Rapid Inc. v. Hungry Marketplace, Inc.

THIS OPINION IS A

PRECEDENT OF THE TTAB

Mailed: July 22, 2022

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

_____

Rapid Inc.

v.

Hungry Marketplace, Inc.

_____

Opposition No. 91236033

_____

Jayson M. Lorenzo of J. Lorenzo Law for Rapid Inc.

James R. Menker of Holly & Menker PA for Hungry Marketplace, Inc.

_____

Before Wellington, Shaw and Lebow,

Administrative Trademark Judges.

Opinion by Lebow, Administrative Trademark Judge:

Applicant, Hungry Marketplace, Inc., seeks to register the mark HUNGRY (in

standard characters) on the Principal Register for the following goods and services:1

Downloadable software in the nature of a mobile application for

enabling users to solicit each other to perform a wide range of cooking

and meal preparation and delivery services between users;

Downloadable software in the nature of a mobile application for

1 Application Serial No. 87024660 (the “HUNGRY Application”) was filed on May 4, 2016,

under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation

of a bona fide intent to use the mark in commerce.

Opposition No. 91236033

engaging others to prepare meals via text messages, SMS messages,

telephone calls, in-app messages, emails and push notifications; Mobile

application software for enabling chefs to sell prepared meals for users;

Downloadable software in the nature of a mobile application for

enabling chefs to list and market to diners meals for sale and schedule

day and time of meal delivery; Downloadable software in the nature of

a mobile application for connecting chefs and home diners via text

messages, SMS messages, telephone calls, in-app messages, emails and

push notifications; Downloadable software in the nature of a mobile

application for automated ordering and delivery of home cooked meals

between users; Downloadable software in the nature of a mobile

application for allowing users to list and order home cooked meals and

other foodstuffs between users; Downloadable software in the nature of

a mobile application for providing evaluative feedback and ratings of the

cooking of other users, the value and prices of prepared meals, chef’s

performance, and overall experience in connection with home cooked

meals prepared by chefs (International Class 9); and

Providing temporary use of on-line non-downloadable software and

applications for enabling users to solicit each other to perform a wide

range of cooking and meal preparation and delivery services between

users; Providing temporary use of on-line non-downloadable software

and applications for connecting chefs and home diners via electronic

messages, SMS messages, text messages, telephone calls and email;

Providing temporary use of on-line non-downloadable software and

applications for automated ordering and delivery of home cooked meals

between users; Providing temporary use of on-line non-downloadable

software and applications for allowing users to list and order home

cooked meals and other foodstuffs; Providing temporary use of on-line

non-downloadable software and applications for engaging others to

prepare meals via electronic messages, SMS messages, text messages,

telephone calls and emails; Providing temporary use of on-line non-

downloadable software and applications for enabling chefs to sell

prepared meals for users; Providing temporary use of on-line non-

downloadable software and applications for providing evaluative

feedback and ratings of the cooking of other users, the value and prices

of prepared meals, chef's performance, and overall experience in

connection with home cooked meals prepared by chefs; Providing

temporary use of on-line non-downloadable software and applications

for enabling chefs to list and market to diners meals for sale and

schedule day and time of meal delivery (International Class 42).

Opposer, Rapid Inc., opposed registration on the ground that the mark HUNGRY,

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Opposition No. 91236033

when used in connection with the goods and services identified in the HUNGRY

Application, is likely to cause confusion under Section 2(d) of the Trademark Act, 15

U.S.C. § 1052(d), with Opposer’s previously used mark HUNGR for:

Computer software for ordering and managing food orders and for

coordinating same-day transportation and delivery services in the

nature of courier services and same day pick-up and delivery of goods in

local areas; computer software for providing information on available

same-day transportation and delivery services in the nature of courier

services; and

Providing temporary use of on-line non-downloadable software for

ordering and managing food orders, for coordinating same-day

transportation and delivery services in the nature of courier services and

same day pick-up and delivery of goods in local areas; Providing

temporary use of on-line non-downloadable computer software for

providing information on available same-day transportation and

delivery services in the nature of courier services.2

Opposer pleaded ownership of Application Serial No. 87070189 (“the ’189

Application”), filed on June 14, 2016, to register the mark HUNGR, in standard

characters, for the same goods and services noted above in International Classes 9

and 42, respectively.3 Opposer asserts that the examining attorney assigned to the

’189 Application “indicated that a prior-pending application, namely [the HUNGRY

Application] may present a bar to registration of [Opposer’s] mark under Section 2(d)

of the Trademark Act,” and suspended the ’189 Application “until [the earlier-filed

HUNGRY Application] is either registered or abandoned.”4

2 15 TTABVUE 11-13 (Amended Notice of Opposition, ¶¶ 1-2, 6-7).

Citations in this opinion to the briefs, the record, and other filings in the case refer to

TTABVUE, the Board’s online docketing system. Turdin v. Trilobite, Ltd., 109 USPQ2d 1473,

1476 n.6 (TTAB 2014).

3 Id. at 12 (¶ 2).

4 Id. (¶¶ 4-5). Opposer also “alleges in the alternative that – if the TTAB finds that Opposer’s

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Opposition No. 91236033

Applicant, in its answer, admitted that “the US PTO records show that

Application Serial No. 87070189 for the mark HUNGR was filed on June 14, 2016 by

Opposer”; that Applicant’s HUNGRY mark in the opposed application was cited by

the examining attorney as a potential refusal based on likelihood of confusion; and

that Opposer’s application was suspended “until [the opposed application] is either

registered or abandoned.”5

Both parties filed briefs.

I. The Record

The record includes the pleadings, the file of the HUNGRY Application by

operation of Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), and additional

evidence made of record by the parties:

Opposer introduced the testimony declaration of Aaron Mortensen, Opposer’s Vice

President and Chief Information Officer;6 the testimony declarations of Ahmed

mark is merely descriptive under Section 2(e)(1) [15 U.S.C. § 1052(e)] of the Trademark Act

as of Applicant’s filing date, and therefore that Opposer lacks priority – then the applied for

mark HUNGRY is merely descriptive of Applicant’s goods and services.” However, Applicant

does not contend that Opposer’s mark is merely descriptive (or lacks distinctiveness), nor

does the examining attorney who suspended Opposer’s mark in Opposer’s HUNGR

Application. We therefore dismiss Opposer’s conditioned alternative claim as a nullity. See,

e.g., Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1023 (TTAB 2009) (“Respondent has

not raised an issue as to the distinctiveness of petitioner’s mark or otherwise put petitioner

on notice of this defense, and therefore we find that the mark is distinctive.”) (citing Wet Seal

Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629, 1634 (TTAB 2007) (absent argument or evidence

from applicant, opposer’s mark deemed distinctive)); Chicago Corp. v. N. Am. Chicago Corp.,

20 USPQ2d 1715, 1717 n.5 (TTAB 1991) (rejecting applicant’s argument that opposer failed

to prove that its mark was distinctive where applicant failed to plead the issue or introduce

evidence of non-distinctiveness).

5 18 TTABVUE 3 (Applicant’s Amended Answer, ¶¶ 3-5).

6 24 TTABVUE (“Mortensen Decl.” and public exhibits, including exhibit 8A, which has

portions redacted); 23 TTABVUE (confidential exhibits 7 and 9-12 from the Mortensen Decl.).

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Opposition No. 91236033

Ihmud and David Lucchetti, both independent contractors who “mak[e] pick-ups from

restaurants and deliveries to [Opposer’s] HUNGR customers”;7 the testimony

declaration of Fardad Raouf, a restaurant owner whose restaurant is “listed on

[Opposer’s] HUNGR mobile app”;8 and the testimony declaration of Rosalie Delaney,

a customer who downloaded Opposer’s HUNGR mobile app and used it to place a

restaurant order.9 Opposer also filed a notice of reliance on Applicant’s response to

Opposer’s interrogatory No. 9, as well as printouts from the USPTO’s Trademark

Status & Document Retrieval (“TSDR”) database of the file history for Opposer’s

HUNGR Application.10

Applicant introduced the cross-examination testimony depositions of Opposer’s

witnesses listed above,11 as well as the testimony declarations of its own witnesses

including Jeff Grass, Opposer’s Chairman and Chief Executive Officer;12 Chris

Butler, the Office Manager at the Internet Archive;13 Troy Brackett, owner of the

website restaurantnews.com;14 and Jonathan Taylor, an employee of Opposer.15

7 22 TTABVUE 4-5 (“Ihmud Decl.”), 8-10 (“Lucchetti Decl.” and attached exhibit).

8 Id. at 13 -16 (“Raouf Decl.” and attached exhibits).

9 Id. at 19-20 (“Delaney Decl.”).

10 21 TTABVUE 6-9 (interrogatory response), 11-60 (file history).

