLE PIZZA COMPANY
`2522 S CAMPBELL
`SPRINGFIELD, MO 65807
`UNITED STATES
`mclapp@incrediblepizza.com
`Other Motions/Papers
`Mary M. Clapp
`mary@clappbusinesslaw.com
`/Mary M. Clapp/
`10/28/2014
`NoticeOfStatusOfCivilCase 10-28-14.pdf(1094906 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`JIPC Management, Inc.,
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`Opposition No. 91189063
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`Opposer,
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`Application No. 77/442151
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`
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`v.
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`Incredible Pizza Co. Inc.,
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`For the mark AMERICA’S INCREDIBLE
`PIZZA COMPANY GREAT FOOD, FUN,
`FAMILY & FRIENDS and Design
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`Applicant.
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`
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`JIPC Management, Inc.,
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`Published on September 2, 2008
`Opposition No. 91170452
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`Opposer,
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`Application No. 78/575077
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`
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`v.
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`Incredible Pizza Co. Inc.,
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`For the mark AMERICA’S INCREDIBLE
`PIZZA COMPANY GREAT FOOD, FUN,
`FAMILY & FRIENDS and Design
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`Applicant.
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`
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`JIPC Management, Inc.,
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`Published on December 20, 2005
`Cancellation No. 92043316
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`Petitioner,
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`Registration No. 2,500,872
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`
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`v.
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`Incredible Pizza Co. Inc.,
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`For the mark INCREDIBLE PIZZA
`COMPANY GREAT FOOD, FUN, FAMILY
`& FRIENDS and Design
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`
`
`
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`Respondent.
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`Registered on October 23, 2001
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`
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`NOTICE OF STATUS OF CIVIL ACTION
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`Applicant Respondent, Incredible Pizza Co., Inc. (“IPC”), hereby submits its notice of the
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`status of Civil Action No. 08-cv-4310 pursuant to the board’s order dated October 22, 2014 in
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`Proceeding number 91189063. A final non-appealable judgment has been entered by the District
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`Court in the United States District Court for the Central District of California in the civil action
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`between the Parties, which occasioned suspension of these proceedings (“Civil Action”). A copy
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`of the final judgment in the Civil Action is attached hereto as Exhibit A.
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`What is most important for the Board to note is that the federal district court also squarely
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`addressed the issue of cancellation of IPC’s federal trademark registrations and ruled on that
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`#534 v3
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`issue in its findings of fact and conclusions of law, a copy of which is attached hereto as Exhibit
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`B. In the Civil Action, JIPC Management (“Opposer”) sought cancellation of IPC’s federal
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`trademark registration. Opposer’s Amended Complaint in the Civil Action asserted identical
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`grounds as those asserted in this proceeding, namely fraud and likelihood of confusion. IPC
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`argued that under Tillamook Country Smoker, Inc. v. Tillamook County Creamery Ass'n, 465
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`F.3d 1102, 1113 (9th Cir. 2006), Opposer was not entitled to cancel IPC’s federal trademark
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`registration because Opposer admitted that there was no likelihood of confusion until 2008, even
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`though IPC had used its marks extensively prior to 2008 and the registration was issued in 2001.
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`The district court agreed with IPC and found that Opposer “has not established a valid ground for
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`cancellation of [IPC’s registration].” [Exhibit A, p. 8]. On that basis, the district court held that
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`Opposer is not entitled to cancellation of IPC’s federal trademark registration. [Id.].
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`As the Board previously noted in this proceeding, “the decision of a federal district court
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`is binding upon the Board.” November 24, 2008 Order (citing Goya Foods Inc. v. Tropicana
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`Prods. Inc., 846 F.2d 848, 6 USPQ2d 1950 (2d Cir. 1988); TBMP § 510.02(a)); see also 6
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`MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 32:94 (“Clearly then, a court’s
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`decision regarding federal registration is binding upon the Commissioner of Patents and the
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`administrative tribunals of the Patent and Trademark Office (PTO).”). Thus, the Court’s holding
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`that Opposer is not entitled to cancellation of IPC’s federal trademark registration is dispositive
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`of that issue and binding on the Board.
