Estta1079948 09/04/2020 in the United States Patent And

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1079948 Filing date: 09/04/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91255211 Party Plaintiff HCR Franqueadora Ltda - EPP Correspondence SCOTT HOUTTEMAN Address HOUTTEMAN LAW LLC PO BOX 370 MERRIFIELD, VA 22116 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected] 202-263-0808 Submission Motion for Summary Judgment Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule 2.120(a); OR the motion for summary judgment is based on claim or issue pre- clusion, or lack of jurisdiction. The deadline for pretrial disclosures for the first testimony period as originally set or reset: 01/30/2021 Filer's Name Scott Houtteman Filer's email [email protected] Signature /Scott Houtteman/ Date 09/04/2020 Attachments Motion.pdf(415834 bytes ) Decl1.pdf(3056337 bytes ) Decl2.pdf(381557 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD HCR FRANQUEADORA LTDA - EPP Opposer-Plaintiff v. Opposition No. 91255211 (parent case) Opposition No. 91255212 HNT CHICKEN, LLC Applicant-Defendant PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT Plaintiff-Opposer, HCR FRANQUEADORA LTDA - EPP (“HCR”), in this consolidation of Opposition No. 91255211 (“Op. ‘211”) and Opposition No. 91255212 (“Op. ‘212”), and through its undersigned counsel, moves for registration refusal as a matter of summary judgement under Fed. R. Civ. P. 56. against Defendant HNT Chicken, LLC (“HNT-C”). SUMMARY OF ARGUMENT Jignesh “Jay” Pandya and Dany Levkovits formed a joint venture. Mr. Pandya, a Philadelphia- based restaurateur, owned several closed Pizza Hut stores. Mr. Levkovits, the founder and CEO of HCR, developed a successful chain of Brazilian chicken restaurant franchises, and wanted to expand his brand into the United States market. The brand in question is HNT, HOT N’ TENDER which specializes in crispy, tasty chicken tender dishes. HCR has registered its brand with the Brazilian trademark office. Together they planned to renovate the closed Pizza Hut stores, generally in the Philadelphia area, into new HNT chicken stores. Mr. Levkovits and his team of HCR employees and associates traveled to the Philadelphia region and imported their Brazilian brand in all respects. An HCR architect supervised the renovation, including the latest HNT signage and menu layouts. HCR provided its proprietary recipes, quality control procedures, located the proper restaurant kitchen equipment and provided the proper kitchen layouts. HCR even provided specific job descriptions and - 1 - quality control checklists. As a result of HCR’s efforts, several HNT brand stores successfully opened, ready to offer HCR’s genuine Brazilian chicken product. In return for licensing his HNT brand, Mr. Levkovits expected to receive a reasonable licensing fees. Unbeknownst to Mr. Levkovits, however, Mr. Pandya had filed two U.S. intent-to-use trademark applications for the Hot N’ Tender brand in the name of his newly formed company HNT- C. Importantly, at the time of these filings there was no agreement of any kind between the parties. Now, Mr. Pandya seeks allowance of these applications so that he can assert sole ownership of the HNT brand in the United States. The Trademark Board should refuse registration as a matter of summary judgement on two grounds: (1) HNT-C proved not to be the owner of the marks in the United States—it’s an importer and distributer of HCR’s product and (2) HNT-C’s applications violate the Pan American Convention with respect to Mr. Levkovits’ own trademark rights. STATEMENT OF UNDISPUTED FACTS The following facts are not in dispute: PRE-FILING ACTIVITY 1. In 1995 Plaintiff HCR began selling crispy chicken tenders adapted to the Brazilian culture in Rio de Janeiro under the mark “Hot n’ Tender.” Declaration of Dany Levkovits (“Levkovits Dl.”) at ¶ 4 and Exhibit (“Ex.”) 1, HCR000247. 2. “Hot n’ Tender” chicken grew in popularity and, in 2015 HCR began expanding into a franchise network. Levkovits Dl. at ¶ 5. 3. Over the years, HCR modernized its branding and began using the Hot n’ Tender acronym “HNT” and created a stylized image of a chicken in profile which it added to its advertising and signage. Id. at ¶ 5 Ex. 2, HCR000249. 4. On May 14, 2019, HCR has obtained a Brazilian trademark registration, No. 914391089 featuring Hot n’ Tender below its acronym “HNT” in large block letters, all of which is underneath its chicken profile icon. Id. at ¶ 8. - 2 - 5. In 2018 and 2019, HCR was named a “Top Franchise Brazil” for the fast food restaurant market in Brazil and was awarded the “Excellence Prize” by the Brazilian Franchise Association. Id. at 6, Ex. 3, 4, HCR000174-175. 