11 59 TTABVUE 6-49 (“Ihmud Cross Dep.”), 51-90 (“Raouf Cross Test.”), 92-133 (“Delaney

Cross Dep.), 135-76 (“Lucchetti Cross Dep.”), 178-303 (“Mortensen Cross Dep.”). Immediately

following TTABVUE citations to this testimony are parentheticals indicating the specific

page(s) and line(s) in the relevant deposition transcript.

12 60 TTABVUE 2-9 (“Grass Decl.”), 10-118 (exhibits).

13 61 TTABVUE 4-6 (“Butler Decl.”), 7-19 (exhibits).

14 62 TTABVUE 4-6 (“Brackett Decl.”), 7-70 (exhibits).

15 67 TTABVUE 4-9 (“Taylor Decl.”), 10-74 (exhibits).

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Opposition No. 91236033

Applicant also filed notices of reliance on printouts from various third-party websites,

including an article from restaurantnews.com;16 search results from California

Secretary of State’s business database;17 WHOIS records for Opposer’s myhungr.com

domain name;18 pages from Opposer’s social media pages and those of third-party

entities purportedly related to Opposer, as well as those of Opposer’s witnesses Mr.

Mortensen and Mr. Lucchetti, and also Rebekah Mortenson, Mr. Mortensen’s wife

and CEO of Opposer;19 pages from the website of the San Diego Superior Court

pertaining to a lawsuit “in which the Mortensen were parties….”;20 TSDR printouts

of other applications owned by Opposer;21 TSDR printouts of various third-party

applications and registrations;22 printouts from the websites of several third-parties

companies that use the term “hungry”;23 and printouts from the Google Play app store

and a third-party website.24

II. Opposer’s Motions to Strike

In its trial brief, Opposer renewed its previously filed motions to strike all or

portions of what it argues is the “undisclosed expert testimony” of Applicant’s

16 63 TTABVUE 7-9 (Opposer’s First Notice of Reliance, Exhibit 1).

17 Id. at 10-85 (Exhibits 2-9).

18 Id. at 88-91 (Exhibit 11).

19 Id. at 86-87 (Exhibit 10), 92 (Exhibits 12); 64 TTABVUE (Exhibits 13-15); 65 TTABVUE

49-57 (Exhibits 16-20).

20 65 TTABVUE 37-48 (Exhibit 25).

21 66 TTABVUE 5-298 (Applicant’s Second Notice of Reliance, Exhibits A-C, D-1 and D-2).

22 68 TTABVUE 7-50 (Applicant’s Third Notice of Reliance, Exhibits 1-11).

23 Id. at 51-65 (Exhibits 12-15).

24 Id. at 66-12- (Exhibit 16-30).

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Opposition No. 91236033

witnesses Jonathan Taylor (a “Full Stack & Mobile Developer” employed by

Applicant) and Jeff Grass (Opposer’s Chairman and CEO).25 The Board deferred

ruling on the motions until final decision.26 We rule on them now.

In its motions to strike, Opposer asserts that although “Applicant’s expert

disclosures were due on February 4, 2019,” “no expert disclosures were ever served

on Opposer’s counsel.”27 Opposer contends that “Mr. Taylor’s entire declaration is

argument and purported expert opinion regarding the declaration of [Opposer’s

witness,] Mr. Mortensen,” and “not on the basis of personal knowledge of or on-the-

scene involvement in any sequence of events that gave rise to the instant Board

proceeding.”28 With respect to Mr. Grass, Opposer asserts that apart from “9

[paragraphs in his declaration that] directly relate to Applicant’s business and use of

the mark,” “[a]ll other paragraphs are Mr. Grass opining directly on either legal

conclusions or qualifying technical data of which he is not an expert, has not been

disclosed as an expert, and is not qualified to opine under guidance of Federal Rules

of Evidence 701 and 702.”29

Applicant does not dispute that no expert disclosures were served on Opposer, but

25 82 TTABVUE 33-34 (Opposer’s Brief); 76 TTABVUE (Opposer’s Motion to Strike Grass

Decl.); 80 TTABVUE (Opposer’s Motion to Strike Taylor Decl.).

26 81 TTABVUE 1-2 (Board Order of September 27, 2021).

27 71 TTABVUE 3, 72 TTABVUE 2 (Motions to Strike). Trademark Rule 2.120(a)(2)(iii), 37

C.F.R. § 2.120(a)(2)(iii) provides for disclosure of expert testimony in the manner and

sequence provided in Fed. R. Civ. P. 26(a)(2), unless alternative directions have been provided

by the Board.

28 71 TTABVUE 5 (Motion to Strike Taylor Decl.).

29 72 TTABVUE 5 (Motion to Strike Grass Decl.).

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Opposition No. 91236033

denies that the witnesses are “untimely-disclosed expert witnesses.”30 With respect

to Mr. Taylor, Applicant argues that:

Opposer now seeks to elevate Mr. Taylor to the level of an untimely-

disclosed expert witness despite the fact that Mr. Taylor is merely

offering facts that are no different from the facts offered by Mr.

Mortensen in his declaration. One need not be an expert witness to

provide facts based on his own experience and contemporaneous review

of various documents, especially when those facts are based on one’s own

review of publicly-available documents (such as documents from the

Apple App Store and Google Play Store). Nor does Mr. Taylor have to

ever been employed by or involved with Opposer to state when he

believes Mr. Mortensen’s statements about various documents are

incorrect and/or misleading.31

With respect to Mr. Grass, Applicant argues that:

Opposer now seeks to seize on two of the general subjects attributed to

Mr. Grass [in Opposer’s pretrial disclosures] to elevate him to the status

of an untimely-disclosed expert witness whose testimony should now be

stricken. There are numerous problems with this novel analysis.

First, simply because Applicant may have used language in its “general

summary or list of subjects” for Mr. Grass that might also apply to the

testimony of an expert does not automatically make Mr. Grass an

expert. … Importantly, nowhere in its Motion does Opposer state that it

was “surprised” to receive the information in Mr. Grass’s declaration,

which is one of the purposes of Rule 26 in the first place.

Second, testimony about the “relative weakness of Opposer’s HUNGR

mark” does not require the opinion of an expert. …

Third, even if one could deliberately misinterpret the generalized

language in a party’s Rule 26 disclosures as Opposer suggests, and even

if the relative weakness of a party’s mark required the testimony of an

expert as Opposer also suggests, there is no evidence or argument that

Mr. Grass intended to or did introduce such testimony in his

declaration.32

30 76 TTABVUE 4, 80 TTABVUE 4 (Applicant’s Oppositions to Opposer’s Motions to Strike).

31 80 TTABVUE 4 (Applicant’s Opposition to Opposer’s Motion to Strike Taylor Decl.).

32 76 TTABVUE 4-5 (Applicant’s Opposition to Opposer’s Motion to Strike Grass Decl.).

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Opposition No. 91236033

Because Applicant concedes that Messrs. Taylor and Grass are not expert

witnesses, we must determine whether their objected-to testimony is proper. Rule

701 of the Federal Rules of Evidence provides that lay opinion testimony is permitted

only if it is “(a) rationally based on the witness’s perception; (b) helpful to clearly

understanding the witness’s testimony or to determining a fact in issue; and (c) not

based on scientific, technical, or other specialized knowledge within the

scope of Rule 702” (emphasis added). Cf. Fed. R. Evid. Rule 701 (“witness who is

qualified as an expert by knowledge, skill, experience, training, or education may

testify in the form of an opinion . . .”).

However, the advisory committee notes accompanying the amendment that

added Rule 701(c) made clear that “particularized knowledge that the witness has by

virtue of his or her position in the business” is not “scientific, technical, or other

specialized knowledge,” even if it involves knowledge that the average person would

have to consult an expert about, like the “value or projected profits of a business” or

that a substance “appeared to be a narcotic.” Fed. R. Evid. 701, advisory committee’s

note to 2000 amendment.” See also Union Pac. Res. Co. v. Chesapeake Energy Corp.,

236 F.3d 684, 57 USPQ2d 1293, 1298 (Fed. Cir. 2001) (applying Fifth Circuit law and

allowing lay opinion testimony regarding patent enablement based upon witnesses’

own personal experience in oil drilling industry); cf. Kohler Co. v. Honda Giken Kogyo

K.K., 125 USPQ2d 1468, 1484 (TTAB 2017) (allowing and considering certain lay

opinion testimony based upon the experience and knowledge acquired by the witness

as an engineer, familiarity with plaintiff’s goods, the marketplace in which they

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Opposition No. 91236033

compete, and their manner of use, but declining to consider other testimony that

“le[ft] the realm of informed lay opinion.”).

