7 June 2024FeaturesTrademarksWillie Stroever

Hair comb case shows power of single witness testimony

Challengers at the US Trademark Trial and Appeal Board should note the prior use arguments in a dispute over a Brazilian Portuguese colloquial phrase, says Willie Stroever.

The Araujo v Framboise Holdings decision highlights the need for parties to thoroughly vet the opposing party’s evidence and witnesses through the discovery process and, if necessary, through the trial process.

One of the key issues in this case, as in many trademark disputes before the Trademark Trial and Appeal Board (TTAB), was the question of priority. Framboise Holdings, the opposer in the case before the TTAB, had submitted a declaration from its director as proof of its priority date.

Araujo argued at both levels that the declaration did not constitute sufficient evidence of a priority date because it was submitted by a single interested witness and because the declaration was unaccompanied by any substantiating documentary evidence.

Araujo had further argued that there was not sufficient detail within the declaration itself to prove an earlier priority date.

Both the TTAB and then the Federal Circuit on appeal found that declaration provided sufficient proof to establish a priority date for the opposer.

The TTAB cited the traditional rule that “[t]estimony, even of a single witness, can suffice to prove priority if that testimony is ‘sufficiently probative’.” The board noted that the testimony was neither vague nor ambiguous, and specifically identified the claimed date of first use. The Federal Circuit, affirming the boarddecision, pointed out that Araujo had not offered any evidence to dispute the prior use and that Araujo had chosen not to depose Framboise Holdings’ declarant during the case even though it had the opportunity. The Federal Circuit noted that it was left with the declaration on one hand, and nothing to contradict it.

The decisions in the Araujo v Framboise Holdings case do not constitute new law, but they do highlight the importance of properly challenging the facts in a declaration.

Where one party submits a declaration in support of an issue, the challenging party relies on an “insufficient evidence” argument at its own risk. Instead, the challenging party should use all of its available discovery and trial options to uncover contradictory evidence.

In some cases this may start even before a declaration has been submitted, by means of a thorough set of discovery demands. While many parties seem to try a “light touch” with TTAB discovery, having the contradictory evidence in hand before a declaration is filed can expedite responsive arguments and also help identify where contradictions exist.

Depositions and live cross-examinations also provide an opportunity for the challenger of a declaration to explore and challenge the basis for a declaration. While the language of a declaration may be clear and concrete on its face, live questioning may reveal doubt or uncertainty or even guesswork that could call the probative value of a declaration into question.

The Federal Circuit’s comments about Araujo’s missed opportunity to depose the declarant are also noteworthy. During oral argument at the Federal Circuit, Araujo’s attorney confirmed that it had the opportunity to depose the declarant but that it was “our strategy … to defend against this by introducing our own documents”.

Unfortunately, both the TTAB and the Federal Circuit found that there were no documents in evidence that contradicted or rebutted the language in Framboise Holding’s declaration.

Moreover, these comments seem to suggest that the Federal Circuit views missed opportunities like this as a negative, ie, that having an opportunity to find contradictory evidence and not taking that opportunity might count against the challenger of a declaration.

If there is one takeaway from the decisions in Araujo v Framboise Holdings, it is that a single witness’ testimony does have the power to establish key facts in trademark disputes before the TTAB.

And that challenging parties should be diligent in trying to rebut or contradict that testimony rather than relying on an argument that the testimony is insufficiently detailed.

Willie Stroever is chair of the IP department at Cole Schotz.

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