• It’s About the Evidence

    by  • August 27, 2018 • trademark • 0 Comments

    Whole Foods Market filed an application to register the mark IDEAL MARKET for grocery stores, giving a first use date in 1940. Opposers Muwafak Kaki and Kaki Inc. opposed on the basis that they were joint owners of an IDEAL MARKET trademark that predated Whole Foods’ first use. Whole Foods filed a motion for summary judgment on priority.

    Whole Foods claimed it had use of the mark through various precedessors-in-interest. The store was started by Clark Chapman, who sold it to Steve LeBlang in 1989, who sold it to Wild Oats Market, Inc. in 1998. In 2007 Wild Oats merged with Whole Foods.

    That would be all well and good if it was supported by evidence. The chain of title was attested to in a declaration by Red Elk Banks, the Rocky Mountain Regional Vice President of Operations at Whole Foods Market. Banks had been employed by Whole Foods Market from 1995. His declaration was based on his own personal knowledge or based on business records made available to him during his career at Whole Foods. However,

    Mr. Banks has provided no basis for establishing that he has personal knowledge regarding the sale of the IDEAL MARKET grocery store from Mr. Chapman to Mr. LeBlang in 1989. The sale occurred six years prior to Mr. Banks’ employment with Whole Foods, and was between two parties unrelated to Whole Foods at the time.

    Although the sale of the IDEAL MARKET grocery store from Mr. LeBlang to Wild Oats occurred in 1998, at a time when Mr. Banks was employed by Whole Foods, Wild Oats and Whole Foods were separate entities until their merger in 2007, and Mr. Banks has not established the basis for his personal knowledge of the 1998 acquisition of the IDEAL MARKET grocery store by Wild Oats.

    As to his review of business records, Banks’ statements about what any documents might have said was inadmissible hearsay:

    While Fed. R. Evid. 803(6), made applicable to Board inter partes proceedings by operation of Trademark Rule 2.116(a), allows for the introduction into evidence of qualifying business records, as an exception to the hearsay rule, there is a distinction between the admissibility of business records, and witnesses testifying in their personal capacity. Testimony from such individuals based on a review of business records is inadmissible hearsay if the witness lacks personal knowledge:

    [T]he [business record hearsay exception] rule does not provide for the admission into evidence of the testimony of a person who lacks personal knowledge of the facts, who is unable to testify to the fulfillment of the conditions specified within the rule, and who is testifying only about what he has read or has been allowed to review.

    The records themselves would not have been hearsay if admitted as qualifying business records, but Whole Foods did not provide the actual documents showing the chain of title, it only had Banks’ testimony. Whole Foods therefore failed to meet its burden of showing there was no genuine dispute of material fact on ownership and summary judgment was denied.

    Kaki v. Whole Foods Market IP, L.P., Opposition No. 91224191 (TTAB Aug .22, 2018)

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