We have carefully reviewed the declaration testimony of Messrs. Taylor and Grass

and find that, for the most part, their testimony is rationally based on their

perceptions, helpful to our understanding of their testimony and other facts at issue,

and not based on scientific, technical, or other specialized knowledge, but rather, on

the particularized knowledge the witnesses have through experience in their

respective fields and working with Opposer. To the extent that their respective

testimony departs from “the realm of informed lay opinion,” and is relevant to the

facts at issue, we will point it out and note that it cannot be relied on in the manner

sought. See Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *11-12 (TTAB

2020) (“Because a cancellation proceeding is akin to a bench trial, the Board is capable

of assessing the proper evidentiary weight to be accorded the testimony and evidence,

taking into account the imperfections surrounding the admissibility of such

testimony and evidence.”); Hunt Control Sys. Inc. v. Koninklijke Philips Elecs. N.V.,

98 USPQ2d 1558, 1564 (TTAB 2011). Therefore, while we keep Opposer’s objections

in mind as we review the evidence in this case, we need not strike the testimony of

these witnesses.

III. Entitlement to a Statutory Cause of Action

An opposer’s entitlement to invoke a statutory cause of action to oppose the

registration of a mark is a necessary element in every opposition proceeding.

Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *6-7 (Fed. Cir.

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Opposition No. 91236033

2020), cert. denied, 141 S. Ct. 2671, 210 L. Ed. 2d 833 (2021); Australian Therapeutic

Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed.

Cir. 2020), cert. denied, 142 S. Ct. 82, 211 L. Ed. 2d 16 (2021) (citing Lexmark Int’l,

Inc. v. Static Control Components, Inc., 572 U.S. 118, 134 S. Ct. 1377, 188 L. Ed. 2d

392, 109 USPQ2d 2061, 2067 n.4 (2014)). An opposer may seek to oppose the

registration of a mark if its claim falls within the zone of interests protected by

Section 13 of the Lanham Act, 15 U.S.C. § 1063, and the opposer has a reasonable

belief in damage that is proximately caused by registration of such mark.

Spanishtown Enters., Inc. v. Transcend Res., Inc., 2020 USPQ2d 11388, at *1 (TTAB

2020)).

As noted above, Applicant admitted in its answer to the notice of opposition that

Opposer’s pleaded application to register the mark HUNGR was suspended pending

disposition of the subject application, which was cited as a potential bar.33 Opposer

also introduced printouts of the file history for its suspended application from the

USPTO’s TSDR database, including a copy of the suspension notice that issued.34

This is sufficient to establish Opposer’s entitlement to bring this opposition. See

Performance Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1039-40

(TTAB 2018) (opposer’s entitlement established through applicant’s concessions and

admissions that opposer’s pending application would be refused registration should

applicant’s application register); Saddlesprings Inc. v Mad Croc Brands Inc., 104

33 18 TTABVUE 3 (Applicant’s Amended Answer, ¶¶ 3-5).

34 21 TTABVUE 10-60 (Opposer’s Notice of Reliance, Exhibit 2).

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Opposition No. 91236033

USPQ2d 1948, 1950 (TTAB 2012) (same); Weatherford/Lamb Inc. v. C&J Energy

Servs. Inc., 96 USPQ2d 1834, 1837 (TTAB 2010) (Office action suspending plaintiff’s

pending application pending possible refusal based on alleged likelihood of confusion

with defendant’s registration made of record).

IV. Priority

Section 2(d) of the Trademark Act permits opposition based on ownership of “a

mark or trade name previously used in the United States . . . and not abandoned.”

“[T]he decision as to priority is made in accordance with the preponderance of the

evidence.” DeVivo v. Ortiz, 2020 USPQ2d 10153, *3 (TTAB 2020) (quoting Hydro-

Dynamics, Inc. v. George Putnam & Co., Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773

(Fed. Cir. 1987); see also Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d

1825, 1834 (TTAB 2013). (“[O]pposer must prove by a preponderance of the evidence

that its common law rights were acquired before any date upon which applicant may

rely.”). In this case, Opposer’s allegation of priority, and evidence submitted in

support thereof, is heavily contested by Applicant.

Applicant, for its part, asserts that it “established that it began using its

HUNGRY mark publicly on December 15, 2015,” pointing to the testimony of Jeff

Grass, its Chairman and CEO,35 who testified in his declaration that (i) Applicant’s

website, which featured its HUNGRY mark, went live on that date and invited

visitors to “[c]hoose from over 2,500 home-cooked meals served by 200+ local chefs in

the DC Metropolitan area”; and (ii) its Facebook and Twitter profiles were also

35 83 TTABVUE 14 (Applicant’s Brief).

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Opposition No. 91236033

created on that date.36 To be considered “use in commerce,” however, Applicant’s

services must have actually been rendered. See 15 U.S.C. § 1127 (definition of “use in

commerce”); see also Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d

1301, 1305 (Fed. Cir. 2009). Here, the record is silent as to Applicant’s actual use.

Nevertheless, Applicant may rely on the May 4, 2016 filing date of the HUNGRY

Application as its constructive date of first use. See e.g., Syngenta Crop Prot. Inc. v.

Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009) (“[A]pplicant may rely without

further proof upon the filing date of its application as a ‘constructive use’ date for

purposes of priority”); Levi Strauss & Co. v. R. Josephs Sportswear, Inc., 36 USPQ2d

1328, 1332 (TTAB 1994) (an application filing date for a use-based application can

establish first use of a mark); Trademark Act Section 7(c), 15 U.S.C. § 1057(c).

Opposer, on the other hand, asserts that it “has used its mark HUNGR in

commerce in connection with the downloadable software and on-line downloadable

software that allows users to order and arrange for the delivery of meals” “since

2012.”37 As support for this contention, Opposer relies on the testimony of its Vice

President and CIO, Aaron Mortensen, the evidence introduced as exhibits to his

testimony declaration, and the purported corroboration provided by several other

witnesses, which we discuss below.

It is Opposer’s burden to prove by a preponderance of the evidence that it acquired

its common law rights before Applicant’s May 4, 2016 constructive use priority date.

36 60 TTABVUE 5 (Grass Decl., ¶¶ 5-6), 10-19 (Exhibits).

37 82 TTABVUE 23 (Opposer’s Brief).

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Opposition No. 91236033

See Hydro-Dynamics, 1 USPQ2d at 1773. “[O]ne should look at the evidence as a

whole, as if each piece of evidence were part of a puzzle which, when fitted together,

establishes prior use.” W. Fla. Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 31 USPQ2d

1660, 1663 (Fed. Cir. 1994), quoted in Daniel J. Quirk, Inc. v. Vill. Car Co., 120

USPQ2d 1146, 1150 (TTAB 2016).

A. Testimony of Aaron Mortensen

According to Mr. Mortensen, “[w]e have operated a meal ordering and delivery

service under the name HUNGR since 2012” and that “[o]riginally, the HUNGR

business was created under a company called CENTIX Systems, a California

corporation,” which “merged into a new company called Orbit Brewing, Inc. d/b/a

Fluid 5, also a California corporation,” which “merged into [Opposer] when [it] was

incorporated in California in November 2014.”38 Opposer thus seeks to rely on prior

use of the mark HUNGR purportedly made by its predecessor companies.39 In any

event, Opposer may rely on its own use of the mark to the extent it precedes

Applicant’s constructive priority date of May 4, 2016.

We turn now to the specific actions Opposer relies on, via the testimony of Mr.

Mortensen and other witnesses, to establish its priority.

38 24 TTABVUE 5 (Mortensen Decl., ¶ 3).

39 Applicant, during its testimony period, introduced evidence consisting of printouts from

the California Secretary of State’s business search database showing the absence of any

listing of the three companies noted above, including Opposer, 63 TTABVUE 10-85

(Applicant’s First Notice of Reliance, Exhibits 2-9). However, Applicant did not mention this

evidence in its brief.

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1. Opposer’s Downloadable Meal Ordering and Delivery

Software and Web-based Ordering Interface.

Although “the core services or goods” provided by Centix, the company under

which Opposer’s asserted “HUNGR business was created,” was “hospitality

management software,”40 Mr. Mortensen testified that Centix “made the original

software and logistics program for the HUNGR program,” and that he “built the

software and websites and still ha[s] an active role in their maintenance.”41 He

further testified that “we have used the mark HUNGR as the name of our meal

ordering and delivery software since 2012 when the HUNGR software program was

first made available on the Internet by way of web-based ordering interface and also

by way of downloaded, locally-operated software run on personal computers.”42

According to Mr. Mortensen, “[t]he mark HUNGR has continuously appeared

prominently at the top of our website home page since our first website went live in

2012.”43

To corroborate this testimony, Mr. Mortensen provided a screenshot of what he

claims was the “first version of the HUNGR website.” We reproduce it below, along

with enlarged excerpts of the URL and date/time shown at the bottom on the page:44

40 59 TTABVUE 215 (Mortensen Cross Dep., p. 38:11-17).

41 24 TTABVUE 5 (Mortensen Decl., ¶ 3).

