Applicant Contractually Barred from Using Mark in 11 Metro Areas Still Entitled to Registration

In this opposition to registration of the mark shown below, for educational services in the field of cardiopulmonary resuscitation, Opposer claimed that the applicant "cannot claim use to support an unrestricted registration in view of the terms in the Dissolution Agreement between the parties." The Board disagreed. CPR Certification LLC v. CPR, LLC, Opposition No. 91276058 (February 26, 2025) [not precedential] (Opinion by Judge Karen S. Kuhlke).

Halabi and Joos formed Fit Industries, which performed services related to training and certification in CPR and First Aid. On February 8, 2021, Fit Industries was dissolved by a Dissolution Agreement. Applicant was then formed and is operated by Joos; Opposer is owned and operated by Halabi.

Under the terms of the Dissolution Agreement, applicant was barred from eleven metropolitan areas in the United States for one year, but free to use the mark otherwise throughout the United States. Opposer is barred from using the mark.

Opposer framed the issue thusly: "[w]hether Applicant’s Application for the applied-for mark claiming unrestricted, nationwide exclusive use, when applied for during a contractually agreed-to Restricted Period, is invalid due to Applicant’s attempt to obtain trademark rights it is not entitled to.”

The Board noted that on September 8, 2021, Applicant’s filing date, Applicant could use the mark in commerce in more than one State. "The restrictions that applied during that time [the one-year period? - ed.], did not restrict Applicant to only intrastate commerce, it [they? ed.] merely prohibited use in eleven counties in the United States. In view thereof, the application is in compliance with the Trademark Act as to the “restricted” services because they could still be performed by Applicant in more than one state."

The Board agreed with applicant that "[e]ven with the Restrictive Covenant, both Applicant and Opposer were nonetheless entitled to engage in other competitive activities, including using their respective marks in commerce, without restrictions in every single state in the United States"

And so, the Board dismissed the opposition.

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TTABlogger comment: In my opinion, this opinion is not a model of clarity.

Text Copyright John L. Welch 2025.