Precedential No. 23: TTAB Refuses to Grant Partial Summary Judgment Against Applicant Who Doesn't Own the Mark

In this opposition to registration of the mark VICE REI for "Wine; Spirits; Liqueurs; Anise liqueur," the Board denied Opposer Alfred Sarmento's motion for partial summary judgment grounded on non-ownership of the International Registration on which the opposed application was based. WIPO had cancelled the International Registration after the Portuguese Trademark Office ruled that Applicant Maria Manuela Pinho de Carvalho did not own the mark. Nevertheless, the Board gave its blessing to the transformation of the U.S. request for extension of protection into a national application with a Section 1(b) intent-to-use basis. Alfred Sarmento v. Maria Manuela Pinho de Carvalho, Opposition No. 91281917 (September 20, 2024) [precedential].

Sarmento (who is now the owner of the Portuguese registration) opposed Carvalho's application on four grounds: likelihood of confusion, non-ownership, and lack of bona fide intent, and on the purported ground that the application was void ab initio under Section 70(c) of the Trademark Act and Article 9quinquies of the Madrid Protocol based on an allegedly improper transformation from an extension of protection. He filed the subject motion for partial summary judgment on the non-ownership and the improper transformation claims.

Improper Transformation: The Board observed that Applicant Carvalho properly followed the procedures for transformation of a request for extension of protection under Section 70(c) of the Lanham Act, and it then held that Sarmento's contention that the mark was improperly transformed "cannot form the basis of an inter partes challenge to the registrability of the mark."

The Office’s Madrid Processing Unit (MPU) is charged with processing a request for transformation. Processing a request for transformation is a ministerial act, and there is no substantive examination of the document(s) or the permissibility of the circumstances that prompted the request for transformation. This processing does not include a decision on the legal sufficiency or the legal effect of the document(s) offered for the MPU’s consideration.

The Board therefore stuck this claim from the notice of opposition.

Non-ownership: The challenged application is based on Carvalho's alleged bona fide intent to use the mark in commerce under Section 1(b). There is no statutory requirement that a Section 1(b) applicant be the owner of the mark at the time of filing. The applicant must aver only that it believes itself (himself) to be entitled to use the mark in commerce and has a bona fide intention to do so. "Therefore, a claim that Applicant was not the rightful 'owner' of the mark as of the effective filing date of the involved intent-to-use application is not available." See Hole In 1 Drinks, Inc. v. Michael Lajtay, 2020 USPQ2d 10020, at *5 (citing Norris v. PAVE: Promoting Awareness, Victim Empowerment, 2019 USPQ2d 370880, at *4 (TTAB 2019)).

And so, the Board also struck this claim from the notice of opposition.

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TTABlogger comment: Something seems askew here. Carvalho had no right to obtain the IR in the first place. Why should she have the right to pursue a Section 66(a) application (and then transform it) based on that dead letter?

Text Copyright John L. Welch 2024.