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`DATED: October 28, 2014
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`Respectfully submitted,
`By: s/Mary M. Clapp
`Mary M. Clapp
`Clapp Business Law, LLC
`mary@clappbusinesslaw.com
`2518 S. Campbell Ave.
`Springfield, MO 65807
`(417) 851-5386
`(417) 890-1635 (facsimile)
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`CERTIFICATE OF MAILING PURSUANT TO 37 C.F.R. §1.10
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`Registration No.:
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`2,500,872
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`Application No.:
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`78/575077
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`Registrant/Applicant:
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`
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`Incredible Pizza Co., Inc.
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`Type of Filing: Notice of Status of Civil Action
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`I hereby certify that this correspondence is being filed electronically with the Trademark
`Trial and Appeal Board. I hereby further certify that pursuant to 37 C.F.R. § 2.119 this
`correspondence is being sent this 28th day of October via United Parcel Service overnight,
`tracking number 1ZR901400199009634.
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`addressed to:
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`Steven E. Klein, Esq.
`Stoel Rives LLP
`900 SW Fifth Avenue, Suite 2600
`Portland, OR 97204-1268
`Counsel for JIPC Management, Inc.
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`
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` By: s/Mary M. Clapp
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`Mary M. Clapp
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`
`Date 10-28-14
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`3
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`EXHIBIT A
`EXHIBIT A
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`Case 2:08-cv-04310-CBM-PLA Document 482 Filed 10/25/11 Page 1 of 3 Page ID
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`Case 2:08-cv-04310-CBM-PLA Document 482 Filed 10/25/11 Page 2 of 3 Page ID
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`Case 2:08-cv-04310-CBM-PLA Document 482 Filed 10/25/11 Page 3 of 3 Page ID
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`EXHIBIT B
`EXHIBIT B
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`5
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`Case 2:08-cv-04310-CBM-PLA Document 477 Filed 09/28/11 Page 1 of 9 Page ID #:9977
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`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
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`JIPC MANAGEMENT, INC.,
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`No. CV 08-4310 CBM (PLAx)
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`FINDINGS OF FACT AND
`CONCLUSIONS OF LAW
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` Plaintiff,
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` Defendants.
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`)
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`v.
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`INCREDIBLE PIZZA CO., INC, et al.,
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`The matter before the Court, the Honorable Consuelo B. Marshall presiding,
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`is the bench trial held on Defendants Incredible Pizza Co., Inc. (“IPC”), and
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`Incredible Pizza Franchise Group, LLC’s (“IPFG”) (collectively, “Defendants”)
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`affirmative defenses and Plaintiff JIPC Management, Inc.’s (“Plaintiff”) request
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`for injunctive relief, cancellation of trademarks, and the parties’ requests for
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`attorneys’ fees. Upon consideration of the testimony and evidence received, and
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`the Court’s evaluation of the demeanor and credibility of the witnesses, the Court
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`makes the following findings of fact and conclusions of law pursuant to Fed. R.
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`Civ. P. 52(a).
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`I.
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`Litigation History and Procedural Posture
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`Plaintiff JIPC Management, Inc. (“Plaintiff”) licenses and manages
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`restaurants in California under the name “John’s Incredible Pizza Co.” (Stipulated
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`Case 2:08-cv-04310-CBM-PLA Document 477 Filed 09/28/11 Page 2 of 9 Page ID #:9978
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`Findings of Fact – Phase Two Trial at ¶¶ 1, 3) [Doc. No. 474.] John Parlet is
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`Plaintiff’s founder, president, and CEO. (Id. at ¶ 2.) The restaurants offer all-you
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`can-eat pizza buffets in an entertainment complex featuring theme rooms, video
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`games, redemption games, bumper cars, and other rides and attractions. (Id. at
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`¶4.) The first John’s Incredible Pizza Co. restaurant opened in Victorville,
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`California in September 1997. (Id. at ¶ 5.) It was owned and operated by John’s
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`Incredible Pizza Co., Inc., until Parlet formed plaintiff JIPC, which then assumed
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`management of the store. (Id. at ¶¶ 5-7.) Since then, JIPC has continuously
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`managed each of the John’s Incredible Pizza Co. stores from the date the store
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`opened to the present, under agreements with the separate entities that own the
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`stores. (Id. at ¶ 7.) Although the John’s Incredible Pizza Co. restaurants are
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`owned by various entities, Plaintiff exercises quality control over each of the
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`restaurants. (Id. at ¶¶ 9-12.)
