Wednesday, July 18, 2018

TTAB Orders Cancellation of KLIQUE CAR CLUB Registration Due to Non-Ownership

The Board granted a petition for cancellation of a registration of the mark KLIQUE CAR CLUB for "club services, namely, promoting the interests of lowrider car enthusiasts," finding that Registrant Jesse Fausto was not the owner of the mark and therefore the registration was void ab initio. The Board wasted no time in ruling in favor of petitioner, since respondent admitted that the name "belongs to the club." Klique E.L.A. Car Club v. Jesse Frausto, Cancellation No. 92063670 (July 16, 2018) [not precedential] (Opinion by Judge Frances Wolfson).

Only the owner of a mark can validly apply for, receive and retain a registration. 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 16:35 (5th ed.). If the entity filing the application was not the owner of the mark as of the filing date, the application is void ab initio. This is a statutory requirement and cannot be waived. Trademark Act §1(a), 15 U.S.C. § 1051(a). See, e.g., Wonderbread 5 v. Gilles, 115 USPQ2d 1296, (TTAB 2015) (cancelling registration less than five years old for mark of a musical band which was issued to one member of the band when the band as a partnership was the owner).

Respondent Frausto claimed that he was authorized by the car club to file the application for registration, but the evidence made clear that the club was the owner of the mark. Frausto testified in his discovery deposition:

Q. Have you assigned the rights under the trademark to anyone in the club? Do you know what I mean by that?
A. As far as the trademark, the trademark name, it belongs to the club.
Q. Is it held in the club’s name or is it held in your personal name?
A. It’s held in my personal name for the simple reasons that I put up the funds to trademark the name. But it's just to secure it for East L.A. and that was it
. . .

Q. Have you made any kind of formal agreement between yourself as an individual and the club regarding the mark?
A. Well, regarding the mark, the club already knows that we have talked about it at this -- I am going to do that once all this is over.
Q. And by “do that,” do you mean make an agreement with them about the mark?
A. Yes.

In addition, seven club members attested that "To the best of my knowledge, Jesse Frausto did not have permission to register a trademark solely in his name for ‘Klique Car Club’. That name belongs to all of the Chapters and all of the members."

The Board found "little question" that Respondent Frausto does not own the KLIQUE CAR CLUB mark, and so it granted the petition for cancellation.

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Text Copyright John L. Welch 2018.


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