Tuesday, September 07, 2010

WYHP? TTAB Dismisses 2(d) Cancellation Petition Hinged on "AUGUSTINE'S SPIRITUAL GOODS" Ownership Issue

We've started a new category of TTAB cases: WYHP? Would You Have Petitioned (for cancellation)? In this Section 2(d) attack on a registration for the mark AUGUSTINE'S for "novelty items having a religious theme, namely, incense, perfume oils and scented oils used to produce aromas when heated," the question boiled down to whether Respondent purchased the trademark AUGUSTINE’S SPIRITUAL GOODS from Petitioner via an agreement in 2002. Augustine’s Spiritual Goods, Inc. v. Augustine’s Eternal Gifts, LLC, Cancellation No. 92049453 (August 26, 2010) [not precedential].

Petitioner sold the assets of its business on the South Side of Chicago to Respondent in an agreement that included the following in the list of assets received by the buyer: "The good name of Augustine's Spiritual Goods, which has an 11 year reputation."

Six months later, Petitioner opened a retail store in Hancock, Michigan, under the name AUGUSTINE'S CURIOUS GOODS, while using AUGUSTINE'S SPIRITUAL GOODS on its website.

In order to prevail on its Section 2(d) claim, Petitioner needed to prove priority of use, and it could do so only if it could establish that it still owned rights in the AUGUSTINE'S SPIRITUAL GOODS mark. In short, "[i]f respondent acquired the mark from petitioner, then respondent as the successor company acquired all the rights which the petitioner had in the mark."

Applying Illinois contract law, the Board found "no ambiguity in the terms of the agreement."

For the consideration paid by Carolyn Hennes, she received “[t]he good name of Augustine’s Spiritual Goods, which has an 11 year reputation”; in other words, Hennes acquired the AUGUSTINE’S SPIRITUAL GOODS trademark. There are no restrictions or limitations ascribed to the sale of the name. *** Accordingly, the initial use of the mark AUGUSTINE’S SPIRITUAL GOODS in 1992 by petitioner through the October 17, 2002 sale of the mark to respondent, inures to the benefit of respondent by virtue of the sale of assets between the parties. In other words, the record shows that respondent may claim first use of the mark in 1992 through its predecessor-in-interest, petitioner. The earliest date of first use on which petitioner may rely is when it opened its store in Hancock, Michigan, six months after the sale of the assets.

And so the Board concluded that Petitioner failed to prove a proprietary interest in its mark prior to that of Respondent, and it dismissed the Section 2(d) petition.

TTABlog comment: Thirty-third and Halsted Street is just a stones throw from the new Comiskey Park. The White Sox could use some of that good mojo.

TTABlog postscript: Pam Chestek comments here: "Maybe I would have petitioned:."

Text Copyright John L. Welch 2010.


At 11:39 AM, Anonymous Mark Lebow said...

Bill McGrath, attorney for the respondent, was my copyright prof. at JMLS and is an excellent lawyer. This case is a good example of taking a passive approach in a way that saves costs in a dispute where the plaintiff cannot prove its case.

At 1:53 PM, Blogger John L. Welch said...

I don't know how you could understand him with that strange Chicago accent he has.

At 2:15 PM, Anonymous Mark Lebow said...

Yeah...good thing he didn't have a strange Boston accent...

At 11:08 PM, Blogger Pamela Chestek said...

Maybe I would have petitioned: http://www.propertyintangible.com/2010/09/yes-i-might-have.html


Post a Comment

<< Home