Ttab Decisions and Developments

• Publication year: 2020
• Author: Jane Shay Wald

TTAB Decisions and Developments

Jane Shay Wald

Irell & Manella LLP

Opposer Proved Standing By Use Of A Trade Name That Was Made By Its Sub, Wholly Owned The Applicant's Branding Derived From The Same Name For Goods You Could Call "Telephoned"

This Opinion arose from a stipulated bifurcated proceeding to establish only the contested issue of whether Opposer had standing to oppose two application of Dormitus Brands LLC ("Dormitus"). Dormitus applied to register the standard character mark CINGULAR for a wide variety of telephonic goods, software and accessories in Class 9 as well as the CINGULAR mark and logo below, also for an array of such goods, in Class 9. AT&T Mobility LLC ("AT&T") opposed. The Board found that Opposer had proven standing based on trade name use by its wholly owned subsidiary.

Standing requires an opposer to prove a real interest in the proceeding "beyond that of a mere intermeddler," with a reasonable basis for its belief that it will be damaged. This has been clarified as a "direct and personal stake' in the outcome." Showing standing varies by the nature of the cause of action asserted. This Opposition alleged a number of grounds, including (1) false suggestion of a connection under Section 2(a) of the Trademark Act; (2) misrepresentation of source; (3) lack of bona fide intention to use the marks as of the filing date; and (4) that the applications are void ab initio due to an invalid assignment. "A belief in likely damage typically can be shown by establishing a direct commercial interest." However, as to a Section 2(a) claim, standing "'does not rise or fall on the basis of a plaintiff's proprietary rights in a term; rather, a Section 2(a) plaintiff has standing by virtue of who the plaintiff is, that is, the plaintiff's personality or 'persona.'" Even without likelihood of confusion, "for a claim under Section 2(a), Opposer need show only that it has a real interest in the proceeding and a reasonable belief that it will suffer injury flowing directly from the registration of Applicant's marks."

Standing need not be proven for each and every claim in an Opposition. If Opposer establishes standing on one claim, that is enough to go forward on all claims. "Once an opposer meets the requirements for standing on one claim, it can rely on any available statutory grounds for opposition set forth in the Trademark Act."

Opposer argues that it has proven standing

"based on (1)its persona as the original Cingular Wireless LLC, whose business continues to this day; (2) its interest in use of the term CINGULAR by its controlled subsidiary, New Cingular Wireless PCS, LLC ("New Cingular"), in its trade name; (3) its reasonable belief that due to residual goodwill in the marks, Applicant's use of the CINGULAR mark would 'cannibalize' Opposer's business; and (4) its reasonable belief that if the Federal Communications Commission ("FCC") were to receive complaints from consumers about Applicant's business conducted under the mark CINGULAR, the FCC would mistakenly and harmfully investigate Opposer."

Applicant argues that Opposer "abandoned the CINGULAR marks when it stopped using the mark after 'making the switch' to AT&T; that Opposer's CINGULAR registrations have expired; that New Cingular does business as AT&T Mobility and does not use its legal name (New Cingular Wireless PCS, LLC) except on formal legal documents; and that '[c]ustomer-facing interactions are under the name AT&T Mobility."

Applicant urged that New Cingular's use of the trade name "New Cingular Wireless PCS, LLC" appeared only in "'dense legal contracts and FCC tower leases and licenses' and that its 'public-facing' business with wireless retail customers is conducted only under the assumed name AT&T Mobility." The Board did not agree, saying, "We do not define 'public' so narrowly." The Board pointed to Opposer's many contracts and licenses of record where the trade name appears "in some cases prominently." "It would be viewed by those with whom New Cingular has entered into these agreements, such as professionals interested in the construction of cell towers as well as retail consumers purchasing cell phone wireless services under the AT&T Next program." The Board relied on National Cable Television Association v. American Cinema Editors, 19 USPQ2d 1424, 1428 (Fed. Cir. 1991) for the premise that the use of a trade name for plaintiff organization "within the titles and text of articles in its publications and correspondence" is sufficient to show use as a trade name. The Board noted that a trade name that lacks any independent significance as a trademark or service mark can nonetheless be asserted to bar registration on the basis of a likelihood of confusion with that trade name. In other words, even under circumstances where an Opposer could not itself assert trademark rights in its trade name, it is entitled to rely on its trade name to oppose if it asserts likelihood of confusion.

[Page 19]

The Board concluded that New Cingular uses CINGULAR as part of its trade name, and that the CINGLULAR trade name is known to the relevant public. There is no need for New Cingular to assert or own trademark rights in the trade name to have standing to Oppose.

Since the parent company of a wholly owned subsidiary "'can reasonably believe that damage to the subsidiary will naturally lead to financial injury to itself,'" the Board went on to examine Opposer's evidence proving it was in fact the parent of a wholly owned subsidiary. The Board considered numerous corporate documents of record, including a summary graph of Opposer's organizational structure. The Board concluded that Opposer had proven that it owns a majority interest in AT&T Mobility II LLC, which in turn owns a 100% interest in New Cingular. Therefore, the Board found Opposer had standing to continue with the Opposition in a subsequent proceeding.

AT&T Mobility LLC v. Mark Thomann and Dormitus Brands LLC, Opposition No. 91218108 (February 10, 2020).

Don't Claim To Be The Only One That You Intend Will Use Unless It's True, Not If There's Two Or Like This Guy, You'll Lose

The Board granted a Petition to Cancel the registration HOLE IN ONE for sports drinks on the basis that the underlying intent-to-use application for the registration was void ab initio as the Applicant did not intend to use the mark by himself, despite filing in his own name alone. The evidence showed that Respondent, instead, intended to use the mark with one Darryl Cazares, to form Hole-In-One Drinks, LLC, the Petitioner here. This rendered the resulting registration void ab initio. When Petitioner attempted to register the HOLE IN ONE mark; Respondent's registration was cited against its application, giving the Petitioner standing to bring this action.

Respondent, who represented himself without counsel in the Board matter, had previously filed incorporation documents with the California Secretary of State to establish Hole-In-One Drinks, LLC, identifying himself and Cazares as co-managers. In discovery, Respondent admitted Cazares...