Ballet Tech Foundation, Inc.v.The Joyce Theater Foundation, Inc.

Trademark Trial and Appeal Board

Dec 11, 2008

No. 91180789 (T.T.A.B. Dec. 11, 2008)

Hearing: Mailed:
October 16, 2008 December 11, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Ballet Tech Foundation, Inc.
v.
The Joyce Theater Foundation, Inc.
_____

Opposition No. 91180789
Cancellation No. 92042019
_____

William M. Merone of Kenyon & Kenyon LLP for Ballet Tech
Foundation, Inc.

Jordan A. LaVine of Flaster Greenberg, P.C. for The Joyce
Theater Foundation, Inc.
______

Before Bucher, Taylor and Bergsman, Administrative Trademark
Judges.

Opinion by Bergsman, Administrative Trademark Judge:

These consolidated proceedings involve a trademark
dispute between a landlord and its tenant regarding the
ownership of the name of the Joyce Theater. Plaintiff,
Ballet Tech Foundation, Inc. (hereinafter “petitioner”) is a
charitable foundation responsible for funding the Feld
Ballet Company and operating a tuition-free dance school for
public school children. It is also the owner of the
premises known as the Joyce Theater. Defendant, The Joyce
Theater Foundation, Inc. (hereinafter “respondent”), is a
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91180789
Cancellation No. 92042019
2
charitable foundation that, among other things, manages the
Joyce Theater.
Respondent has registered the following marks for
“dance performance theaters and entertainment in the nature
of performance arts theater productions,” in Class 41:
1. JOYCE, in typed drawing form;1
2. JOYCE THEATER, in typed drawing form;2
3. JOYCE SOHO, in typed drawing form;3 and,
4. JOYCE, shown below.4

Respondent has also registered the mark JOYCE THEATER
FOUNDATION, in typed drawing form,5 and has filed a use-
based application for the mark JOYCE, in standard character
format,6 both for “charitable fund raising services,” in

1 Registration No. 2225976, issued February 23, 1999; section 8
affidavit accepted; renewed.

2 Registration No. 2228441, issued March 2, 1999; section 8
affidavit accepted; renewed.

3 Registration No. 2226023, issued February 23, 1999; section 8
affidavit accepted; renewed.

4 Registration No. 2226024, issued February 23, 1999; section 8
affidavit accepted; renewed.

5 Registration No. 2228716, issued March 2, 1999; section 8
affidavit accepted; renewed.

6 Serial No. 77160320, filed October 16, 2007. Respondent also
owned Registration No. 2317754 for the same mark and services,
but it was canceled under Section 8.
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Class 36. The registrations and the application will be
referred to collectively as the JOYCE marks.
Petitioner is seeking to cancel all of the JOYCE
registrations and it has opposed the JOYCE application on
the ground that petitioner, not respondent, is the owner of
the JOYCE marks, and that respondent uses the marks pursuant
to an implied license.7 Respondent denied the salient
allegations in the petition for cancellation and the notice
of opposition.
Evidentiary Issues
Petitioner has objected to the testimony of Linda
Shelton, the current executive director of respondent, and
of Peter Felcher, corporate counsel for both petitioner and
respondent. Essentially, petitioner argues that Ms.
Shelton’s testimony regarding events that took place prior
to 1993, when she was first employed by respondent,
constitute inadmissible hearsay or speculation because those
events are outside of her personal knowledge. With respect
to Mr. Felcher’s testimony, petitioner argues, in essence,
that his testimony is unreliable because he has no

7 The grounds set forth in the petition for cancellation include
fraud, priority of use and likelihood of confusion, a false
suggestion of a connection, and dilution. The opposition also
includes a claim of priority of use and likelihood of confusion.
However, in their briefs, the parties identify the ownership of
the JOYCE mark and whether there was an implied license as the
issues. Because the parties litigated and argued only the
ownership and license issues, we deem the other grounds for
cancellation and opposition to have been waived.
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independent recollection of the facts and that it otherwise
includes legal conclusions. We are not inclined to strike
the testimony depositions in toto, nor are we inclined to
parse the depositions to separate the admissible testimony
from the inadmissible testimony. However, we are aware of
the infirmities described in petitioner’s objections. To
the extent that we rely on any testimony from Ms. Shelton
and Mr. Felcher, it will be given the probative value to
which it is properly entitled pursuant to the Federal Rules
of Evidence.
The Record
By rule, the record includes respondent’s registration
and application files and the pleadings. Trademark Rule
2.122(b), 37 CFR §2.122(b). The record also includes
testimony and evidence introduced by the parties.
A. Petitioner’s evidence.
Petitioner introduced the following testimony and
evidence in support of its case:
1. Two notices of reliance on documents produced by
respondent during discovery;8