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`Plaintiff owns four federal service mark registrations by the U.S. Patent and
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`Trademark Office (the “USPTO”): JOHN’S INCREDIBLE PIZZA CO.1; JOHN’S
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`INCREDIBLE PIZZA CO.2; JOHN’S INCREDIBLE PIZZA CO. ALL YOU
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`CAN EAT FOOD & FUN (and design)3; JOHN’S INCREDIBLE PIZZA CO.
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`ALL YOU CAN FOOD & FUN (and design)4. (Id. at ¶ 13.) Plaintiff also owns
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`corresponding California service mark registrations by the California Secretary of
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`State. (Id. at ¶ 14.)
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`Defendant Incredible Pizza Co., Inc. is a Missouri Corporation and
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`Defendant Incredible Pizza Franchise Group, LLC is a Missouri limited liability
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`company, both of which have a principal place of business in Springfield,
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`Missouri. (Id. at ¶ 15.) Rick Barsness is the CEO and, together with his wife
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`Cheryl, founder and owner of IPC. (Id. at ¶ 16.) They also own Defendant IPFG.
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`1 Reg. No. 3,025,377; Reg. Date 12/13/2005.
`2 Reg. No. 3,058,427; Reg. Date 02/14/2006.
`3 Reg. No. 3,061,612; Reg. Date 02/28/2006.
`4 Reg. No. 3,099,682; Reg. Date 06/06/2006.
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`Case 2:08-cv-04310-CBM-PLA Document 477 Filed 09/28/11 Page 3 of 9 Page ID #:9979
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`(Id.) IPC and its franchises and affiliates operate restaurants offering all-you-can-
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`eat buffets of pizza, pasta, salad, and desserts in an entertainment complex
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`featuring theme rooms, games, miniature golf, and bumper cars. (Id. at ¶ 17.)
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`IPFG grants franchises for these restaurants. (Id.) Defendants’ restaurants use the
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`name and trademark “INCREDIBLE PIZZA COMPANY” and a design logo that
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`incorporates the phrase INCREDIBLE PIZZA COMPANY GREAT, FOOD,
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`FUN, FAMILY & FRIENDS (collectively, “the IPC Marks””). (Id. at ¶ 18.)
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`Defendants’ mark is usually preceded by the name of a geographic location, as in
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`“Springfield’s Incredible Pizza Company.” (Id.)
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`Plaintiff brought suit against Defendants, asserting that Defendants
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`infringed on the JIPC Marks by using the IPC Marks in California, Arizona,
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`Nevada, Oregon, and Washington, beginning in 2008. (Id. at ¶ 19.) The Court
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`held a jury trial commencing on March 16, 2010. [Doc. No. 352.] The jury
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`returned a verdict in favor of the Plaintiff, finding, by a preponderance of the
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`evidence, that (1) Defendants’ use of their marks caused a likelihood of confusion
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`among ordinary purchasers as to the source, sponsorship, or affiliation of the
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`parties goods and services; (2) Plaintiff suffered injury to its trademarks or was
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`otherwise damaged as a result of the likelihood of confusion created by
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`Defendants’ use of their marks in California, Arizona, Nevada, Oregon, and
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`Washington, and (3) Defendants intentionally used the JIPC marks knowing that it
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`was an infringement. (Stipulated Findings of Fact – Phase Two Trial at ¶ 20.)
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`With respect to damages, the jury found the amount of prospective corrective
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`advertising required to offset any injury to Plaintiff’s marks or damage as a result
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`of the likelihood of confusion created by Defendants’ use of their marks to be $0,
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`and found Defendants profits from franchising activities in California, Arizona,
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`Nevada, Oregon, and Washington that are attributable to the infringement to be
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`$112,500. (Id.) The second phase of the trial, on Defendants’ affirmative
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`Case 2:08-cv-04310-CBM-PLA Document 477 Filed 09/28/11 Page 4 of 9 Page ID #:9980
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`defenses, was held as a bench trial.
