Factions Having a Common History
by Pamela Chestek • April 25, 2011 • trademark
The caption tells it all: 100 Blacks in Law Enforcement Who Care, Inc. v. 100 Blacks in Law Enforcement Who Care. As explained by the TTAB:
|Opposers’ pleadings herein contain three grounds for refusing applicant registration: (1) priority and likelihood of confusion; (2) likelihood of dilution; and (3) that applicant is not the rightful owner of the mark.
. . . .
We are faced with the identical mark used in connection with identical services over a relatively long period of shared history. Hence, we find that traditional concepts of priority, likelihood of confusion, first use dates, dilution, etc., are of little help in resolving this dispute. Therefore, we focus our decision on the issue of ownership.
It’s really a simple fact pattern. The 100 Blacks in Law Enforcement Who Care organization first started in 1993 and operated for more than fifteen years as an unincorporated organization, but by late 2008 there was a schism. In November, 2008, one member, Mr. Noel Leader, registered the 100 BLACKS IN LAW ENFOREMENT WHO CARE mark with the state of New York in his own name. A few weeks later Mr. Marquez Claxton filed the involved application. Mr. Leader then incorporated the opposer in February, 2009 and sent a cease-and-desist letter to Mr. Claxton.
So how do we decide who owns the mark? For the TTAB, it comes down to the founding of the organization. The TTAB describes the two camps, one led by Mr. Leader and one led by Mr. Claxton. Mr. Leader was involved at the inception of the organization but Mr. Claxton joined two years later:
|Mr. Leader was the force behind the incorporation of 100 Blacks in Law Enforcement Who Care, Inc., as a for-profit corporation in New York State committed to civil rights advocacy. . . . Weighing the evidence as a whole, we find that opposers have established by a preponderance of the evidence that they have a clear historical lineage to the earliest days of the informal association known as 100 Blacks in Law Enforcement Who Care.
. . . .
Inexplicably, [Mr. Claxton’s] alleged period of use beginning in 1993 includes a two-year period when an informal, unincorporated entity was allegedly operating prior to 1995, the year in which Mr. Claxton alleges he was first invited to join the organization. He is also tacking onto more than a dozen years of shared history (1995 – 2008) with an organization allegedly founded by Messrs. Adams, Wells and Leader.
Without any other evidence corroborating Mr. Claxton’s claims to first use as of 1993, applicant’s involved application entitles it to claim December 4, 2008, as its priority date. Of course, this is more than a dozen years after the phrase 100 Blacks in Law Enforcement Who Care was adopted and first used. However, this shared history should not in any way create for applicant its own mark with its own first use date, i.e., ownership of this identical source indicator.
Accordingly, we find on the totality of this record, as a matter of trademark law, that opposer, 100 Blacks in Law Enforcement Who Care, Inc., is the owner of the mark 100 Blacks in Law Enforcement Who Care. In view thereof, opposers have proven their claim that applicant is not the rightful owner of the mark.
As a theoretical matter I think that who started an organization doesn’t necessarily tell the whole story. I can imagine a situation where a latecomer to an organization becomes so instrumental that he or she actually is responsible for the direction – the quality of the goods or services, if you will – offered under the mark. There was some slight evidence along that line in this case – Mr. Claxton was a public spokesperon and Mr. Leader a “key executive officer” during the same time period – but not enough to really know what the full picture looked like. Interestingly, both parties submitted the same web page as evidence of use:
So I think it’s a bit pat to say categorically that a dozen years of shared history is irrelevant. But without more substantial information about the current operations of the organization, I have no quibble with a decision that a founder (or the legal entity he forms) still heavily involved with an organization owns the trademark. I also don’t propose that it should be easy to snatch a trademark away from a founder. But a trademark is also about public perception, which should factor in.
I’m also a little confused procedurally. Note that the conclusion is that “100 Blacks in Law Enforcement Who Care, Inc., is the owner of the mark 100 BLACKS IN LAW ENFORCEMENT WHO CARE. In view thereof, opposers have proven their claim that applicant is not the rightful owner of the mark.” So is registration refused on the basis that the applicant is not the owner of the mark (a failure to comply with Section 1 of the Lanham Act) or because of likelihood of confusion (Section 2(d))? Both were alleged in the Complaint. If it was only the former, then awarding Mr. Claxton a priority date of 2008 is an irrelevant move. I always believe that it’s improper to have two different first use dates when there is a legal conclusion there is only one mark, because it’s nonsensical. But if the decision is also under Section 2(d), then priority is a predicate fact, so it makes sense.
Current web site here, if you’re interested in sports.
HT to John Welch for the case.
100 Blacks in Law Enforcement Who Care, Inc. v. 100 Blacks in Law Enforcement Who Care, Opp. No. 91190175 (T.T.A.B. April 12, 2011)
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