Risky Business: Behaviors That Can Put Trademark Applications and/or Registrations At Risk
1. Who Owns the Mark? And Prepare for Depositions!
In Hollywood Casino LLC v. Chateau Celeste, Inc., Opposition No. 91203686 (December 14, 2015), Applicant Chateau Celeste filed a trademark application to register the mark Hollywood Hotel. A problem arose, however, when Applicant’s President and CEO testified in a deposition that the Applicant was only a licensee – not the owner – of the mark. The Opposer, Hollywood Casino, seized on this testimony and moved for summary judgment, saying the Applicant could not apply to register a mark it did not actually own.
After the Opposer filed its motion for summary judgment, Applicant filed an errata sheet to try to correct the potentially fatal deposition testimony. Specifically, the deponent sought to change his answer and testify that the Applicant actually was the owner of the mark.
Opposer urged the TTAB to reject the errata sheet as an after-the-fact attempt to create a fact issue to defeat the summary judgment motion. The Board opted to apply a “flexible approach” under which parties are allowed to correct errors within deposition testimony but a party cannot make an unexplained about-face with respect to damaging deposition testimony. Applying this approach in the instant case, the Board rejected the errata sheet, concluding that the reasons given for the changes were not convincing. Furthermore, Applicant’s counsel had the opportunity but did not attempt to rehabilitate his witness or correct any of the witness’ misstatements during the deposition itself. Thus, the Opposer was stuck with the deposition testimony.
The Board ultimately denied the Opposer’s motion for summary judgment, concluding there were still fact issues that could not be resolved on summary judgment.
The takeaways are twofold:
- applications must be filed in the name of the owner of the mark, and
- thoroughly prepare witnesses for deposition on the critical elements of the case. In this case, the opinion never clarified whether the Applicant really did own the mark, and the President and CEO just got confused in the deposition – which can happen in the heat of the moment – or whether the errata sheet changes were simply an after-the-fact clean up attempt that failed.
2. Is Your Mark Used in Interstate Commerce?
In Doctor’s Associates Inc. v. Janco, LLC, Opposition No. 91217243 (January 7, 2016), the Board sustained an opposition to register the mark FLATIZZA for flat sandwiches on the basis that the Applicant did not use its mark in interstate commerce prior to filing its application, thereby rendering the application void ab initio. In this case, the Applicant filed a used-based trademark application, rather than an intent-to-use application. The Applicant made no showing, however, that its sandwiches were sold anywhere but one single location restaurant. It also did not show that the restaurant served any out-of-state customers. Thus, the Board held that the application was void ab initio.
To get a federal registration, the mark must be used in interstate commerce.