Friday, November 11, 2011

TTAB Dismisses Cancellation Petition On Contractual Estoppel Ground

Invoking the doctrine of contractual estoppel, the Board entered summary judgement, dismissing a petition for cancellation of a registration for the mark MARIE CLAIRE for "women’s boots, shoes and sandals." The Board also dismissed Petitioner's motion for summary judgment based on a claim of abandonment. Marie Claire Album, S.A. v. Bata Brands S.A.R.L. Luxembourg, Succursale de Lausanne, Cancellation No. 92052238 (October 25, 2011) [not precedential].

The parties signed a consent agreement in 1986, resolving a cancellation proceeding brought on the ground of Section 2(d) likelihood of confusion. The agreement included these terms:

2. Bata agrees that it shall not use the mark MARIE CLAIRE on or in connection with any goods other than men’s, women’s, and children’s boots, shoes and sandals, or any other kind of variety of footwear (except hosiery) without the authorization of Marie Claire Album.

4. Marie Claire Album consents to the use or registration by Bata in the United States of the mark MARIE CLAIRE on or in connection with its goods, so long as such use is in accord with paragraph 2, above.

6. Marie Claire shall withdraw cancellation No. 14,624 upon the signing of the agreement, and shall not attempt to reinstitute cancellation proceedings based on the same set of facts alleged at the time of filing that petition.

9. This agreement shall remain in full force and effect so long as either party or any licensee or assignee continues to use the mark MARIE CLAIRE, or any registration of the mark by either party or a licensee or assignee remains in effect, or any new application for the mark is pending or has been approved.

Petitioner claimed that paragraph 9 requires that the MARIE CLAIRE registration be "effective," and that Bata has abandoned the mark. It also argued that the agreement “violates public policy" and that paragraph 6 "contemplates that future cancellation proceedings can be brought" on different facts, and here the cancellation proceeding is based on different facts.

The Board looked to the "plain terms" of the agreement:

The terms in paragraph 4 regarding use or registration are mirrored in paragraph 9--that is--the consent agreement provides petitioner’s consent to respondent’s use of MARIE CLAIRE or respondent’s registration of MARIE CLAIRE. Thus the conditions of the agreement are met by either respondent’s continued use of or respondent’s maintenance of a registration of MARIE CLARE. *** The terms in paragraph 9 with regard to registration simply require that the MARIE CLAIRE registration remain in registered-renewed (rather than expired) status. We also read paragraph 6 as an agreement by petitioner that it will not seek to relitigate the issues resolved by the consent agreement, not a provision that contemplates future cancellation proceedings.

Concluding that Petitioner, as a matter of law, is contractually estopped from petitioning for cancellation of the MARIE CLAIRE registration, the Board granted Bata's motion for summary judgment, and denied Petitioner's motion.

TTABlog comment: Is this petition based on the "same set of facts as alleged" in the original petition? If Bata has indeed abandoned the mark, wouldn't the public interest be served by allowing a petition for cancellation? And isn't this Petitioner the one most likely to bring such a petition?

Text Copyright John L. Welch 2011.


At 10:20 AM, Anonymous Orrin A. Falby said...

I agree with the Board's interpretation of Pragraph 9 of the agreement -- that the agreement remained in effect because the registration was still active.

I do not see how they come to the conclusion that the petitioner is estopped from bring the new claims. In fact, they did not even address Paragraph 6 substantively. The first proceeding was based on a likelihood of confusion and the agreement resolved that issue. This proceeding was based on fraud and abandonment. There is no general release in the agreement. In my opinion, this case should have been allowed to move forward on the merits of the claims raised in the new proceeding, which were different from those in the first. I think the Board got it wrong here!!

At 8:09 PM, Blogger Pamela Chestek said...

I get to the same conclusion as the Board. I think was all agree that paragraph 9 describes termination of the agreement and it's not terminated.

Then in paragraph 4 Marie Claire "consents to the ... registration by Bata in the United States of the mark MARIE CLAIRE on or in connection with its goods...." The remainder of the paragraph ("so long as such use is in accord with paragraph 2, above") is irrelevant because it only relates to the "use" condition, not the "registration" condition. This means there is some textual ambiguity about what "its goods" are for purposes of registration, but pretty clearly that will be boots, shoes and sandals.

So paragraph 4 clearly states that Marie Claire consents to registration without any condition that there be use, since use and registration were disjunctive conditions. This leaves us with paragraph 6. I agree that it's ambiguous - normally the qualifier "based on the same set of facts" would mean that a different set of facts is fair game as the basis for a cancellation (and that's probably what Marie Claire was hoping for at the time of negotiation). But, given the clear assent to registration in paragraph 4, I think the better interpretation is the Board's, that this qualification doesn't mean what one might initially think it means.


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