The Trademark Trial and Appeal Board (TTAB; the Board)) just issued a decision in a Petition for Cancelation proceeding - Cancellation No. 92075544, which we filed about two years ago on behalf of one of our Orange County clients. We filed the petition to request the Board to cancel the registration by one of its former officers of its trademark, which it owned and used for many years here in Orange County, California, and beyond. This trademark was an important asset for our client and our client wanted to preserve its full ownership over this trademark it invested in for many years.

As argued and expected by CIONCA IP, the Board relied on established law regarding:

·      Owner of a trademark is the entity that controls the trademark and an application must be filed by the owner of the trademark; the Board held:

o   One must be the owner of a mark before it can be registered.” Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335, 1336 (Fed. Cir. 1988) (quoting Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630, 635 n.6 (CCPA 1976)); see also Trademark Act Section 1(a), 15 U.S.C. § 1051(a) (“[t]he owner of a trademark used in commerce” may apply for its registration). “[A]n application filed by one who is not the owner of the mark sought to be registered is a void application.” Hollywood Casino LLC v. Chateau Celeste, Inc., 116 USPQ2d 1988, 1992 (TTAB 2015)… The owner of a mark is the entity that controls the nature and quality of the goods or services sold under the mark. See generally Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1421 (TTAB 2016).

All the evidence pointed to our client owning the trademark because it controlled the quality of its goods and services associated with the trademark.

·      Copyright ownership does not translate into trademark ownership; the Board held:

o   Registrant’s emphasis in her Brief on her alleged ownership of the copyright in an earlier version of the logo as an indication that she is the true owner of the registered mark at issue, is misplaced. “[I]t is the prevailing law that ownership of a copyright confers no trademark rights on the copyright owner…. That is to say, [Respondent] owns no trademark rights in the term ... simply by virtue of [her alleged] ownership of a copyright....” Clamage Indus. Ltd. v. Glendinning Cos., Inc., 175 USPQ 362, 363 (TTAB 1972); see also Moke Am. LLC v. Moke USA, LLC, 2020 USPQ2d 10400, at *38 n.48 (TTAB 2020), rev’d on other grounds, Civ. No. 3:20cv400 mem. op. (E.D. Va. May 3, 2023) (“[O]wnership of a copyright in a design does not, without more, establish that the copyright owner owns any trademark rights in marks that include the design.”).

The registrant tried to argue here that she created an original design for this logo trademark and thus she owned the trademark. Obviously, the Board was not persuaded since the established law set forth above says otherwise.

·      A trademark registration is invalid if there was no use in commerce of the trademark at the time the application was filed based on use in commerce; the Board held:

o   Although Registrant’s non-ownership alone suffices to grant the petition to cancel, we briefly address Petitioner’s non-use claim as well. If it is shown that a registrant made no provable use in commerce of its mark as of the filing date of its underlying use-based application, the resulting registration is invalid for non-use under Section 1(a) of the Act, 15 U.S.C. § 1051(a). ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1045 (TTAB 2012); see also Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1064 (TTAB 2017) (explaining that non-use provides an “independent basis to cancel Respondent’s registration.”). In such cases, the underlying application is deemed void ab initio.

This registrant not only did not use the trademark but used our client’s specimens to attempt to prove use! This evidence favored our client claim of ownership of the trademark.

In conclusion, because this registrant (1) did not own the trademark, and also because (2) did not use the trademark at filing, the registration she obtained from USPTO was invalid and thus subject to cancelation by the Board.

You can read entire TTAB decision at https://ttabvue.uspto.gov/ttabvue/v?pno=92075544&pty=CAN&eno=26 .