Wednesday, June 20, 2007

Precedential No. 43: TTAB Cancels Registration on the Ground of Non-ownership

The Board cancelled a registration for the mark GREAT SEATS INC. in the logo form shown below, for ticket agency services, because the application that matured into the registration was not filed by the owner of the mark, as required by Section 1(a) of the Trademark Act. Danny Matta, the founder of Respondent Great Seats, Inc., filed the application in the name of one company (formed in 1997), but a second company (formed in 1990) was actually using the mark. Despite Matta's ownership of both companies, Respondent was unable to convince the Board that the two companies were the same enterprise or were "related companies" under Section 5 of the Act. Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235 (TTAB 2007) [precedential].

Mr. Matta maintained that he always had only one ticket brokerage firm, although it went through several name changes. He claimed to be unaware of the formation of the 1997 corporation. However, he signed the application for registration on April 21, 1997, in the name of the 1997 corporation, claiming a first use date of March 1, 1997, a date prior to the formation of the 1997 corporation on March 12. Further complicating the situation, the two companies swapped names in July 1997.

Under Section 1(a), only the owner of the mark may file an application to register. Otherwise, the application is void ab initio. Here, the Board ruled, the owner of the mark was the actual user of the mark, the 1990 corporation.

Respondent contended that the two corporations "were merely earlier and later manifestations of the same single continuing commercial enterprise," and that Matta's signing of the application was a curable defect. Not so, said the Board. This is not a case involving the misidentification of a single, ongoing enterprise, but a case where two separate enterprises were in existence at the same time. The application was filed by the wrong entity.

As to Respondent's "related company" argument, this would require that use of the mark by the 1990 company be controlled by the 1997 company (at least from the latter's formation) as to the nature and quality of the services. There was no evidence of such control. Although Mr. Matta was the controlling shareholder of both companies and they shared common premises, there was no evidence that he exercised control over the 1990 corporation in his capacity as officer of the 1997 corporation.

"On this record, any such control by Mr. Matta over the [1990] corporation was exercised by Mr. Matta either in his individual capacity as principal executive officer of the [1990] corporation itself, or in his individual capacity as owner of both corporations."

Consequently, the Board found that the two companies were not related for purposes of Section 5.

In sum, the Board deemed the application void ab initio and it granted the petition for cancellation.

TTABlog comment: Why does the phase "form over substance" keep popping into my head?

Text Copyright John L. Welch 2007.


Post a Comment

<< Home