6. HCR has currently over forty (40) restaurants selling chicken throughout Brazil. Id. at ¶ 7. 7. On or about March 25, 2019, HCR owner and founder, Dany Levkovits, met Jignesh “Jay” Pandya at a franchise trade show in Las Vegas where Mr. Pandya proposed a partnership with Mr. Levkovits in which Mr. Levkovits would expand his Hot n’ Tender trademark to the United States market. Id. at ¶ 9. 8. A key incentive for the partnership was Mr. Pandya’s representation that he operated several former Pizza Hut restaurant locations that could be economically converted to Hot n’ Tender franchises. Id. at ¶ 10 9. At the time, Mr. Levkovits assumed these Pizza Hut locations were available for repurposing because of a general loss of interest in the marketplace for the Pizza Hut brand. Id. at ¶ 11. 10. A possible alternative reason for availability, however, was Mr. Pandya’s ongoing legal dispute with Pizza Hut LLC who, having accused Mr. Pandya of breaching the franchise agreement in 2018, was operating with him under a forbearance agreement. See Pizza Hut, LLC v. Pandya et al., No. 4:19-cv-726-RWS, (E.D. Tex. filed Oct 4, 2019); Amended Complaint, Dkt. No. 12, filed Nov. 21, 2019 at ¶¶ 27, 29, 32 (alleging termination of Franchise Agreement as of Oct. 15, 2018 due to Pandya breach (¶ 27), alleging a Pandya November 18, 2019 email planning conversion of Franklin Mills location (now a Hot n’ Tender restaurant) into a “Mozz Kitchen – Pizza & Pasta” in breach of post-termination covenants (¶¶ 29, 32)); Order, Dkt. No. 34 (granting TRO to Pizza Hut, LLC in view of its showing of likelihood of success on the merits for breach of contract). 11. Mr. Pandya and Mr. Levkovits, following their March 25, 2019 meeting and over the next several months, began negotiating the terms of a joint venture agreement under which they planned to open HNT stores in the United States at former Pizza Hut locations. Levkovits Dl. at ¶ 12. - 3 - 12. In September of 2019, at Mr. Pandya’s request, Mr. Levkovits agreed to send his Architect to view locations proposed by Mr. Pandya for conversion to HNT chicken restaurants for the purpose of determining convertibility and plan designs for the locations as HNT chicken restaurants. Mr. Levkovits’s Architect stayed for ten (10) days and shared her findings with the relevant parties. Id. at ¶ 13. 13. On September 17, 2019, the relevant parties met for the last time before executing an agreement. During this meeting, the parties agreed that things were looking good and Mr. Pandya informed Mr. Levkovits that he would have his attorney draft and provide the agreement to Mr. Levkovits for signing. Id. at ¶ 14. FILING ACTIVITY 14. On September 19, 2019, Mr. Pandya, without the knowledge or consent of HCR, formed Defendant HNT-C with himself as the Managing Member. See HNT-C’s Answers (both Op. ‘211 and Op. ‘212), filed 5/20/20 at ¶ 15 (“Admitted, but objected to as irrelevant”). 15. Fourteen days later, on October 3, 2019, without agreement of any kind with HCR and without the knowledge or consent of HCR, HNT-C filed two “intent-to-use” applications with the United States Patent and Trademark Office (PTO): one for a word mark “HNT,” Ser. No. 88/641,784 (Op. ‘212), and the other for a mark with stylized lettering and a logo depicting an image of a chicken in profile for HNT HOT N’ TENDER, Ser. No. 88/641,797 (Op. ‘211) (jointly, the “Hot n’ Tender marks”). Levkovits Dl. at ¶¶ 15, 17-18 (contemporary writing evidences no agreement either express or implied as of application filing date), 20 (marks have never been assigned). - 4 - 16. In Op. ‘211, there can be no dispute that HNT-C applied to register HCR’s trademarks as shown by a side-by-side comparison: HNT-C’s application HCR’s Brazilian TM (Op. ‘211) Reg. No. 914391089 17. In Op. ‘212, HNT-C’s word mark application, for the acronym “HNT” is identical to a the “HNT” acronym prominently displayed as part of the logo shown above. 18. In both of its intent-to-use applications HNT-C swore out the declaration: “no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive.” which HNT-C addressed in its Answers. 19. In its Answers, HNT-C admitted to making the declaration but added a disclaimer: “true in the United States.” See Answer, Dkt. 4, Op. ‘211 at ¶¶ 19, 21 (“Admitted, and true in the United States”) see also ¶¶ 22-26 (answers depend on use in the United States); Answer, Dkt. 4, Op. ‘212 at ¶¶ 19, 21 (“Admitted, and true in the United States”), see also ¶¶ 22-26 (answers depend on use in the United States).

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