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INTA Bulletin

December 15, 2017 Vol. 72 No. 21 Back to Bulletin Main Page

UNITED STATES: Trademark Licensee’s Priority Derives from its Own Use (and Not From its Licensor’s Use)

The Trademark Trial and Appeal Board (Board) held that the plaintiff licensee in an opposition and cancellation proceeding could not establish priority of use over the defendant based on any common law rights previously acquired by the plaintiff’s licensor. Julie A. Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028 (TTAB Sept. 8, 2017). 

Julie A. Moreno (the plaintiff) filed a cancellation petition against one trademark registration (CASANOVA in standard characters), and filed opposition proceedings against two trademark applications (design marks featuring CASANOVA), each identifying sports and athletic equipment, all of which related to boxing gloves, boxing bags, training equipment, and similar various goods, owned by Pro Boxing Supplies, Inc. (the defendant).

As an initial matter, the Board considered the plaintiff’s standing, which was premised on the plaintiff’s rights under a license from Deportes Casanova, a non-party to the proceeding based in Mexico City and the owner of a trademark registration in Mexico for CASANOVA for boxing gloves. Deportes Casanova, which has been using the mark CASANOVA in Mexico for more than 60 years, does not own a U.S. trademark registration, though the evidence suggested longstanding use in the United States. The Board determined that the exclusive trademark license granted by Deportes Casanova to the Licensee on July 23, 2013, to use the mark in the United States “is a valid and enforceable contract,” and as a result, the plaintiff “has a real interest in, and thus standing to pursue, these proceedings.”

Next, the Board acknowledged that contemporaneous use of the marks at issue would be likely to cause confusion. The critical issue turned on which party had priority of use. The defendant relied on its registration and applications as proof of constructive use of its marks. The plaintiff, however, had no U.S.-based registration or applications upon which to rely. Instead, the plaintiff sought to establish priority by the common law use of the mark by its licensor. The defendant’s registration claimed a first use date of December 31, 1993 (and each application, January 30, 2003). Evidence presented during the proceedings suggested that Deportes Casanova could establish common law use in the United States for many years before 1993 (although a date certain was not established, with proffered testimony from various parties claiming use as early as 1968, 1979, and 1982).

In holding that the plaintiff could not prevail as to the issue of priority, the Board explained that the plaintiff “does not argue in her brief, and we do not find, that she personally used the licensed mark CASANOVA before [the defendant’s] constructive use of its . . . marks.” And, addressing an issue of first impression, the Board held that the plaintiff could not rely on the licensor’s prior common law trademark rights. “It is well-settled that use of a mark by a licensee inures to the benefit of the trademark owner,” the Board explained. But the plaintiff “has provided no authority for the converse principle, i.e., that use of a mark by the controlling trademark owner inures to the benefit of the licensee, and we are aware of none.” Furthermore, because the trademark license between the plaintiff and Deportes Casanova expressly disavowed any transfer of ownership to the plaintiff, the Board declined to view “the license as tantamount to an assignment of the mark, which might have allowed [the plaintiff] to assert whatever priority rights Deportes Casanova may have in the United States in the mark CASANOVA” (emphases added).

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position. 
© 2017 International Trademark Association