42 Id. at 7 (¶ 6).

43 Id.

44 Id. at 18 (Exhibit 1).

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Opposition No. 91236033

(enlarged excerpts of screenshot)

As Applicant notes, the above screenshot “is the only evidence Opposer proffers to

substantiate [its] claim of use since 2012,” and Opposer does not “offer any other

contemporary evidence that would corroborate that this website was available to the

public; promoted by Opposer; ever used by the public to download software (assuming

this was even possible); or actually used by the public to order meals. Indeed, there

is no contemporary evidence that would corroborate that Opposer was rendering or

even could render any services through the website.”45 “Opposer also provides no

information about its alleged downloadable software or any screenshots of any other

web pages related to this web page, much less any later dated screenshots of this web

page.”46

45 83 TTABVUE 23-24 (Applicant’s Brief).

46 Id.

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Opposition No. 91236033

Applicant also provided the testimony of Chris Butler, the Office Manager at the

Internet Archive,47 who testified that:

A web browser may be set such that a printout from it will display the

URL of a web page in the printout’s footer. The date indicated by an

extended URL applies to a preserved instance of a file for a given URL,

but not necessarily to any other files linked therein. Thus, in the case of

a page constituted by a primary HTML file and other separate files (e.g.,

files with images, audio, multimedia, design elements, or other

embedded content) linked within that primary HTML file, the primary

HTML file and the other files will each have their own respective

extended URLs and may not have been archived on the same dates.48

Based on the foregoing, Applicant concludes that “[i]n light of Opposer’s history of

doctoring documents, it is not even clear that the URL and time and date stamp are

not typed as part of the screen shot or are an actual date and time stamp.”49

Applicant’s reference to Opposer’s purported history of doctoring documents relates

to other evidence presented by Opposer in this case, which we will discuss later in

this opinion.

While the use of “/client_design/” in the purported URL seems to suggest that it is

a template for the page, we cannot conclude, definitively, that it is. Furthermore, in

the absence of evidence related to promotion of that URL, or one that resolves to it, it

is unclear how consumers would find the site without first knowing that the mark

existed, or why they would be inclined to enter a zip code into the space provided. In

any event, there is no direct evidence proving that the screenshot in question has

47 61 TTABVUE 1 (Butler Decl., ¶ 2).

48 Id. at 5 (¶ 6).

49 83 TTABVUE 24 (Applicant’s Brief).

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been “doctored.” Suffice to say that it has minimal, if any, probative value with

respect to showing Opposer’s use of the mark HUNGR in connection with any

particular goods or services as of 2012. While the screenshot displays the mark

HUNGR and shows a table set with food and wine in the background, it does not

advertise any goods or services; it simply invites potential users to enter a zip code,

which does not suffice to show use of the mark in connection with any goods or

services.

Mr. Mortensen’s testimony that Opposer “used the mark HUNGR as the name of

[its] meal ordering and delivery software since 2012 … by way of downloaded, locally-

operated software run on personal computers”50 also has minimal probative value in

the absence of any corroborating evidence pertaining to that software, its availability

to consumers, and whether it was actually used by any such consumers. Mr.

Mortensen asserted that “[d]ue to changes in our computer systems over the years,

we are unable to provide some of the early data for the HUNGR program.”51 Opposer

provided no data whatsoever for its downloadable software that was purportedly

available during that time period.

2. 2012 Promotional Flyer

Mr. Mortensen testified that “[t]he mark HUNGR also has appeared prominently

on promotional materials for our HUNGR software since 2012. For example, Exhibit

2 is a flyer that we distributed in 2012 to promote our HUNGR software to potential

50 24 TTABVUE 7 (Mortensen Decl., ¶ 6).

51 Id. at 5 (¶ 2).

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Opposition No. 91236033

restaurant partners.”52 An excerpt of the flyer is shown below:

The flyer, however, has two components that appear questionable within the

context of Mr. Mortensen’s testimony. First, as shown at the top of the page, the mark

is displayed as “hungr by RAPID,” but according to Mr. Mortensen’s own testimony,

Rapid (Opposer) was not formed until November 2014,53 and there is no evidence of

record indicating that Rapid was used as a trade name prior to Opposer’s formation.

Second, as observed by Applicant’s CEO, Jeff Grass,54 and shown in the evidence he

provided, the particular Apple iPhone depicted in the photo of the flyer appears not

52 Id. at 7 (¶ 7).

53 24 TTABVUE 5 (Mortensen Decl., ¶ 3).

54 60 TTABVUE 8-9 (Grass Decl., ¶ 20).

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Opposition No. 91236033

to have existed until at least September 19, 2014.55 Mr. Grass provided Wikipedia

entries “for all iPhone models released by Apple between 2011 and 2017.”56 Each

details the features added for each version, and presents an image of each, as shown

in the below excerpts from those pages:

55 83 TTABVUE 24 (Applicant’s Brief).

56 60 TTABVUE 84-94 (Grass Decl., Exhibit L).

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Opposition No. 91236033

//

//

//

//

//

//

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Opposition No. 91236033

As depicted in these excerpts, the iPhone 6, which the associated article indicates

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Opposition No. 91236033

was not released until September 19, 2014,57 appears to be the first iPhone version

to have a small sensor above the horizontal speaker hole at the top of the phone, 58 a

larger lens to the left of it, elongated buttons on the left and right sides of the phone,

and a subdued button at the bottom of the front of the phone, like the version shown

in Opposer’s flyer. In contrast, as shown in the photos, the first generation iPhone,

the 3G, 3GS, and 4 versions do not appear to have a hole above or to the left of the

speaker; the iPhone 4S appears to have horizontal hole above the speaker, as well as

a small hole to the left of it; the iPhone 5 and 5S appear to have no holes to the left of

the speaker; and all versions previous to iPhone 6 and 6S (which the article indicates

was not released until September 25, 2015)59 appear to have shorter or circular

buttons on the left side.

Although the content of the Wikipedia pages showing the various iPhone versions

discussed above is hearsay and cannot be taken for the truth of the matters therein,

the pages for the iPhone first generation, 3G, 3GS, 4, and 4S versions show, on their

face, iPhones that do not appear the same as the one depicted in Opposer’s flyer. In

contrast, the pages for the iPhone 6 and 6S show, on their face, iPhones that appear

more similar to the one depicted in Opposer’s flyer. Together, they contradict and are

inconsistent with Mr. Mortensen’s contention that the flyer he provided was

distributed in 2012 to potential restaurant partners to promote the HUNGR software.

57The release date is shown in the excerpt above, as well as the article content. See 60

TTABVUE 93.

58 The smaller hole on top is difficult to see due to the quality of webpage image, but can be

seen when it is enlarged.

59 60 TTABVUE 94 (Grass Decl., Exhibit L).

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Opposition No. 91236033

We note further that although Opposer filed a reply brief, Opposer did not dispute

Applicant’s contention, based on the content of the article, that “[t]his likely explains

why there is no evidence that any restaurants ever received a copy of this ‘flyer’ in

2012 (or any other time).”60

3. Purported Use of the mark HUNGR on Software, Including

Phone Apps

Mr. Mortensen testified that “our mark HUNGR has been displayed prominently

on the screen every time a user accesses our HUNGR software from 2012 to date, and

our HUNGR app from January 2015 to date.”61 In support of these contentions, he

provided what he purports are “two screenshots of the HUNGR trademark as it

appeared on smartphone apps during 2015.”62 We reproduce them below:

Mr. Mortensen also provided what he purports are “a screenshot taken on an

iPhone, showing the HUNGR icon as it appears on the screen of the iPhone,” and a

60 83 TTABVUE 24 (Applicant’s Brief).

61 24 TTABVUE 12 (Mortensen Decl., ¶ 24).

62 24 TTABVUE 12 (Mortensen Decl., ¶ 24), 164-66 (Exhibit 17).

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Opposition No. 91236033

“log-in page that appears after a user clicks on the icon,” which he testified “were

taken on December 12, 2017.”63 They are also reproduced below:

With respect to the first set of images shown above, which Mr. Mortensen asserts

show the mark “as it appeared on smartphone apps during 2015,”64 Applicant

observes that “Mr. Mortensen does not actually claim that these screenshots were

taken in 2015.”65 Opposer, in reply, asserts that “Mortensen’s language … clearly

communicates the screenshots were indeed taken in 2015.”66 We disagree that those

screenshots, themselves, communicate anything about the date on which they were

63 24 TTABVUE 12 (Mortensen Decl., ¶ 24), 167-70 (Exhibits 17 and 18).

64 24 TTABVUE 12 (Mortensen Decl., ¶ 24), 164-66 (Exhibit 17).

65 83 TTABVUE 25 (Applicant’s Brief).

66 84 TTABVUE 21 (Opposer’s Reply Brief).