8 Although documents produced in response to document production
requests cannot normally be made of record by notice of reliance
(see Trademark Rule 2.120(j)(3)(ii), 37 CFR §2.120(j)(3)(ii)),
the parties filed a stipulation that documents exchanged during
discovery are authentic and may be made of record by either
party. See TBMP §704.11 (2nd ed. rev. 2004).
Opposition No. 91180789
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2. A notice of reliance introducing photographs of
the marquee of the JOYCE theater;
3. A notice of reliance on printed publications
referencing the Elgin or Joyce Theaters;
4. A notice of reliance on respondent’s responses to
Interrogatory Nos. 3-4, 6 and 18;
5. Testimony deposition and rebuttal deposition of
Eliot Feld with attached exhibits. Mr. Feld is the
president of petitioner and a founding member of respondent;
6. Testimony deposition and rebuttal deposition of
Cora Cahan with attached exhibits. Ms. Cahan was the former
administrator, executive director and vice president of the
Feld Ballet, former CEO, COO and Board member of petitioner,
and former CEO and a founding member of respondent;
7. Testimony deposition of Lisa Post with attached
exhibits. Ms. Post was formerly an employee of petitioner
who was subsequently employed by respondent shortly after it
was formed. Ms. Post served in various positions for
respondent, including executive director;
8. Testimony deposition of Benjamin Schwartz, aka
Roger Euster. Mr. Schwartz was the owner of the Elgin
theater who sold it to petitioner; and,
9. Testimony deposition of James Russek with attached
exhibits. Mr. Russek is an advertising executive who worked
for petitioner and respondent. Mr. Russek was involved with
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the graphic design for the renovation of the Elgin/Joyce
Theater, including the JOYCE logo on the marquee.
B. Respondent’s evidence.
1. A notice of reliance on petitioner’s responses to
respondent’s first set of interrogatories and first requests
for admission;
2. Testimony deposition of Linda Shelton with
attached exhibits. Ms. Shelton is the executive director of
respondent; and,
3. Testimony deposition of Peter Felcher with
attached exhibits. Mr. Felcher is a corporate attorney
specializing in mergers and acquisitions. He also practices
in the entertainment field, including intellectual property.
However, Mr. Felcher is not a trademark expert. Mr. Felcher
was corporate counsel for both petitioner and respondent.
Specifically, he was the Assistant Secretary of petitioner
and the Assistant Secretary and a founding member of
respondent.
Facts
A. Introduction.
Petitioner claims that it owns all rights in the JOYCE
marks, and that any use of the marks by respondent has been
pursuant to an implied license from petitioner. As
discussed below, petitioner is the owner of the Joyce
Theater, and respondent is petitioner’s tenant responsible,
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Cancellation No. 92042019
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under the terms of the lease, for operating a “first-class”
dance theater.
According to Professor McCarthy, the resolution of a
service mark dispute between a landlord and tenant depends
on the facts and a weighing of policies and circumstances of
each case.
Ownership of a service mark identifying
a business carried on at rented premises
will depend upon weighing of the
policies of customer perception and
contractual provisions between the
landlord and tenant.

McCarthy on Trademarks and Unfair Competition §16:38 (4th
ed. 2008). In this case, where there are no express
contractual provisions between the parties regarding the
ownership and use of the JOYCE marks, we will have to
examine the dealings of the parties to determine the
ownership of the JOYCE marks and whether there was an
informal system of quality control sufficient to support an
implied license. McCarthy on Trademarks and Unfair
Competition §18:43.50 (4th ed. 2008) (“Some courts will
imply both a trademark license and a requirement for quality
control from the dealings of the parties”). See also
Woodstock’s Enterprises Inc. (California) v. Woodstock’s
Enterprises Inc. (Oregon), 43 USPQ2d 1440, 1446 (TTAB 1997)
(“Sufficient control by a licensor may exist despite the
absence of any formal arrangements for policing the quality
of the goods sold or services rendered under the mark by its
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licensee(s)”); University Book Store v. University of
Wisconsin Board of Regents, 33 USPQ2d 1385, 1396 (TTAB 1994)
(“the reality of the situation which existed for many years
may best be characterized as that of a royalty-free,
nonexclusive, implied license to use the marks”); Winnebago
Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335,
341 (TTAB 1980) (the record established that opposer
employed an informal, rather than formal, system of quality
control); Ideal Toy Corporation v. Cameo Exclusive Products
Inc., 170 USPQ 596, 598 (TTAB 1971) (although the agreement
between the parties did not address defendant’s right to
control the nature and quality of the goods sold under the
mark at issue, defendant’s CEO could, in fact, control the
nature and quality of the goods). Within this framework, we
discuss the facts.9
B. The Purchase of the Elgin Theater.
During the 1970’s, small and mid-size dance companies
had very few economically viable venues. The Feld Ballet

