Federal Circuit Affirms Opposition to #TODECACHO Trademark Registration Due to Proven Prior Use and Likelihood of Confusion

Jalmar Araujo v. Framboise Holdings Inc., Case No. 2023-1142 (Fed. Cir. April 30, 2024)

The Federal Circuit upheld the Trademark Trial and Appeal Board’s (TTAB) decision to refuse registration of the standard character mark “#TODECACHO” for hair combs, finding that Framboise Holdings Inc. (“Framboise”) established prior use of its “#TODECACHO” design mark for hair products and demonstrated a likelihood of confusion. The court also affirmed that procedural extensions granted by the TTAB were appropriate and did not prejudice the applicant. This ruling illustrates the importance of credible evidence and procedural fairness in trademark disputes.

Case Background

Jalmar Araujo filed a trademark application for the standard character mark “#TODECACHO” on December 3, 2019, for use with hair combs. Framboise opposed the application, citing prior use of its “#TODECACHO” design mark for hair care products such as shampoos, conditioners, and hair masks. Framboise claimed it began using the design mark in U.S. commerce on March 24, 2017, and filed its own trademark application for the mark in April 2020.

During the TTAB proceeding, Framboise relied on a declaration from its director, Adrian Extrakt, to support its claimed first use date. Although Araujo challenged the timeliness and sufficiency of Framboise’s evidence, the TTAB accepted the declaration and ruled in favor of Framboise, citing credible evidence of prior use and a likelihood of confusion between the two marks. Araujo appealed the decision.

Federal Circuit’s Analysis

Procedural Fairness in Granting Extensions

Araujo argued that the TTAB abused its discretion by granting Framboise a seven-day extension to submit evidence. The Federal Circuit disagreed, noting:

• Good Cause Shown: The TTAB found that the delay was minimal, Framboise acted in good faith, and the extension did not prejudice Araujo.
• Compliance with Rules: The extension adhered to the TTAB’s procedural standards, which allow flexibility when delays are justified.

Evidence Supporting Prior Use

The Federal Circuit upheld the TTAB’s finding that Framboise established prior use of its mark by a preponderance of the evidence. Key factors included:

• Credible Testimony: The Extrakt declaration provided specific dates, examples of product use, and descriptions of records maintained by Framboise.
• Uncontested Evidence: Araujo chose not to depose Extrakt or present contradictory evidence, leaving the TTAB with undisputed claims of prior use.

Likelihood of Confusion

The Federal Circuit agreed with the TTAB’s determination that the marks were likely to cause confusion, considering:

• Similarity of Marks: Both marks incorporated the same distinctive term, “#TODECACHO,” creating visual and phonetic overlap.
• Related Goods: Both parties targeted similar consumer bases within the hair care market.
• Strength of Framboise’s Prior Use: Framboise’s earlier adoption of the mark bolstered its claim of likely consumer confusion.

Key Takeaways

• Credible Evidence Matters
  The Extrakt declaration demonstrated that detailed, well-supported testimony can establish prior use, even when provided by a single witness. Trademark applicants must actively counter such evidence to succeed.
• Procedural Extensions Are Permissible
  Courts recognize and uphold extensions when minimal delays are justified and do not harm the opposing party.
• Overlap in Marks and Goods Drives Confusion Analysis
  The ruling reaffirms the importance of similarity between marks, overlapping consumer bases, and the timing of use in likelihood of confusion determinations.

Conclusion

The Federal Circuit’s decision in Jalmar Araujo v. Framboise Holdings Inc. emphasizes the role of credible evidence, procedural fairness, and thorough analysis of confusion factors in trademark disputes. The ruling serves as a cautionary tale for trademark applicants to address procedural and evidentiary challenges effectively.

For the full decision, visit the Federal Circuit Opinions and Orders page.

To learn more about these issues, contact the author of this article, Arvind Jayakumar. Arvind is a brand protection attorney who counsels brands on how to prevent unfair competition, avoid unnecessary liability, and enforce their intellectual property rights. He has successfully litigated various commercial issues related to unfair competition, false advertising, trademark infringement, copyright infringement, breach of contract, and other business disputes. In addition to his litigation practice, Arvind boasts a robust trademark and copyright prosecution practice in which he helps brands register their intellectual property and secure IP rights.