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Opposition No. 91236033

taken. Mr. Mortensen does not claim they were taken in 2015. On the other hand, he

specifically indicated that the second set of screenshots were taken on December 12,

2017.

4. Opposer’s Google Play and Apple App Store Applications

and Installations

Mr. Mortensen provided a copy of what he refers to as a “document from Google

Play reporting the installations of a version of Rapid’s HUNGR mobile app for the

Android system, for the years 2015 and 2016 in the entire USA” on which “[t]he

HUNGR logo appears on each page of this document.”67 According to his explanation,

the document “shows … that 15 users installed the app in January 2015.”68 An

excerpt from this document is shown below:

67 24 TTABVUE 8 (Mortensen Decl., ¶ 11), 23 (Exhibit 3).

68 Id. at 8.

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Opposition No. 91236033

[Image continued below]

Mr. Mortensen also provided a document he asserts “comprises the Apple App

Store version history of the HUNGR app at its original public release date in 155

countries including the entire USA” showing that “Version 1.0 was ‘ready for sale’ on

October 15, 2015[;] Version 1.2 was ‘ready for sale’ on May 25, 2016[; and] Version

1.3 was ‘ready for sale’ on August 1, 2017.”69

Based on the foregoing, Opposer asserts that “the Apple and Google Play records

prove Opposer was using the HUNGR mark on its app online in 2015.”70

In response to Mr. Mortensen’s testimony, Jonathan Taylor (Applicant’s Full

Stack & Mobile Developer) testified that he has “extensive experience listing and

editing mobile apps available on the Apple App Store and Google Play Store” and that

he has performed those tasks “on behalf of Applicant.”71 He further testified that “[i]n

[his] experience, the account pages from which these screenshots were taken are

69 Id. at 8 (¶ 12)), 25-31 (Exhibit 4).

70 84 TTABVUE 15 (Opposer’s Brief).

71 67 TTABVUE 4 (Taylor Decl., ¶¶ 1, 3).

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Opposition No. 91236033

populated with the app name and icon available at the time that the records are

accessed by the user. Records such as these do not show the history of an app name

or the icons used with an app.”72

Noting that January 2017 appears in the content of the document Mr. Mortensen

provided, Mr. Taylor contends that the screenshot could not have been taken before

that time.73 Additionally, “[t]o demonstrate that the app name and app icon

appearing on the Google Play Console Dashboard page only reflects [sic] the current

app name and app icon,” Mr. Taylor testified that he “changed the app name and app

icon for a mobile application created by Applicant that is available on the Google Play

store,” and he provided a printout of a page from the Google Play reflecting that

change.74 That printout indicates that one can change an app’s name or icon on the

Google Play store without doing a full update. “Thus,” he asserts, “Opposer could

easily have changed the name and icon for its app at any point without having to do

a full app update.”75

Mr. Taylor testified that the Apple App Store “version history page” similarly

“only shows the current app name and the current app icon at the time the page is

viewed. Anytime the app name and/or app icon is changed, the version history page

will only show the current app name and app icon. Therefore, the version history page

for the mobile app named “HUNGR – Food Delivery at Work” on or after August 1,

72 Id. at 4-5 (¶ 6).

73 Id. at 5 (¶ 7).

74 Id. at 5-6 (¶ 9), 13-22 (Exhibit BB).

75 Id. at 6 (¶ 9).

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Opposition No. 91236033

2017 does not show the app name or app icon prior to that date.” 76 To support this

contention, he provided “copies of screenshots taken from a ‘how to page’ for the Apple

App Store page showing the procedure for changing the name and icon for an app”

which, like the Google Play Store, indicate that the app name and icon can be changed

without updating the current version of the app.77 An excerpt from that screenshot is

reproduced below:

5. November 30, 2015 Press Release

Mr. Mortensen provided a copy of a press release that he testified was “distributed

by [Opposer] and dated November 30, 2015, announcing the availability of an

updated version of the HUNGR app.”78 He also provided “an article published by

Restaurantnews.com” on the same date, titled “RAPID Launches ToGo Mobile

Delivery,” that he testified “is based on the press release” and “accurately describes

the updated version of the HUNGR app.”79 An excerpt of the article is reproduced

76 Id. at 7 (¶ 13).23-24.

77 Id. at 23-24 (Exhibit CC).

78 24 TTABVUE 8 (Mortensen Decl., ¶ 13), 32-34 (Exhibit 5).

79 Id. at 9 (¶ 14), 35-39 (Exhibit 6).

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Opposition No. 91236033

below (highlighting added):

[Image Continued on Next Page]

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Opposition No. 91236033

Mr. Mortensen also provided a copy of this article as an exhibit to his declaration

submitted with Opposer’s reply brief in in support of its motion for summary

judgment filed earlier in this proceeding, stating: “I don’t know why [Applicant’s

witness] Mr. Grass did not find this document in his investigation.”80

However, Mr. Grass, in a declaration that Applicant submitted with its

subsequently filed motion to strike the above exhibit as evidence in Opposer’s motion

for summary judgment, and again during trial, presented what Applicant asserts is

an “earlier version”81 of the article that is identical to the one presented by Mr.

Mortensen but for the fact that it includes no reference to the term HUNGR, and

instead refers to the app as “ToGo.”82 Further, it references ToGo as a “launch,” and

80 10 TTABVUE 3 (¶ 2), 10-13 (Mr. Mortensen’s Declaration filed with Opposer’s Reply in

Support of Opposer’s Motion for Summary Judgment, Exhibit 10).

81 83 TTABVUE 17 (Applicant’s Brief).

82 12 TTABVUE 7-11 (Applicant’s Motion to Strike, Exhibit A); 62 TTABVUE 68-70 (Brackett

Decl., Exhibit D). It is important to note that the article is not of record because Applicant

submitted it earlier in the proceeding, but because Applicant made it of record during its

testimony period. We discuss the pretrial arguments related to that article here because, as

discussed herein, the sequence of events is significant.

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Opposition No. 91236033

not as an update of an existing version. We reproduce an excerpt of the article made

of record by Applicant during its testimony period:83

83 62 TTABVUE 68-70 (Brackett Decl., Exhibit D).

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Opposition No. 91236033

Notably, Opposer had filed an application to register the mark TOGO (Serial No.

86821460, “the ’460 Application”) for “Software for ordering and coordinating

transportation services in the nature of deliveries, namely, software for the

automated scheduling and dispatch of motorized vehicles for the delivery of goods

from a restaurant or store” on November 16, 2015, just two weeks before the date of

the article.84 When the ’460 Application was refused based on likelihood of confusion

with the mark TWOGO in a prior registration for allegedly similar services, Opposer,

a pro se applicant represented by its CEO, Rebekah Mortensen (Mr. Mortensen’s

wife), argued against the refusal, making of record a copy of Opposer’s website

84 66 TTABVUE 59-60 (Applicant’s Second Notice of Reliance, Exhibit B).

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Opposition No. 91236033

“showing description of products.”85 A copy of the website printout provided by

Opposer with its response is reproduced below:

The explanation under the caption “What is ToGo” states that “ToGo allows you

to order your from [sic] your favorite restaurants and get the food delivered directly

to you. Using your smart phone you can easily choose from available restaurants,

order and watch your food be delivered in real-time (available in the USA only)”. The

TOGO application was abandoned on March 1, 2017.86

85 Id. at 247.

86 Id. at 60-22.

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Opposition No. 91236033

Applicant introduced this purported earlier version of the RestaurantNews.com

press release via the testimony of Troy Brackett, “the founder, owner and publisher

of RestaurantNews.com” and “a duly authorized custodian of records of

RestaurantNews.com with authority to certify the authenticity of the documents [he]

produced.”87 Mr. Brackett testified that the purported earlier version of the press

release produced by Applicant is a true and correct copy of the article posted on his

website RestaurantNewsRelease.com “on or around November 30, 2015,” and he

directed Applicant’s counsel to the Internet Archive (archive.org) where that

document could be found online.88 He stated further that “it appears a version of that

press release is no longer available on the Internet Archive.”89

Mr. Brackett also produced copies of all of his emails between Mr. Mortensen and

himself regarding the press release.90 According to those emails, which are excerpted

below, Mr. Mortensen contacted Mr. Brackett on November 7, 2016 to find out if he

could have his original press release updated:91

87 62 TTABVUE 4-5 (Brackett Decl., ¶¶ 2, 7).

88 62 TTABVUE 4-6 (Brackett Decl., ¶¶ 2, 6, 9-10), 68-70 (Exhibit D).

