The Board denied a petition for cancellation of a registration for the mark WHY PAY A LOT FOR STORAGE? for "Providing self-storage facilities for others," rejecting the claim that Registrant Gargoyle Management was not the owner of the mark. The mark was jointly owned by Petitioner Michael R. Postar and his brother David until they split in 2017 and stopped rendering the services. In 2019, Respondent, now owned only by David, began using the mark and registered it. That was okay, says the Board. Michael R. Postar v. Gargoyle Management, Inc., Cancellation No. 92082894 [not precedential] (Opinion by Judge Martha B. Allard).
In reponse to discovery requests, petitioner admitted that he had not used the involved mark in 2018, 2019, 2020, 2021, 2022, 2023, or 2024. The Board noted that "[a]n admission in response to a request for admission “conclusively establishe[s]” the matter that is subject of that request."
In 2017, when the business relationship between the brothers ended, they were unable to reach an agreement regarding the division of their business holdings, and so they voluntarily participated in a mediation. The result was a Mediation Agreement addressing the disposition of assets and liabilities, including the intellectual property assets: which included “logos, marks, etc., as well as all of the websites, domain names, and marketing assets,” all of which were, according to Michael’s testimony, “to be divided equally between [Michael] and David.” They then listed the assets in a separate document; however, the mark at issue here was not mentioned.
The Board found that the issue of abandomnet, at the heart of the dispute, had been tried by implied consent. In considering when the mark may have been abandoned, the Board considered whether the mark was abandoned prior to February 4, 2019, the filing date of Respondent’s underlying application.
The parties agreed that the mark, as used by the brothers jointly, appeared in telephone book advertisements in 2013- 2017, while they shared ownership of their storage business. "Thus, at the point the business was split in August 2017, the mark was an asset of the business and the record does not show that it was subsequently assigned to either brother."
Use of the mark ceased at least as of the date of the Mediation Agreement, August 24, 2017. "Moreover, due to the fact that the business was terminated and the mark was not assigned to either brother, we reasonably infer that the brothers through their former business discontinued use of the mark with intent not to resume such use joint use."
[T]he Mediation Agreement provides that the brothers agree to negotiate “which brand each member will use … as well as an equitable division of any other intellectual property, training videos, and marketing assets.” Because the brothers reached a timely agreement as to the division of the intellectual properly assets, as evidenced by the executed “Store Names, Logos & Trademarks” document, the literal terms of the agreement were met. Because the involved mark was not listed, it at best remained an asset of the jointly-owned business, and, as we discussed above, was abandoned when the brothers’ former business stopped rendering services. While neither Michael nor David may have expressly or impliedly “surrendered ownership of the Mark as a result of the MSA,” the mark’s abandonment occurred by operation of law.
Because the brothers abandoned the mark as of August 24, 2017, it was free for Respondent to adopt and use in its business. See Azeka, 2017 TTAB LEXIS 123, at *22. Accordingly, the Board found that when Respondent filed its application on February 4, 2019 based on use in commerce, it was the rightful owner of the mark.
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