Tuesday, April 14, 2009

TTAB Finds No Trademark Rights in OEM Who Applied "WASTEMAID" Mark at Others' Direction

In a 41-page, fact-packed opinion, the Board disposed of Anaheim Manufacturing Company's opposition to registration of the mark WASTEMAID in the design form shown below, for "food waste disposers, garbage disposers." Discarding Anaheim's likelihood of confusion claim (as well as its fraud and lack-of-bona-fide-intent claims), the Board found that Anaheim is a private label supplier who placed the subject mark on products at the direction of others, and never used the mark to identify itself as the source of the products. Because the opposed application was based on intent-to-use, the opposition was dismissed contingent upon the issuance of a registration certificate to Joneca Corporation. Anaheim Manufacturing Company v. Joneca Corporation, Opposition No. 91171906 (March 26, 2009) [not precedential].

The Board ground its way through the "voluminous" record and the "exhaustive" testimony depositions, to find that there is "no association between the WASTEMAID and Design mark and opposer as the source of the products in the mind[s] of the relevant consumers." In short, Anaheim failed to prove that it has a proprietary interest in the mark prior to Joneca's filing date (i.e., its filing date), and so its Section 2(d) claim was trashed.

Anaheim's fraud claim hinged on the assertion that Joneca, its sales representative and distributor, knew that any use of the mark by Joneca inured to the benefit of Anaheim. However, Joneca was never aware that Anaheim claimed ownership of the mark, and "[b]ased on applicant’s experience as opposer’s sales representative and a distributor, applicant viewed opposer as a private label supplier of the WASTEMAID and Design garbage disposers for Wilec Ltd."

Joneca believed that another company had prior rights to the mark in the United states, and when that company let its U.S. Registration expire, Joneca could have believed that it could claim ownership via its intent-to-use application. Therefore, Joneca did not knowingly make a false statement when it filed its application.

As to its bona fide intent, Anaheim argued that Joneca's could not have a bona fide intent because, pursuant to the agreements between the parties, Joneca was obligated to act on Anaheim's behalf. The Board, however, found no obligation on Joneca relating to ownership of the subject mark. In any case, even if Joneca breached the contract, "it is not apparent how that breach establishes that applicant's intent to use the mark was not a bona fide intent."

And so the Board sent all of Anaheim's claims down the drain, dismissing the opposition, contingently.

Anaheim Disposer

TTABlog note: Pamela Chestek, expert on trademark ownership issues, comments here at her Property, intangible blog.

Text Copyright John L. Welch 2009.


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