89 Id. at 6 (¶ 10).

90 Id. at 5 (¶ 6), 19-67 (Exhibit C).

91 Id. at 42-43.

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Opposition No. 91236033

Mr. Brackett responded back, telling him “[t]hat would really be a new release as

everything would need to be changed (the content, logo, image, title and URL).”92

The next email shows that Mr. Mortensen referred back to Mr. Brackett on July

27, 2017, approximately two weeks before Opposer filed its notice of opposition in this

case, clarifying his previous request:

92 Id. at 43.

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Opposition No. 91236033

93

93 Id. at 33-34 (highlighting added).

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Opposition No. 91236033

With his reply to that email, Mr. Brackett offered to do “a redirect to the new

release[.] That way anytime someone clicks on the old one, they’ll be automatically

sent to the new one.”94 He also asked Mr. Mortensen if he wanted to change the title

to “RAPID Launches HUNGR Mobile Ordering and Delivery App[.]”95 Noting that he

had just received another email from Mr. Mortensen, Mr. Brackett asked for

clarification: “So you just want it updated and don’t want it to go in tomorrow’s

newsletter?”96 Mr. Mortensen declined Mr. Brackett’s suggestion, emphasizing that

“[t]he biggest thing is having the original date of November 30th, 2015 stay

in tact [sic].”

97

However, on cross-examination, which took place after Mr. Brackett’s testimony

was made of record, Mr. Mortensen testified that he did not know who wrote or

provided the text for the content of the RestaurantNews.com article, and he denied

94 Id. at 39.

95 Id.

96 Id.

97 Id. at 27 (highlighting added).

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Opposition No. 91236033

ever contacting the website himself for any reason, except one time, three months

prior to his deposition on February 3, 2021, to ask the company about its advertising

rates:98

Q: Have you or anyone affiliated with Rapid, Inc., ever contacted

RestaurantNews.com for any reason?

A: Yes.

Q: On how many occasions?

A: Once I believe.

Q: And when was that?

A: Three months ago.

Q: And who contacted RestaurantNews.com?

A: I did.

Q: And for what purpose?

A: To ask them for advertising rates.

Q: Did you discuss anything else other than advertising rates?

A: No.

Q: And is that the only time you ever contacted RestaurantNews.com?

A: As far as I knew, yes.

Q: Are you aware that articles at RestaurantNews.com can be edited

after they have been initially published?

A: I don’t know.

Mr. Mortensen also denied ever contacting the Wayback Machine to have the

article/press release removed:99

Q: … Have you personally ever contacted the WayBack Machine or

anyone affiliated with the WayBack Machine for any reason?

A: No.

However, Applicant called Chris Butler, the Office Manager at the Internet

Archive – which provides “a service known as the Wayback Machine” that “makes it

possible to browse more than 450 billion pages stored in the Internet Archive’s web

98 59 TTABVUE 249-50 (Mortensen Cross Dep., pp. 72:22-73:13).

99 Id. at 211 (34:9-24).

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Opposition No. 91236033

archive”100 – to show that Mr. Mortensen did indeed contact the Internet Archive’s

Wayback Machine for the specific purpose of changing the archived version of

Opposer’s press release in the RestaurantNews.com article discussed above. Mr.

Butler provided a document consisting of several email communications between Mr.

Mortensen and the Internet Archive that he testified are business records.101 In the

first email shown below and dated August 22, 2017, which is 13 days after Opposer

filed its notice of opposition in this proceeding, someone with the email

“a.mortensen@rapidtnc.com” (which is one of Opposer’s emails of record in the ’189

Application),102 attempted to have the “2015 index” removed from the original

article:103

The Internet Archive Team’s response to this email explained that they could

remove pages from the Internet Archive’s Wayback machine, but to do so, they

required certain information, including verification that the person requesting

removal was “the site owner or author” of the content that the requestor “wish[ed] to

100 61 TTABVUE 4 (Butler Decl., ¶¶ 2, 4); 83 TTABVUE 18 (Applicant’s Brief).

101 Id. at 7-19 (Exhibit A).

102 June 14, 2016 Application, TSDR at p. 3.

103 61 TTABVUE 6 (Butler Decl., ¶ 10 (Exhibit A).

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Opposition No. 91236033

have excluded.”104 The email also requested clarification as to whether the requestor

was specifically concerned about “only specific files or directories,” in which case they

could “leave the rest of the archives available.”105

In the next email, which is dated August 25, 2017 and signed by “Aaron

Mortensen,” the sender clarified that he was only requesting removal of the specific

pages showing the RestaurantNews.com article:106

104 Id.

105 Id.

106 Id.

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Opposition No. 91236033

Applicant, in its brief, correctly notes that “nowhere in Opposer’s 35-page brief do

the words ‘press release’ or ‘RestaurantNews.com’ appear.”107 Opposer, however,

shrugged off this evidence in its reply brief, asserting that it has no expectation that

the Board will consider this evidence because Opposer does not rely on it:

Applicant is attempting to hang nearly all of its response related to prior

use on a single website article that Opposer has not even cited or relied

upon its opening brief in an attempt to attack the credibility of Mr.

Mortensen. Opposer has not asked the Board to consider the

restaurantnews.com article in its Opening Brief and therefore has no

expectation that the Board will consider it as evidence related to prior

use.108

Opposer’s expectation is misplaced because we consider all relevant evidence,

regardless of whether only one party relies on it in its briefs.

6. Credit Card Statements

As part of his testimony, Mr. Mortensen provided what he states “comprises a

representative collection of card processing statements showing sales generated by

meal orders placed through the use of the HUNGR online and the HUNGR mobile

app for the months of June 2014, December 2014, January 2015, June 2015,

December 2015, May 2016, and June 2016” and are “addressed to RapidHUNGR or

HUNGR TO GO FOOD only for administrative convenience in the billing and

invoicing process.”109 Excerpts from the June 2014 and May 2016 statements110 are

reproduced below:

107 83 TTABVUE 22 (Applicant’s Brief).

108 84 TTABVUE 15 (Opposer’s Reply Brief).

109 24 TTABVUE 9-10 (Mortensen Decl., ¶ 16), 39-46 (Exhibit 8).

110 Id. at 40, 46 (Exhibit 8).

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Opposition No. 91236033

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Opposition No. 91236033

Applicant argues that “[e]ven if this evidence is accepted at face value, this

evidence does not establish that there was any trademark use of the alleged HUNGR

mark. The addressees on such records are provided by the account holder and do not

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Opposition No. 91236033

reflect anything more than that. It is an enormous leap to view such records and

conclude, as Opposer does, that this evidence proves that ‘the mark HUNGE [sic] was

always used in connection with the website.’”111

7. Multiple Domains

With his declaration, Mr. Mortensen provided March 25, 2019 screenshots of (1)

Opposer’s websites, including (1) myhungr.com/en, which “introduce[s] new

customers to [Opposer’s] HUNGR brand delivery services”; (2)

hungrdrivers.com/en/restaurants, which is “directed to soliciting restaurants to sign

up for [Opposer’s] HUNGR delivery program”; and (3) hungr.com, which is “directed

to soliciting restaurants to sign up for [Opposer’s] HUNGR delivery program.”112

Based on Mr. Mortensen’s testimony and these screenshots, Opposer argues that:

Since 2012, Opposer has used multiple domain names in connection

with the website software, some of which include the HUNGR mark

within the text of the URL address itself and some of which do not,

before eventually launching the <myhungr.com> website. Opposer

previously used the name “myhungr.com” because “hungr.com” was

unavailable. Opposer purchased the domain name <hungr.com>, which

Opposer now uses. However, as stated above the HUNGR mark has

111 83 TTABVUE 25 (Applicant’s Brief). As shown in the examples, all of the credit card

statements referenced by Mr. Mortensen above contain redacted portions. Trademark Rule

2.126(c) “To be handled as confidential, submissions to the [] Board that are confidential in

whole or part … must be submitted using the ‘Confidential’ selection available in ESTTA [the

Electronic System for Trademark Trials and Appeals] or, where appropriate, under a

separate paper cover. Both the submission and its cover must be marked confidential and

must identify the case number and the parties. A copy of the submission for public viewing

with the confidential portions redacted must be submitted concurrently.” 37 C.F.R. § 2.126(c).

Although Opposer submitted certain documents provided by Mr. Mortensen under seal, see

24 TTABVUE, it did not do so with respect to the documents comprised by Exhibit 8.

Accordingly, Opposer is ordered to submit a fully unredacted copy of the documents

submitted with Exhibit 8 to Mr. Mortensen’s testimony within 30 days of this decision, failing

which Exhibit 8 will not be considered as part of the record.

112 24 TTABVUE 13 (Mortensen Decl., ¶¶ 27-29).

