Monday, December 22, 2008

Pamela Chestek: Who Owns "Joyce Theater"? - the Mark, Not the Building

Pamela Chestek discusses here at her Property, intangibles blog the TTAB's recent, precedential decision in Ballet Tech Foundation, Inc. v. The Joyce Theater Foundation, Inc., Opposition No. 91180789 and Cancellation No. 92042019 (December 11, 2008). Pam knows a lot about trademark ownership, as evidenced by her article, "Who Owns the Mark? A Single Framework for Resolving Trademark Disputes," in the May-June 2006 Trademark Reporter (pdf here).

Joyce Theater
8th Avenue and 19th Street, New York City

The TTABlog posting (here) summarized the holding of the case: Ballet Tech (the landlord) was deemed the owner, and the Joyce Theater Foundation (the tenant) was the (implied) licensee. Pam analyzes how the Board got there:

The Board considered ownership a binary question: either the Theater Foundation owned the marks, or Ballet Tech owned the marks and the Theater Foundation was an implied licensee. The Board's analysis is therefore effectively in two parts: (1) who owns the mark (Part A); and (2) did Ballet Tech control the Theater Foundation's use of the marks, i.e., was the Theater Foundation a controlled licensee whose use, under Section 5 of the Lanham Act, would inure to the benefit of Ballet Tech (Parts B-E)? The second half of the analysis relied heavily on the law of abandonment in evaluating whether there was sufficient control.

In a thorough discussion of the facts, the Board held that Ballet Tech was the owner of the mark and that it indeed sufficiently controlled the Theater Foundation's use of the marks. It therefore cancelled the various registrations and sustained the opposition.

I find it interesting that the Board treated the two questions separately - what if the Board found that Ballet Tech owned the mark but that there was no implied license? Would the Board have held that the mark was abandoned, the legal result of finding that there are uncontrolled licensees? This is one of my pet peeves, that is, courts that hold that a trademark is abandoned when it is still functioning as a mark. If it functions as a mark how can it be abandoned, which is defined as losing significance as a mark? Isn't the only proper question WHO it is identifying, in other words, who owns it?

So, let's ask the question: Who does the mark JOYCE identify? Might it be that JOYCE identifies the dance company as the source of the dance theater services, but Ballet Tech as the source of the fundraising services?

Text Copyright John L. Welch 2008.


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