In a case of first impression, the Trademark Trial and Appeal Board (the “TTAB”) decided that a licensee, even an exclusive licensee who has been appointed by the licensor as its representative for protecting intellectual property rights, cannot assert her licensor’s purported priority rights to prevail in a claim of likelihood of confusion. Moreno v. Pro Boxing Supplies, Inc., Opp. Nos. 91214580 and 91214877, Can. No. 92058878 (TTAB Sept. 8, 2017) [precedential]. Grab a ringside seat as we go through the blow-by-blow!
In one corner, we have Pro Boxing, Inc. who owns a registration for the mark CASANOVA for use with sporting equipment and trainer’s supplies, boxing equipment, and protective boxing gear with a claimed first use date at least as early as 1993. Pro Boxing, Inc. also owns the applications to register the marks for use with athletic, sports, and boxing equipment based on a claimed first use date of 2003.
In the other corner is Ms. Julie Moreno, who, since 2013, has been the exclusive licensee in the U.S. of the intellectual property rights of Deportes Casanova, a Mexican sole proprietorship that owns a registration for the mark in Mexico. Ms. Moreno sells boxing equipment manufactured by Deportes Casanova via the internet. The license agreement appoints her Deportes’ representative for protecting its intellectual property rights in the United States.
As the parties squared off, Ms. Moreno hit Pro Boxing, Inc. with a one-two punch when she opposed registration of Pro Boxing Inc.’s applications and petitioned to cancel its registration on the grounds of likelihood of confusion. She claimed priority based on common law use of the marks by Deportes Casanova in the United States, which she alleged dated back to at least as early as 1972. Ms. Moreno’s status as a licensee of Deportes Casanova afforded her standing in the consolidated proceedings. But she found herself on the ropes when it came to establishing priority.
Though the license agreement appoints Ms. Moreno as Deportes’ representative for enforcing its intellectual property rights in the United States, she led with her chin by not joining Deportes as an opposer/petitioner in the action. To pursue her likelihood of confusion claim, Ms. Moreno claimed priority based on Deportes’ purported common law rights. But until now, the TTAB has never had occasion to decide whether a licensee could establish priority by relying on the licensor’s use of the licensed mark.
The TTAB observed that a licensee’s use of a mark inures to the licensor’s benefit, but there is no authority for the assertion that a licensor’s use inures to the licensee’s benefit. Furthermore, the license agreement that governed the relationship between Ms. Moreno and Deportes specifically refrained from transferring any ownership rights to her so it could not be construed as tantamount to an assignment. Therefore, the clause in the license agreement appointing Ms. Moreno as its representative for protecting Deportes’ intellectual property in the U.S. could only be construed to extend to her use of it (and not to include Deportes’ use of it at any time). In light of the foregoing, the TTAB concluded that Ms. Moreno had failed to prove priority, so it dismissed the oppositions and denied the petition to cancel.
Ms. Moreno may be down for the count after this decision, but she may not want to throw in the towel. If she could persuade Deportes to toss its hat into the ring to bring a new proceeding, it may have better luck proving priority in another bout.