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Opposition No. 91236033

continuously appeared on the Opposer’s website page, regardless of the

domain name or software version, since 2012.113

Applicant asserts that “Opposer conveniently, if not misleadingly, lumps these

domains together as evidence of continuous use of its alleged HUNGR mark,” points

out, as corroborated by WHOIS database printouts provided with Mr. Grass’

testimony,114 that the domain myhungr.com was not registered until May 17, 2016,

and the domain hungrdrivers.com was not registered until September 11, 2016.115

Applicant also highlights Mr. Mortensen testimony that the domain hungr.com,

which Applicant now uses, was only “recently purchased.”116

B. Opposer’s Third Party Witnesses

Opposer called four third-party witnesses to corroborate the testimony of Mr.

Mortensen, including (1) Ahed Ihmud, an independent contractor delivery driver; (2)

David Lucchetti, an independent contractor delivery driver; (3) Fardad Raouf, a

restaurant owner; and (4) Rosalie Delaney, a purported customer of Opposer.117

1. Ahed Ihmud

Mr. Ihmud testified that he has been “making pick-ups from restaurants and

deliveries to HUNGR customers since November 20, 2013,” and that “[f]rom the

beginning, [he] used the RAPID platform to receive orders for HUNGR deliveries, via

113 82 TTABVUE 27 (Opposer’s Brief) (citations omitted).

114 60 TTABVUE 5-6 (Grass Decl., ¶¶ 11, 14) 20-26 (Exhibit D), 43-46 (Exhibit G).

115 83 TTABVUE 25-26 (Applicant’s Brief).

116 83 TTABVUE 26 (Applicant’s Brief); 24 TTABVUE 13 (Mortensen Decl., ¶ 28).

117 22 TTABVUE 4 (Ihmud Decl., ¶ 2), 8 (Lucchetti Decl., ¶ 2), 13 (Raque Decl., ¶ 2), 19

(Delaney Decl., ¶¶ 3-4).

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Opposition No. 91236033

SMS text message or later using the RAPID app.”118 He further testified that he has

“always identified [him]self to restaurants and customers as a HUNGR driver.”119

On cross-examination by Applicant’s counsel, when asked whether he came up

with the November 20, 2013 date himself, Mr. Ihmud testified that the date was

provided to him in the declaration that he signed, and that he had not reviewed any

background documents in connection with the declaration when he received it, but he

believed it was around that date.120

2. David Lucchetti

Mr. Lucchetti provided testimony similar to that of Mr. Ihmud in his declaration,

except that he purportedly started “making pick-ups from restaurants and deliveries

to HUNGR customers” on “April 4, 2015.”121

On cross-examination, like Mr. Ihmud, Mr. Lucchetti testified that he only knows

the “Rapid platform” as the Rapid App, and that the specific date he indicated in his

declaration as the start date of his deliveries for Opposer was provided by whoever

prepared the declaration.122 Asked if he could confirm the precise date of April 4, 2015

that he said he started delivering orders to HUNGR customers for Opposer, he stated,

“I can’t confirm it for certain, but I can’t deny it either,” but he did confirm that his

118 Id. at 4 (Ihmud Decl., ¶¶ 2-3)

119 Id. (¶ 4).

120 59 TTABVUE 23 (23:4-24:16).

121 22 TTABVUE 8 (Lucchetti Decl., ¶¶ 2-4).

122 59 TTABVUE 149-51 (Lucchetti Cross Dep., 15:18-16:3).

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“only basis for stating that is because it was provided to [him] by Mr. Mortensen.”123

He also testified that he did not make any deliveries for Opposer during the years

2014 and 2016-2018, but he did make deliveries for Opposer in October 2019 when

he was in California for a couple of weeks, although he did not know how many

deliveries he made at that time.124 Asked why he did not make any deliveries in 2014,

he said “again, the time of the declaration is when it’s established that I started

making deliveries, so I don’t know about [Opposer] in 2014.”125 He stated that found

out about Opposer through Mr. Mortensen in 2015, who presented the driver

opportunity.126 He further stated that at the time of his declaration, he had known

Mr. Mortensen for 20 years, considered him a good friend, and that Mr. Mortensen

was one of his 19 contacts on Facebook.127

3. Fardad Raouf

Mr. Raouf testified that his restaurant, Paradiso Mediterranean Cuisine

(“Paradiso”), “has been listed on the HUNGR mobile app since February 3, 2016, and

has been continuously listed on the HUNGR app since that date.”128 He also provided

a picture of his restaurant that shows a HUNGR sign in the window, which he said

has been displayed there since February 2016.129

123 Id. at 150 (16:4-19).

124 Id. at 157 (157:11-23).

125 Id. at 157-58 (157:24-158:14).

126 Id. at 158 (158:15-20).

127 Id. 148-49 (148:2-149:8).

128 22 TTABVUE 13 (Raouf Decl., ¶¶ 2-3).

129 Id. (¶ 4), and 16 (Exhibit).

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Opposition No. 91236033

When Mr. Raouf was first presented with a copy of his declaration during cross-

examination, he said that he recognized it, but thought it was a contract.130 Once he

understood that it was his declaration, he was asked if he read the sworn statement

paragraph above his signature; he indicated that he had not, and did not recall if he

understood the meaning of the paragraph at the time of his testimony.131 He further

testified on cross-examination that Opposer prepared the declaration, and that Mr.

Mortensen brought it to him personally to sign.132 He stated that he did not review

any documents in connection with his declaration prior to signing it, nor had he

reviewed any since that time.133 He also did not know who took the pictures of his

restaurant that were attached to the declaration that he signed, or when they were

taken; in fact, he had never seen them until he was cross-examined by Applicant’s

counsel.134 Mr. Raouf agreed that he signed the declaration “notwithstanding the fact

of what’s in the document….”135

4. Rosalie Delaney

Rosalie Delaney, a resident of San Diego, California, testified that she “found the

HUNGR app at the Apple Store on March 29, 2016 and downloaded it to [her]

smartphone,” created an account, and then placed an order for delivery in the amount

130 59 TTABVUE 60 (Raouf Cross Dep., 60:2-22).

131 Id. at 61 (61:12-24).

132 Id. at 63-64 (63:11-64:5).

133 Id. at 64 (64:12-17).

134 Id. at 73 (73:10-14).

135 Id. at 62 (62:6-8).

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Opposition No. 91236033

of $49.22 from Mr. Raouf’s restaurant.136

On cross-examination, Ms. Delaney denied being friends with Mr. Mortensen, but

admitted she is “friends” with Mr. Mortensen and his wife on Facebook, and that Mr.

Mortensen “liked” (by clicking the “like” button) her name, professional capacity, and

the insurance company she previously worked for, on Facebook, further to Ms.

Delaney’s request that he do so.137 She also testified that she sold Mr. Mortensen and

his wife, as well as Opposer, an insurance policy.138 She further testified that she

knows Ahed Ihmud because Mr. Mortensen referred him to her “for an insurance

code.”139

Ms. Delaney also knows who Fardad Raouf is because she met him “maybe five

times” when she ate at his restaurant, Paradiso, the restaurant she purportedly

ordered from on March 29, 2016 using Opposer’s HUNGR app (which was

downloaded to her phone the same day).140 When asked how she came up with the

date of March 29, 2016, she said, “Aaron [Mortensen] provided me with his -- the

information, and I have no reason to believe that it was not accurate.” She further

confirmed that “the information in [her] declaration is based purely on whatever

information Mr. Mortensen provided [her]….”141 Mr. Mortensen delivered her order

136 22 TTABVUE 19 (Delaney Decl., ¶¶ 1, 3-4).

137 59 TTABVUE 106-07, 109-10 (Delaney Cross Dep., 15:8-19:12).

138 Id. at 110-11 (19:4-20:23).

139 Id. at 110 (19:15-18).

140 Id. at 107-18, 113 (16:22-17:10, 22:15-19).

141 Id. at 113-14 (22:21-23:4).

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Opposition No. 91236033

personally.142

All four of Opposer’s third-party witnesses were represented by Opposer’s counsel,

Mr. Lorenzo, during their cross-examination testimony.143 During their examination,

Applicant’s counsel attempted to determine if they were paying their own legal fees

or if someone else, such as Opposer, was paying their legal fees, whereupon Opposer’s

counsel instructed Mr. Mortensen and the witnesses not to answer, claiming

attorney-client privilege.144

C. Discussion

Based on the foregoing, Applicant contends that Opposer has:

resorted to intentionally doctoring evidence and sanitizing the internet

to cover up its alteration of this evidence; falsely denying in filings with

the Board that it had not committed these acts; intentionally

misrepresenting evidence as establishing historical facts; and drafting

false declarations for Opposer’s friends, who, on cross examination, were

almost entirely unaware of the contents of the declarations. Opposer did

all this in a concerted effort to deceive Applicant and the Board into

believing that it was using its alleged HUNGR mark in connection with

a mobile app years before it actually had begun any purported use of

that term.145

After carefully reviewing all evidence and testimony in this case, including the

evidence and testimony highlighted above, we find that not only has Opposer’s “star

142 Id. at 116 (25:16-20).

143 59 TTABVUE 13 (Ihmud Cross Dep., 13:4-25), 57-59 (Raouf Cross Dep., 57-13-59:2), 99-

100 (Delaney Cross Dep., 99:6-100:6); 140-41 (Lucchetti Cross Dep., 140:20-141:13).

