Friday, January 26, 2024

TTAB Orders Cancellation of FREEDOM PARTY Registration: Application Was Void Ab Initio Due to Nonownership

The Board granted a petition for cancellation of a registration for the mark FREEDOM PARTY for "organizing and conducting dance parties" on the ground that Respondent Hyman was not the sole owner of the mark when he filed his underlying use-based application. Therefore, his application was void ab initio and deemed invalid. Edward Levy and Marc Padro v. Kenneth Harris Hyman, Cancellation No. 92068029 (January 12, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington).

Petitioners alleged that from 2003 to October 2016, Petitioners and Respondent operated as a partnership and shared equally the profits derived from arranging and organizing dance parties in New York City under the Freedom Party brand. Until late 2017, the “Freedom Party” was advertised to the public as the joint creation of the parties. Nonetheless, in 2013, Respondent Hyman filed the underlying application, representing to the USPTO that he was the sole owner of the mark for the services listed in the application

Hyman argued that "any possible claims" Petitioners may have based on ownership of the registered mark FREEDOM PARTY "are barred by Petitioners’ laches." The Board pointed out, however, that "laches is not available as a defense in an action to remove a registration which was clearly void ab initio."

The law is clear that only the owner of the mark may file a use-based application for registration; if the entity filing the application is not the owner of the mark as of the filing date, the application is void ab initio. See Great Seats, 84 USPQ2d at 1239 9TTAB 2007).

In terms of deciding competing ownership claims of the same mark when the parties are known to each other and base their ownership on some of the same transactional facts, the Board has identified three relevant factors for making such a determination: (1) the parties’ objective intentions or expectations; (2) who the public associates with the mark; and (3) to whom the public looks to stand behind the quality of goods or services offered under the mark. Wonderbread 5 v. Gilles, 115 USPQ2d 1296 (TTAB 2015).

Petitioners bore the ultimate burden of proving by a preponderance of the evidence that Respondent Hyman was not the owner of the FREEDOM PARTY mark on June 6, 2013, when he filed the underlying use-based application. Based on the evidence and evaluating the record under the Wonderbread 5 factors, the Board found that Petitioners carried their burden of proof.

As to the first factor, the Board had no doubt that that at the time of the filing of the underlying application, it was the parties’ objective intention and expectation that they were all owners of the mark. "[T]he parties’ communications with each other and other evidence make clear that all three individuals were under the belief that no one single individual had exclusive ownership of the mark."

As to the second and third Wonderbread 5 factors, the evidence showed that the relevant public associated the FREEDOM PARTY mark and the parties’ deejaying services only with all three deejays together: "the quality and character of the services rendered under the FREEDOM PARTY mark were attributed to all three deejays, collectively."

In sum, the evidentiary record makes it abundantly clear that Respondent was not the sole owner of the FREEDOM PARTY mark on June 6, 2013, when he filed the underlying use-based application in his name as the sole owner. * * *  Accordingly, the use-based application Respondent filed was void ab initio and, consequently, the resulting registration is invalid.

Read comments and post your comment here.

TTABlogger comment: This TTABattle went on for nearly six years, even though the outcome seems inevitable.

Text Copyright John L. Welch 2024.


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