An application filed by a person or entity that is not the owner of the mark is a void application. The owner is the one that controls the nature and quality of the goods and services sold under the mark. Opposer had the burden to prove that applicant was not the owner at the time of filing of the opposed application.
The Board’s review of relevant CAFC and Board precedent indicated that “under certain circumstances, ownership of a mark may pass from one entity to another without an assignment, and that one company may become the owner of a mark by controlling its use by a related company.” Here, however, the evidence did not show that applicant became the owner of the mark in any of the was discussed in the case law.
The Board found that the facts here “closely resemble” those in Great Seats Ltd v. Great Seats, Inc., 84 USPQ2d 1235 (TTAB 2007) [TTABlogged here]. When the opposed application was filed, there were two separate companies in existence, one individual was an officer and controlling shareholder of both, and both had a common address. However, those points of commonality do not suffice to make the companies related under Section 5 of the Lanham Act. Applicant would have to show that it, not the individual, controlled the nature and quality of the services rendered by Zarco Hotels, the corporation actually using the mark.
The record shows that Zarco Hotels began use of the HOLLYWOOD HOTEL mark in 1994 and owned it by virtue of that use; that Zarco Hotels has always held itself out to, and been identified by, the public as the owner and operator of the hotel offering services under that mark; that Zarco Hotels never assigned the mark to Applicant; and that Applicant never acquired its ownership as a related company or otherwise. When the opposed application was filed, Zarco Hotels and Applicant “constituted separate legal entities, and the application was filed by the wrong one.” Great Seats, 84 USPQ2d at 1241.
And so the Board sustained the opposition.
Read comments and post your comment here.
TTABlog comment: In December 2015, the Board denied opposer’s summary judgment in a precedential ruling (TTABlogged here). The Board rejected an attempt by Applicant Chateau Celeste’s president to change his testimony regarding licensing and control of the mark was rejected by the Board. Nonetheless, opposer’s evidence established only that Applicant was not the owner of the physical property known as the Hollywood Hotel at the time the subject application to register was filed.
Text Copyright John L. Welch 2019.