144 Id.; 59 TTABVUE 190-91 (Mortensen Cross Dep., 190:8-191:2). “Generally, the identity of

an attorney’s client and the nature of the fee arrangement between an attorney and his client

are not privileged.” In re Grand Jury Subpoenas, 803 F.2d 493, 496 (9th Cir. 1986) (citations

omitted).

145 83 TTABVUE 7-8 (Applicant’s Brief).

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Opposition No. 91236033

witness” Mr. Mortensen been dishonest with the Board, but he also engaged in

spoliation of evidence. “Spoliation refers to ‘the destruction or material alteration of

evidence or the failure to preserve property for another’s use as evidence in pending

or reasonably foreseeable litigation.’” Optimal Chem. Inc. v. Srills LLC, 2019

USPQ2d 338409, at *16 (TTAB 2019) (citing Silvestri v. Gen. Motors Corp., 271 F.3d

583, 590 (4th Cir. 2001)).

Mr. Mortensen’s testimony and evidence regarding the November 30, 2015 press

release on RestaurantNews.com is particularly egregious, and casts a dark shadow

over the remaining testimony and evidence he provided. We make the following

specific findings of fact with respect to that evidence:

● Opposer’s November 30, 2015 press release on RestaurantNews.com announced

the launch of Opposer’s “ToGo – Mobile Ordering and Delivery app,”146 not an

“updated HUNGR – Mobile Ordering and Delivery app” as claimed by Mr. Mortensen

and shown in the altered version he presented during his testimony.147

● On June 14, 2016, approximately seven months after its TOGO application was

abandoned, Opposer filed an application to register the mark HUNGR discussed

146 62 TTABVUE 68-70, 247 (Brackett Decl., Exhibit D); 66 TTABVUE 59-60, 247 (Applicant’s

Second Notice of Reliance). See the (i) the “original” press release uncovered by Applicant and

(ii) the page from Opposer’s togo.com website Opposer submitted in support of Opposer’s now

abandoned TOGO application, filed the same month, for “Software for ordering and

coordinating transportation services in the nature of deliveries, namely, software for the

automated scheduling and dispatch of motorized vehicles for the delivery of goods from a

restaurant or store.” Mr. Mortensen’s assertion, in his supplemental declaration provided in

support of Opposer’s motion for summary judgment earlier in the proceeding, that “ToGo was

a completely different app from the HUNGR apps” and was simply “an app for restaurants

… to coordinate the dispatch and schedule of drivers for delivery of a food order,” is simply

not credible. 10 TTABVUE 7 (¶ 19).

147 24 TTABVUE 8 (Mortensen Decl., ¶¶ 13-14), 32-39 (Exhibits 5-6).

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Opposition No. 91236033

above.148 However, the examining attorney assigned to that application suspended it

based on a potential likelihood of confusion with Applicant’s prior pending intent-to-

use application for the mark HUNGRY that was filed on May 4, 2016.149 On

November 7, 2016, less than three months later, Mr. Mortensen contacted

RestaurantNews.com and was successful in his efforts to change the content of the

press release from “the launch of the ToGo – Mobile Ordering and Delivery app” to

“the launch of the updated HUNGR app.”150 We infer that Mr. Mortensen did this in

order to create the appearance of a priority date that preceded the filing date of

Applicant’s HUNGRY application. Mr. Mortensen made sure to emphasize that that

“[t]he biggest thing is having the original date of November 30th, 2015 stay

in tact [sic].”151 Despite taking such steps, Mr. Mortensen denied that he ever

contacted RestaurantNews.com except one time to inquire about advertising rates.152

● On August 22, 2017, approximately two weeks after filing the notice of

opposition in this case, Opposer tried to scrub the existence of the original article from

the web by contacting the Internet Archive, and was successful.153 Despite taking

such steps, Mr. Mortensen denied ever contacting the Internet Archive to have

webpages pertaining to his company removed from the Internet.154

148 66 TTABVUE 50-57 (Applicant’s Second Notice of Reliance).

149 21 TTABVUE 10-60 (Opposer’s Notice of Reliance, Exhibit 2).

150 62 TTABVUE 19-67 (Brackett Decl., Exhibit C).

151 Id. at 27.

152 59 TTABVUE 249-50 (Mortensen Cross Dep., pp. 72:22-73:13).

153 61 TTABVUE 7-10 (Butler Decl., Exhibit A).

154 59 TTABVUE 21 (Mortensen Cross Dep., pp 34:20-24).

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Opposition No. 91236033

“These types of actions engaged in by a party are not only prohibited, but tarnish

and undermine the integrity of the Board and its proceedings. [Opposer’s] fabrication

of evidence and untruthful testimony has tainted its entire case and has called into

serious question the reliability of any remaining evidence or testimony submitted by

Opposer….” Optimal Chem. Inc. v. Srills LLC, 2019 USPQ2d 338409, at *18. The

“legal maxim ‘falsus in uno, falsus in omnibus’ (false in one thing, false in everything)

appears appropriate under these circumstances.” See Lambert v. Blackwell, 387 F.3d

210, 256 (3rd Cir. 2004) (describing the falsus in uno, falsus in omnibus principle,

which permits a jury to disregard part or all of a witness’s testimony if the witness

has testified falsely about a material fact); United States v. Martinez, 356 F. Supp. 2d

856, 870 (M.D. Tenn. 2005) (applying the doctrine falsus in uno, falsus in omnibus to

discredit an agent’s entire testimony due to certain inconsistencies with the record).

We thus look askance on Mr. Mortensen’s remaining testimony, including but not

limited to his claim that a screenshot he provided, purportedly from 2012, was from

the first HUNGR website in 2012;155 his claim that Opposer distributed a promotional

flyer, showing a 2014 iPhone, in 2012;156 his claim that the Google Play and Apple

app stores show downloads of Opposer’s HUNGR app from 2015, notwithstanding an

owner’s ability to change the name of the app and icon shown without updating the

app;157 and his claim that the credit card statements he provided reflect “sales

155 24 TTABVUE 5-7 (Mortensen Decl., ¶¶ 2, 6-7).

156 24 TTABVUE 7, 18 (Mortensen Decl., ¶ 6 and Exhibit 1).

157 Id. at 8 (¶ 11), 24-31 (Exhibits 3-4); 67 TTABVUE 4-5 (Taylor Decl., ¶¶ 1, 3, 6-7).

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Opposition No. 91236033

generated by meal orders placed through the use of the HUNGR online and the

HUNGR mobile app for the months of June 2014, December 2014, January 2015,

June 2015, December 2015, May 2016, and June 2016.”158

We also find that Opposer’s witnesses, Ahed Ihmud, David Lucchetti, Fardad

Raouf, and Rosalie Delaney, while perhaps intending to testify truthfully about the

dates on which they purportedly first used or became familiar with Opposer’s

HUNGR app, merely signed the declarations based on the advice of or their

relationship with Mr. Mortensen without having any independent recollection of the

specific dates to which they testified. As examples, we point to Mr. Raouf’s testimony

that he signed his declaration “notwithstanding the fact of what’s in the

document….,”and Ms. Delaney’s testimony that “the information in [her] declaration

is based purely on whatever information Mr. Mortensen provided [her]….” 159

D. Conclusion

Based on the foregoing, we find that Mr. Mortensen engaged in a pattern of

fabrication and spoliation of evidence, which vitiates the probative effect of his

testimony and evidence, and taints the remainder of evidence that might otherwise

indirectly support Opposer’s claim of priority. See Vodusek v. Bayliner Marine Corp.,

71 F.3d 148, 155-156 (4th Cir. 1995) (“Under the spoliation of evidence rule, an

adverse inference may be drawn against a party who destroys relevant evidence.”);

Gilmer v. Colo. Inst. of Art, 12 F. A’ppx 892, 895, 2001 WL 686406 at *3 (10th Cir.

158 24 TTABVUE 9-10, 40, 46 (Mortensen Decl., ¶ 16, Exhibit 8).

159 59 TTABVUE 62 (Raouf Cross Dep., p. 62:6-8), 116 (Delaney Cross Dep., 25:16-20).

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Opposition No. 91236033

2001) (court has the discretion to decide factual disputes regarding the fabrication of

evidence even when that issue also goes to the merits of the case). In short, we do not

find that Opposer has met its burden of proving priority by a preponderance of the

evidence. “Because opposer cannot establish its priority, a necessary element of the

ground of likelihood of confusion, opposer’s priority and likelihood of confusion claim

is dismissed.” Threshold TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1039

(TTAB 2010).

Decision: The opposition is dismissed.

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