John Welch at The TTABlog® (my go-to resource for TTAB law) has blogged on my favorite kind of case, where two different entities claim to be the owner of the same mark. John summarizes the holding of the dispute (landlord wins), but I’m more interested in how the Board got there analytically.
It’s the same story that we see over and over, where trusting, good-hearted people run a business but the relationship ultimately goes south. Petitioner Ballet Tech Foundation, Inc. purchased a movie theater in downtown New York as a space for dance performance. Originally called the Elgin Theater, it was renamed the Joyce Theater to honor a major donor. For business reasons, Ballet Tech established the respondent/applicant and registrant The Joyce Theater Foundation, Inc. (the “Theater Foundation”) to run the facility. The Theater Foundation signed a lease with Ballet Tech to rent and operate the space, and as expected the ownership of trademark rights was never addressed in any of the formal documents. Initially the work of the two organizations was done by the same people who had overlapping roles within the two entities, although they became more separated over time.
There are many facts discussed in the decision, but a few are of particular interest given the outcome. The Theater Foundation’s registration of several trademarks for JOYCE formatives was at the behest of one of the founders of both organizations.* Also interesting was that the non-profit operating the theater was told it must use the name Joyce Theater Foundation for its corporate name.
The Board considered ownership a binary question: either the Theater Foundation owned the marks, or Ballet Tech owned the marks and the Theater Foundation was an implied licensee. The Board’s analysis is therefore effectively in two parts: (1) who owns the mark (Part A); and (2) did Ballet Tech control the Theater Foundation’s use of the marks, i.e., was the Theater Foundation a controlled licensee whose use, under Section 5 of the Lanham Act, would inure to the benefit of Ballet Tech (Parts B-E)? The second half of the analysis relied heavily on the law of abandonment in evaluating whether there was sufficient control.
In a thorough discussion of the facts, the Board held that Ballet Tech was the owner of the mark and that it indeed sufficiently controlled the Theater Foundation’s use of the marks. It therefore cancelled the various registrations and sustained the opposition.
I find it interesting that the Board treated the two questions separately – what if the Board found that Ballet Tech owned the mark but that there was no implied license? Would the Board have held that the mark was abandoned, the legal result of finding that there are uncontrolled licensees? This is one of my pet peeves, that is, courts that hold that a trademark is abandoned when it is still functioning as a mark. If it functions as a mark how can it be abandoned, which is defined as losing significance as a mark? Isn’t the only proper question WHO it is identifying, in other words, who owns it?
In this case, it seems to me that if the term was functioning as a mark (which no one questioned) and the evidence showed Ballet Tech was the owner, the Board went about it exactly backwards. Rather than investigating whether there was an implied contract (for which if the answer was “no” the trademark would be abandoned), it should have instead held that the legal result of Ballet Tech’s ownership of the mark was that the Theater Foundation’s use was pursuant to a contract implied in law.
I think the case is a closer call than the Board made it appear, and the Board looked to be a bit sympathetic to the petitioner in several instances. Notably, while the Board traversed the founder’s statement that it was the Theater Foundation that should register the mark, the Board did not even acknowledge that the certificates of registration were prima facie evidence of the Theater Foundation’s ownership of the marks. See DM Enter. & Dist., Inc. v. Ruta Maya Royalty, Ltd., Cancellation No. 92029327, 2004 WL 2368492, at *3 (TTAB May 28, 2004) (not citeable) (“The registration petitioner seeks to cancel is entitled to the prima facie presumptions under Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b), of the validity of the registration, of respondent’s ownership of the registered mark, and of respondent’s right to exclusive use of the mark in commerce in connection with the identified goods. Petitioner thus has the burden of submitting sufficient evidence to rebut these presumptions.”).
Ballet Tech occasionally itself rented the theater from the Theater Foundation and signed the standard rental agreement, which had some language in it about the Theater Foundation’s control over the use of the mark. In a squirrelly piece of analysis, the Board held that this was Ballet Tech’s delegation to the Theater Foundation to police the use of the JOYCE marks. Can a delegatee actually tell a delegator what to do? (But now some ammunition for all those wholly-owned subsidiary trademark holding companies out there).
The case does a thorough job of laying out in detail the evidence and the relevance of it. These kinds of cases are fairly rare, so it’s a great road map describing the kinds of evidence one might want to gather in a similar situation.
Ballet Tech Foundation, Inc. v. The Joyce Theater Foundation, Inc., Opposition No. 91180789 and Cancellation No. 92042019 (December 11, 2008).
* This is my favorite part: after learning that a non-profit could “trademark your name,” one witness said “I then began to proselytize wherever I went and speak to everybody about the fact that you could protect the name of a non-profit by registering it with the trademark entities, whatever they’re called.” The Board noted dryly “Ms. Cahan is not an expert in trademark law.”
© 2008 Pamela Chestek