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`II. Defendants’ Unclean Hands and Trademark Misuse Defense
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`Defendants contend that Plaintiff is barred from obtaining relief because
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`Plaintiff acted with unclean hands and/or trademark misuse. Defendants asserted
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`unclean hands and trademark misuse as two independent affirmative defenses, but
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`state the same set of facts to support both defenses. When a party relies on the
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`same allegations to support both of these defenses, it is proper for a court to
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`address the defenses together. See, e.g., KEMA, Inc. v. Koperwhats, 658 F. Supp.
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`2d 1022, 1035-36 (N.D. Cal. 2009) (Chesney, J.) (striking affirmative defense of
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`trademark misuse because it relied on the same allegations as the separately-
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`pleaded defense of unclean hands and was therefore duplicative); see also Levi
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`Strauss & Co. v. Abercrombie & Fitch Trading Co., No. C07-03752, 2008 WL
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`4614660, at *31 (N.D. Cal. Oct. 16, 2008 (White, J.) (granting summary judgment
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`as to affirmative defenses of unclean hands and trademark misuse because they
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`rested on the same facts); see also Adidas Am., Inc. v. Payless Shoesource, Inc.,
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`546 F. Supp. 2d 1029, 1078 n.16 (D. Or. 2008) (King, J.) (noting that the
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`defendant’s unclean hands and trademark misuse/antirust affirmative defenses
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`relied on the same facts and arguments).
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`“Unclean hands is a defense to a Lanham Act infringement suit.”
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`Perfumebay.com Inc. v. eBay, Inc., 506 F.3d 1165, 1177 (9th Cir. 2007) (citations
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`omitted). “To make out an unclean hands defense, a trademark defendant ‘must
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`demonstrate that the plaintiff’s conduct is inequitable and that the conduct relates
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`to the subject matter of its claims.’” Japan Telecom, Inc. v. Japan Telecom Am.
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`Inc., 287 F.3d 866, 870 (9th Cir. 2002) (quotation omitted). “To show that a
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`trademark plaintiff’s conduct is inequitable, a defendant must show that plaintiff
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`used the trademark to deceive consumers.” Id. “Bad intent is the essence of the
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`defense of unclean hands.” Perfumebay.com Inc., 506 F.3d at 1177.
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`Case 2:08-cv-04310-CBM-PLA Document 477 Filed 09/28/11 Page 5 of 9 Page ID #:9981
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`In support of their argument, Defendants contend that Plaintiff: (1)
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`submitted various affidavits by Parlet indicating that he was not aware of any
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`other party that had the right to use a mark that was likely to cause confusion with
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`the John’s Marks, when Parlet had already sent a letter to Barsness and one of
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`IPC’s franchisees, alleging that the use of the IPC Mark was infringing on
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`Plaintiff’s rights in its marks (Defendants’ Proposed Findings of Fact and
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`Conclusions of Law at ¶¶ 25, 28); (2) Plaintiff filed with the Trademark Trial and
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`Appeal Board (“TTAB”) a petition to cancel the IPC Mark federal registration,
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`and during this proceeding created and backdated a series of agreements in an
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`effort to establish ownership of, priority in, and control over the John’s Marks;
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`(Id. at ¶¶ 29-31); (3) Plaintiff took inconsistent positions during the TTAB
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`proceedings (Id. at ¶¶ 32-33); and (4) Plaintiff had its counsel send demand letters
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`to various entities alleging that those entities were infringing on Plaintiff’s
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`trademark rights, knowing that they did not infringe (Id. at ¶¶ 37-42). Plaintiffs
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`argue first that the jury’s finding of “intentional infringement” bars Defendants
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`from presenting its equitable defense and second that there is no evidence of bad
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`faith that would support an affirmative defense of unclean hands or trademark
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`misuse.
