Federal Circuit Affirms Rejection of Character Mark Citing Prior Use and Likelihood of Confusion

In Araujo v. Framboise Holdings Inc., 99 F.4th 1377 (Fed. Cir. 2024), the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (“TTAB”) decision sustaining Framboise's opposition and refusing registration of Araujo's standard character mark #TODECACHO.

Araujo filed a trademark application to register #TODECACHO for hair combs. Framboise opposed Araujo’s registration, alleging ownership of a #TODECACHO design mark based on its prior use of the mark for hair products. On the last day of the 30-day trial period in which Framboise could submit its case to the TTAB, Framboise moved to extend the trial period by seven days, which the TTAB granted. Framboise argued that its prior use began over two years before Araujo's application, principally relying on a declaration from Framboise’s director. The TTAB found that the declaration alone was sufficient to prove prior use and refused Araujo’s registration because there would be a likelihood of confusion between the two marks. Araujo appealed.

The Federal Circuit affirmed, determining that the TTAB did not abuse its discretion by granting Framboise's motion to extend the trial period because the TTAB applied the correct good cause standard and there was no evidence that Framboise had exercised bad faith. The Federal Circuit also determined that the TTAB's finding that Framboise established prior use of the design mark was supported by substantial evidence, as the declaration from Framboise’s director was based on his personal knowledge and included more than general assertions of prior use.