Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Araujo v. Framboise Holdings Inc., No. 2023-1142 (April 30, 2024), affirming the Trademark Trial and Appeal Board’s refusal to register Araujo’s standard character mark #TODECACHO.
On December 3, 2019, Araujo filed a trademark application to register #TODECACHO as a standard character mark for hair combs. Framboise Holdings, Inc. filed an opposition asserting that Araujo’s mark would likely cause confusion with Framboise’s #TODECACHO design mark. Framboise alleged ownership of its design mark based on prior use of the mark in the United States in connection with various hair products beginning as early as March 24, 2017. Relying on a declaration from the Director of Framboise, the Board held that Framboise had met its burden to establish prior use by a preponderance of the evidence and that the declaration alone was sufficient to prove prior use because it was clear, convincing, and uncontradicted. Finding an earlier priority date for Framboise, the Board found a likelihood of confusion between the two marks, sustained the opposition, and refused registration of Araujo’s mark.
The Federal Circuit affirmed. On appeal, Araujo argued the Board’s finding that Framboise established prior use of the #TODECACHO design mark was not supported by substantial evidence because the Board relied on the testimony of a single interested witness whose declaration comprised merely naked general assertions of prior use. The Court disagreed, holding the Board’s determination that Framboise established its prior use of the #TODECACHO design mark was supported by substantial evidence. The declaration at issue was based on an individual’s personal knowledge and the records maintained by Framboise, provided a list of products and a specific date the design mark was used in connection therewith, and provided representative examples of the mark as displayed on products in stores in the United States. Araujo did not offer any evidence to dispute Framboise’s prior use and declined to depose the Framboise director. The Court concluded that when presented with the employee declaration and nothing to contradict it, a reasonable mind could conclude that Framboise had established its priority date by a preponderance of the evidence.
