Wednesday, December 17, 2008

Precedential No. 53: TTAB Decides Ownership Dispute over "JOYCE" for Dance Theater and Charitable Services

Once again the landlord bested the tenant, this time in a service mark ownership battle. Finding that the landlord (Ballet Tech Foundation, Inc.) is the owner the marks and that the tenant (The Joyce Theater Foundation, Inc.) used the marks under an implied license, the Board sustained an opposition to one application, and granted a petition for cancellation of five registrations, for the mark JOYCE (in various forms) for dance theater and charitable fund raising services. Ballet Tech Foundation, Inc. v. The Joyce Theater Foundation, Inc., 89 USPQd 1262 (TTAB 2008) [precedential].

Joyce Theater
8th Avenue and 19th Street, New York City

Citing the McCarthy treatise, the Board observed, rather generally, that "the resolution of a service mark dispute between a landlord and tenant depends on the facts and a weighing of the policies and circumstances of each case." Here, there was no express contractual provision regarding ownership and use of the JOYCE marks, and so the Board had to "examine the dealings of the parties to determine the ownership of the JOYCE marks and whether there was an informal system of quality control sufficient to support an implied license."

The Board noted that there was "no real dispute about the operative facts; rather the parties disagree about what the facts mean." [It suggested in footnote 9 that this case "would have been a good candidate for Board's accelerated case resolution procedure ("ACR")"] Summarizing the facts at length in its 38-page decision, the Board found that:

the course of conduct between the parties created an implied license. First, when petitioner purchased the Elgin Theater and then formed respondent, petitioner intended to own the name of the theater and license it to respondent. Second, petitioner designed respondent so that petitioner could maintain control over it and, thus, maintain control over the name of the theater. Third, the lease, as evidence of the dealings between the parties, provides that respondent must render "first class" dance theater services, cannot make alterations or changes to the theater without petitioner's consent, and upon termination of the lease for any reason, including a default or breach by respondent, respondent must surrender the premises, including any alterations, to petitioner. In addition, the lease provides petitioner with a right to enter and inspect the premises. Finally, by virtue of petitioner's use of the theater, petitioner has monitored the nature and quality of the services rendered under the JOYCE marks.

The Board agreed with Petitioner that "it would be 'ludicrous' to contend that petitioner did not own the JOYCE marks after petitioner purchased the Elgin theater, did all the work raising the funds and renovating the theater, and took all the risk involved in the undertaking." It therefore ruled in favor of Petitioner Ballet Tech.

TTABlog comment: Note that the petition for cancellation was filed in 2003, when the five challenged registrations (which issued in 1999) had not yet reached their fifth anniversary. Suppose the petition had been filed in 2005. Would the petition have been barred by Section 14 of the Act? Improper ownership is not one of the stated exceptions to the five-year "statute of limitations" provided by Section 14. Note also, however, that Petitioner also pleaded likelihood of confusion, false connection (Section 2(a)), and fraud, but chose not to pursue those issues. (See footnote 7). The fraud claim would have survived the five-year bar.

Text Copyright John L. Welch 2008.


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