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Album, S.A. v. Bata Brands S.A.R.L. Luxembourg, Succursale de Lausanne, Cancellation No. 92052238 (October 25, 2011) [not precedential].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.