What a confusing ownership case (which perhaps means that the wise reader stops right here). Errors on every level, at the end of the day unrecoverable.
The parties are Paradise Biryani, Inc. (PBI), Paradise Biryani Express, Inc. (Express), and Biryani Point Paradise LLC (PBB) on one side, and Paradise Hospitality Group, LLC (PHG) on the other.
PHG owns two registrations, for PARADISE INDIAN CUISINE in word form and with a logo,
The applications and registrations on the other side were for the word marks PARADISE BIRYANI POINTE and PARADISE INDIAN CUISINE, filed by Narsing Raj Gowlikar (Raj), who was a shareholder in Express. The application for the logo form of the PARADISE BIRYANI POINTE mark
was filed about a year later, this one in the name of BPP.
The two applications for PARADISE BIRYANI POINTE, word form and logo, registered, but PBI’s application for PARADISE INDIAN CUISINE is still pending. Everyone’s applications and registrations are for restaurant services. The four registrations are the subjects of four separate cancellations, all consolidated. Note in particular that the petitions to cancel the PHG registrations were filed by PBI, not Express.
The PARADISE BIRYANI POINTE registrations have a troubled ownership history. After the PARADISE BIRYANI POINTE word mark registered, it and the PARADISE INDIAN CUISINE application were assigned. The cover sheet for the assignment was from Raj to PBI, d/b/a Paradise Biryani Pointe, but the actual assignment document itself was an assignment from Raj to Express.
Because the application for PARADISE INDIAN CUISINE was refused, in March and April 2012 PBI petitioned to cancel the PHG registrations on the basis that they were likely to be confused with PBI’s registrations for PARADISE BIRYANI POINTE and the pending application for PARADISE INDIAN CUISINE. In October, 2013, the TTAB denied summary judgment, stating there was a genuine dispute of material fact as to whether PBI was the proper petitioner and proper owner of the pleaded marks. On March 7, 2014, PBI tried to change the record ownership in the two registrations by filing Section 7 Requests asking for the name of the owner to be changed. For the word mark, the request stated:
The full legal name of the corporate entity which holds Reg. No. 4,047,868 is Paradise Biryani Express, Inc. d/b/a Paradise Biryani Pointe. In everyday parlance among those familiar with the company it is referred to as ‘Paradise Biryani, Inc.’ Narsing Raj Gowlikar, the sole owner of Paradise Biryani Express, Inc. d/b/a Paradise Biryani Pointe, was unaware that this distinction might be important when he retained counsel to protect the PARADISE BIRYANI POINTE Mark he has worked so hard to establish. As a result, all parties involved have simply been referring to the shorthand ‘Paradise Biryani, Inc.’ when the proper Paradise Biryani Express, Inc. d/b/a Paradise Biryani Pointe should have been referenced. Pursuant to TMEP 1201.02(c) this is a correctable error. Furthermore, this error was made by the registration owner in good faith, therefore we respectfully request that the Registrant’s name be corrected accordingly.
For the logo, owned by PBB, the request stated:
The full legal name of the corporate entity which holds Reg. No 4,208,745 should have been listed as Paradise Biryani Express, Inc. d/b/a Paradise Biryani Pointe. Narsing Raj Gowlikar, the sole owner of Paradise Biryani Express, Inc. d/b/a Paradise Biryani Pointe and BPP, was unaware that this distinction might be important when he retained counsel to protect the PARADISE BIRYANI POINTE + Design Mark he has worked so hard to establish. As a result, all parties involved have simply been referring to ‘Paradise’ as an overall term for both companies when the proper Paradise Biryani Express, Inc. d/b/a Paradise Biryani Pointe should have been referenced in the application itself. Pursuant to TMEP 1201.02(c) this is a correctable error. As this was an inadvertent error by the registration owner, made in good faith, we respectfully request the registration certificate be corrected accordingly.
Several days later PBG filed petitions to cancel the two PBI registrations on the basis of abandonment and non-ownership.
The PTO denied PBI’s Section 7 requests because the registrations were the subjects of an inter partes proceeding.1 PBI then tried with the TTAB, filing a motion to correct the name of the owner for the PARADISE BIRYANI POINTE registration and PARADISE INDIAN CUISINE application on April 11, 2014. The Board denied the motion on May 7, 2014, stating that it had no jurisdiction.
On April 16, 2014, the logo registration was assigned from BPP to Express. On May 8, 2014, PBI finally tumbled to the right way to fix the problem with the word marks, doing what should have been done at the outset, which was to simply file a corrective assignment, correcting the error in the original cover sheet. Which means that we finally have the two registrations in suit, plus the application, all owned by Express.
And it brings us to the present opinion. The Board starts with PHG’s cancellation of the PARADISE BIRYANI POINTE registrations. Based on the evidence, the Board held that Raj was not the owner of the word mark, nor was Briyani Pointe Paradise, LLC the owner of the logo mark, at the time the applications were filed. Raj and his wife incorporated Express in New Jersey in 2007 and Express “ran” this first restaurant. Subsequent Paradise Biryani Pointe restaurants are franchises, each separate LLCs, and franchise agreements entered into before the appications were filed listed Express as the licensor. Raj was also not the sole owner of Express; instead he owned it with his wife and, for a period of time, a third person.2 The two Express registrations were therefore cancelled on the basis that they had not been filed by the owner.
Next are PBI’s petitions to cancel the PBG registrations, based on the now-cancelled registrations and the pending application. Recall that these cancellations were filed by PBI, not Express.
Q. Now, is there a Paradise Biryani, Inc.?
A. [Raj] Paradise Biryani Express, Inc., that’s a parent company doing
business as Paradise Biryani Pointe. There was a clerical error, I
guess. Express was missing. But Paradise Biryani Express, Inc., is
the complete name when I formed the company in 2007, January
29th. And again, I did a DBA immediately after one week also. So we
do as business as –
Q. I believe what you just said – could you just repeat what you just said
about a clerical error?
A. Yeah. When we assigned or when we filed, there was Express
missing, but the company name Paradise Biryani Express, Inc.,
That’s the parent which I formed.
And easily enough for the Board, “In view of this testimony, we find that PBI is a nonexistent entity that does not have standing to maintain the cancellation proceedings against PHG.”
Final score: 4 for Paradise Hospitality Group (5 if you count the pending application) – 0 for Paradise Biryani Express, Inc.
This ownership stuff matters. The owner must file the application, the application doesn’t create ownership. And non-existent entities can’t file lawsuits.
Paradise Biryani, Inc. v. Paradise Hospitality Group, LLC, Cancellation Nos. 92055264, 92055487, 92058843, 92058851 (TTAB Aug. 7, 2017).
This work is licensed under a Creative Commons Attribution-NoDerivatives 4.0 International License.
The Board also had another thought on this effort: “We would be remiss if we did not point out that these types of errors are among those listed
as ‘non-correctable’ in TMEP § 1201.02(c).” ↩
The opinion doesn’t explain the relevance of this, but I assume
it is to avoid the very messy law around ownership of trademarks as
between a person and the entity that the person solely owns. See In re
Hand, 231 USPQ 487 (TTAB 1986)(“if facts were presented to show that an individual ownership of a corporation was so complete that the two legal entities ‘equitably constituted a single entity,’ then sufficient control by the individual with use by the corporation inuring to the individual’s benefit would be found.”) ↩