Friday, September 10, 2010

TTAB Decides Dispute Between Two Lubavitch Chassidic Factions over Kehot Logo

In this dispute between two factions of the Lubavitch Chassidic community, the Board dismissed an opposition to registration of the emblem shown below [the "Kehot logo"], for "books, magazines, charts, maps, and photographs on a variety of aspects of Jewish life." The Board concluded that Applicant is the owner of the logo, and that Opposer failed to prove any of its several theories in support of the opposition. Vaad L'Harotzas Sichos, Inc. v. Kehot Publication Society, a division of Merkos L'Inyonei Chinuch, Inc., Opposition No. 91156051 (August 30, 2010) [not precedential].

Opposer pursued two grounds for opposition: that the First Amendment bars the registration, and that Applicant is not the owner of the mark. Opposer also claimed that the Board does not have jurisdiction and that the dispute should be decided instead by the Beth Din of Crown Heights (a Jewish religious court).

Jurisdiction: Opposer contended that "applicant must have this matter settled by what is essentially alternative dispute resolution because the Rebbe, as president of applicant, bound applicant to do so." The Board, however, agreed with Applicant that Opposer waived its right to seek alternative dispute resolution through the Beth Din. Moreover, the issue was never raised in the notice of opposition, nor was it tried with the consent of Applicant.

First Amendment: The Board refused to consider this claim because it was neither pleaded in the notice of opposition, nor tried with Applicant's consent.

Ownership: Viewing the entire record, the Board found "ample support for the conclusion that Kehot Publication Society is a division of Merkos, and that Merkos is the owner of the KEHOT logo and is the proper applicant for this trademark. Put another way, opposer has not met its burden of proving by a preponderance of the evidence that Kehot is not a division of Merkos." Nor did Opposer prove that Merkos lost its rights in the KEHOT logo, or that Vaad obtained them.

Finally, Opposer argued in its brief that KEHOT is not a trademark, but represents something spiritual: namely, that the Rebbe has sanctioned the material identified by the logo. The Board, however, saw the Rebbe's actions in approving the use of the logo as being "no different from any other trademark holder."

Further, the record shows that both the Previous Rebbe and the Rebbe treated the KEHOT logo not as some spiritual or holy item. Rather, they each took the business steps that any trademark owner would take with respect to a trademark, including filing for protection of the mark under the laws of New York State.

The Board concluded that Opposer had failed to meet its burden of proof as to any of the theories that it advanced, and so it dismissed the opposition.

Text Copyright John L. Welch 2010.


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