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`A finding of intentional infringement can bar the equitable defense of
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`unclean hands, but such a bar is not automatic. See Danjac LLC v. Sony Corp.,
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`263 F.3d 942, 957 (9th Cir. 2001) (holding that defendant could not assert defense
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`due to its conduct being willful), Lahoti v. Vericheck, 708 F. Supp. 2d 1150, 1169
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`(W.D. Wash. 2010) (considering affirmative defense of unclean hands after
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`finding intentional trademark infringement), aff’d by Lahoti v. Vericheck, Inc., 636
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`F.3d 501 (9th Cir. 2011). If Defendants can show that Plaintiff acted in bad faith,
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`Plaintiff should not be able to evade the consequences of its own (alleged)
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`misconduct simply because Defendants also engaged in misconduct. See
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`Case 2:08-cv-04310-CBM-PLA Document 477 Filed 09/28/11 Page 6 of 9 Page ID #:9982
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`Magnesystems, Inc. v. Nikken, Inc., 933 F. Supp. 944, 953 (C.D. Cal. 1996)
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`(Collins, J.) (dismissing the defendants’ argument that the plaintiff had no right to
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`bring a claim against the defendant where the plaintiff infringed upon the
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`defendants’ patents because “[o]ne trespass does not cancel the other. Both
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`trespasses can be remedied.”).
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`However, Defendants have not established that Plaintiff’s conduct rises to
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`the level of unclean hands or trademark misuse. Defendants presented evidence of
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`letters sent before 2008 by Parlet to IPC and its franchises claiming infringement
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`and demand letters Plaintiff’s counsel sent to other entities arguing that those
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`entities were infringing on Plaintiff’s trademark rights, while later admitting that
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`there was no infringement before 2008. Defendants also presented evidence that
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`Plaintiff submitted agreements to the TTAB containing dates that inaccurately
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`state when the John’s Marks were first used, and argued that Plaintiff took
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`inconsistent positions during the TTAB proceedings. The Court finds that
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`Plaintiff’s conduct does not constitute unclean hands and/or trademark misuse, as
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`Defendants present no evidence that Plaintiff’s conduct was carried out with bad
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`intent to deceive consumers. Finally, the Court finds that the evidence considered
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`cumulatively still does not show that Plaintiff’s actions were made in bad faith
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`with the intent to deceive consumers.
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`In summary, the record does not establish that Plaintiff’s conduct in relation
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`to the claims included in this suit constitutes unclean hands and/or trademark
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`misuse. Because the evidence is insufficient to establish these affirmative
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`defenses, Plaintiff is not barred from obtaining relief in this case pursuant to the
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`jury’s verdict.
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`III.
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`Injunctive Relief
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`Under the Lanham Act, a court may grant an injunction to prevent the
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`violation of the trademark holder’s rights. 15 U.S.C.A. §§ 116(a), 117 (West).
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`Case 2:08-cv-04310-CBM-PLA Document 477 Filed 09/28/11 Page 7 of 9 Page ID #:9983
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`The Lanham Act “confers a wide scope of discretion upon the district judge in the
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`fashioning of a remedy for a violation of the Act.” Maier Brewing co. v.
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`Fleischmann Distilling Corp., 390 F.2d 117, 121 (9th Cir. 1968). A trademark
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`plaintiff seeking a permanent injunction must demonstrate that: (1) it has suffered
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`an irreparable injury; (2) remedies available at law are inadequate to compensate
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`for that injury; (3) considering the balance of hardships, a remedy in equity is
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`warranted; and (4) that the public interest would not be disserved by a permanent
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`injunction. Reno Air Racing Ass’n. v. McCord, 452 F.3d 1126, 1137-38 (9th Cir.
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`2006).
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`Plaintiff argues that irreparable harm may be presumed as a result of
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`trademark infringement, citing Marlyn Nutraceuticals, Inc. v. Mucos Pharma
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`GmbH & Co., 571 F.3d 873, 877 (9th Cir. 2009). The Ninth Circuit has recently
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`clarified that there is no presumption of irreparable harm stemming from a finding
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`of infringement. Flexible Lifeline Sys., Inc. v. Precision Lift, Inc., No. 10-35987, -
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`-- F.3d. ---, 2011 WL 3659315 (9th Cir. Aug. 22, 2011). Thus, Plaintiff “must
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`demonstrate a likelihood of irreparable harm in order to obtain injunctive relief.”
