TTAB Dismisses “OCALA HORSE PROPERTIES” Cancellation Petition Due to Lack of Standing

Standing is a hurdle that TTAB plaintiffs almost always clear. Not this time. The Board dismissed this petition for cancellation of a registration for the mark OCALA HORSE PROPERTIES for “Real estate agencies; Real estate brokerage” because the named petitioner failed to establish “that it is a juristic association under the laws of Florida that could assert the claims alleged or the relief requested in this cancellation proceeding without the participation of individual members in the lawsuit.” Citizens for the Fair Use of “Ocala Horse Properties” v. Ocala Horse Properties, LLC, Cancellation No. 92061767 (September 26, 2019) [not precedential] (Opinion by Judge Jyll Taylor).

Standing is a threshold requirement that the plaintiff must prove in every inter partes proceeding. Section 14 of the Lanham Act states that “[a]ny person who believes that he is or will be damaged … by the registration of a mark” may file a petition to cancel the registration. The term “person” includes “a juristic person,”which includes an association. See Lanham Act Section 45. According to the TMEP, an “association” is a recognized juristic entity when it is organized under state laws or federal statutes that govern this form of organization. TMEP Section Section 803.03(c) (2019).

Petitioner identified itself as a Florida association comprised of seven real estate businesses who claimed the rights to use “Ocala horse properties” in their businesses.

An association has standing if it proves that: (1) its members would otherwise have standing to sue in their own right; (2) the interest it seeks to protect are germane to the organizations’ s purpose; and (3) neither the claim asserted nor the relief requested requires the participation of individual members in the lawsuit. See Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2025 (Fed. Cir. 1987).

Petitioner satisfied prongs (1) and (2) of the test. [Can you satisfy a prong? ed.] The individual “members” of petitioner testified that, as real estate agents in Ocala, Florida, they would be harmed if they were not allowed to use the term “OCALA HORSE PROPERTIES” in connection with their businesses.

However, Petitioner failed to satisfy the third prong: it failed to show that it is an association under the law of Florida. In fact, the testimony of its purported members belied such a showing. There was no written agreement between the participants in the group, nor had the group conducted any business. There were no meetings of the group and no communications among the “members.”

Under the circumstances, we find that the organization known as Citizens for the Fair Use of “Ocala Horse Properties” has not demonstrated that it is a juristic association under the laws of Florida that could assert the claims alleged or the relief requested in this cancellation proceeding without the participation of individual members in the lawsuit. Indeed, instead of referring to the single entity of an association, the parties in the record refer to plaintiff in the plural, as Petitioners. Accordingly, Petitioner, Citizens for the Fair Use of “Ocala Horse Properties,” “an asserted Florida association,” has not proven standing to bring the petition.

And so the Board dismissed the proceeding for lack of standing.

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TTABlog comment: Curiously, there was no discussion of what Florida law is or how one satisfies Florida law.