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`Id. at *10.
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`Plaintiff argues that even absent a presumption of irreparable harm, it has
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`shown irreparable injury, because the jury found that Defendants infringed on
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`Plaintiff’s trademark rights in California, Arizona, Nevada, Oregon, and
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`Washington. However, Plaintiff relies on the jury’s finding, but as the Ninth
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`Circuit held in Flexible Lifeline Systems, a finding of infringement, by itself, is
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`insufficient to establish irreparable harm. Furthermore, the jury found the amount
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`of prospective corrective advertising required to offset any injury to Plaintiff’s
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`marks or damage as a result of the likelihood of confusion created by Defendants’
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`use of their marks to be $0. “[I]njunctive relief [i]s an extraordinary remedy that
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`may only be awarded upon a clear showing that the plaintiff is entitled to such
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`7
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`relief.” Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7 (2008). The Court
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`finds that Plaintiff has not met its burden of clearly showing that it is entitled to
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`injunctive relief.
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`IV. Trademark Cancellation
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`Plaintiff seeks an order canceling Defendants’ trademarks. 15 U.S.C. §
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`1119 allows district courts to resolve registration disputes when joined with an
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`infringement claim. Section 2(d) of the Lanham Act bars registration of a mark
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`that “consists of or comprises a mark which so resembles . . . a mark or trade name
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`previously used in the United States by another and not abandoned, as to be likely,
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`when used on or in connection with the goods of the applicant, to cause confusion,
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`or to cause mistake, or to deceive . . . .” 15 U.S.C. § 1052(d).
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`In order to establish a claim for cancellation, the party seeking cancellation
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`must prove that (1) there is a valid ground why the trademark should not continue
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`to be registered; and (2) that it has standing. Star-Kist Foods, Inc. v. P.J. Rhodes
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`& Co., 735 F.2d 346, 348 (9th Cir. 1984). Here, the jury’s verdict only reflects a
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`likelihood of confusion in certain states. Furthermore, Plaintiff conceded that it
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`had no claim for infringement until 2008, while Defendants’ federal registration
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`was issued in 2001. The Court therefore finds that Plaintiff has not established a
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`valid ground for cancellation of the trademark, and the request for trademark
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`cancellation is denied.5
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`V. Attorneys’ Fees
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`The Lanham Act allows an award of attorneys’ fees to the prevailing party
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`in “exceptional cases.” 15 U.S.C.A. § 1117(a) (West). Exceptional cases are
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`cases in which the infringing party acted maliciously, fraudulently, deliberately or
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`willfully. Gracie v. Gracie, 217 F.3d 1060, 1068 (9th Cir. 2000). However, a
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`5 The Court also notes 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.
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`Case 2:08-cv-04310-CBM-PLA Document 477 Filed 09/28/11 Page 9 of 9 Page ID #:9985
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`finding that a party intentionally infringed does not necessarily lead to the
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`conclusion that a case is exceptional. Watec Co., Ltd. v Liu, 403 F.3d 645, 656
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`(9th Cir. 2005). Furthermore, even when a case is “exceptional” the determination
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`of whether to grant attorneys’ fees is within the court’s discretion. Gracie, 217
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`F.3d at 1071. Plaintiffs point to the jury’s finding of willful infringement as
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`support for its request. The Court finds that, without more, the jury’s finding is
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`insufficient to qualify this case as an “exceptional case.”6
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`IT IS SO ORDERED.
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`DATED: September 28, 2011
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`By
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`CONSUELO B. MARSHALL
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`UNITED STATES DISTRICT JUDGE
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`6 It appears to the Court that Defendants have abandoned their request for attorneys’ fees. In any case, even if the
`request is not abandoned, Defendants are not entitled to attorneys’ fees as they are not the prevailing party in this
`case.
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`9