9 There is no real dispute about the operative facts; rather, the
parties disagree about what the facts mean. Under these
circumstances, this case would have been a good candidate for the
Board’s accelerated case resolution procedure (“ACR”). ACR is a
procedure akin to summary judgment in which parties can receive a
determination of the claims and defenses in their case promptly,
but without the uncertainty and delay typically presented by
standard summary judgment practice. In order to take advantage
of ACR, the parties must stipulate that, in lieu of trial, the
Board can resolve any material issues of fact (e.g., whether the
parties in this case intended for petitioner to own the JOYCE
mark and license it to respondent). After the briefs are filed,
the Board will issue a decision within fifty days, which will be
judicially reviewable as set out in 37 CFR §2.145.
Opposition No. 91180789
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Company, and other mid-size dance companies, did not have
ready access to any of the existing theaters in downtown New
York City or Off-Broadway which suited their purposes.
Moreover, the larger Broadway theaters were not economically
feasible because of the production costs. Based on their
experience, Eliot Feld and Cora Cahan concluded that small
to mid-size dance companies needed a 500-seat theater.10
In November 1978, Ms. Cahan and Mr. Feld learned the
Elgin Theater was for sale.11 The Elgin Theater was an
empty motion picture theater. It had the potential to meet
the needs of small and mid-size dance companies. In
December 1978, Eliot Feld approached petitioner’s board of
trustees regarding the purchase of the Elgin Theater for use
by its dance company.12
Petitioner negotiated a purchase price of $225,000 for
the theater. The cost of renovations was estimated at
approximately $990,000 to $1,200,000. Mr. Feld and Ms.
Cahan discussed the purchase of the Elgin Theater with
LuEsther Mertz, a patron of the arts who had made her
fortune as the owner of Publishers Clearinghouse. Ms. Mertz
was a fan and long-time supporter of Mr. Feld’s
choreography, and she became a close friend of Mr. Feld and

10 Cahan Dep., pp. 21-24 and Exhibit 6 (the December 13, 1997
minutes of petitioner’s board of trustees meeting); Feld Dep.,
pp. 15-17.
11 Cahan Dep., pp. 24-27; Feld Dep. pp. 17-18.
12 Cahan Dep., Exhibit 6
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Ms. Cahan. Accordingly, she was amenable to funding the
acquisition of the theater.13
Petitioner’s board also discussed how to pay for the
renovations. “Mr. Gersten [Ms. Cahan’s husband] indicated
that one possibility would be to seek a single major
contributor who would provide most of the renovation costs,
in which case, as a tribute to this generosity, the theater
could bear the name of such contributor.”14 Otherwise, it
was petitioner’s intention to keep the “Elgin” name and
operate it as the Elgin Theater.15
The Elgin Theater was built in the early 1930’s, and it
had always been known as the Elgin Theater.16 Petitioner
bought the Elgin Theater, its name and whatever goodwill
existed.17 However, it was understood that the name of the

13 Cahan Dep., pp. 34-37, 165, 167 and Exhibit 6. The price was
originally $210,000, but it increased to $225,000 because
petitioner had to buy out an existing lease in the building.
(Cahan Dep., Exhibit 5, the January 9, 1979 minutes of
petitioner’s board of trustees meeting). The renovations
ultimately cost $4 million. (Cahan Dep., p. 33). See also Feld
Dep., pp. 9-10, 19, 25-26; Felcher Dep., p. 29.
14 Cahan Dep., pp. 38-39 and 49 and Exhibit 6. The “tribute”
comment was also published in an article in the January 18, 1979
issue of the Chelsea Clinton News announcing petitioner’s
purchase of the Elgin Theater (Cahan Dep., Exhibit 4); See also
Feld Dep., Exhibit 1 (the January 29, 1979 issue of the New York
Times).
15 Cahan Dep., p. 38.
16 Schwartz Dep., p. 5.
17 Cahan Dep., pp. 38, 151-153; Feld Dep., p. 21. Schwartz Dep.
p. 10-11 (Schwartz sold the theater “lock, stock and barrel,”
including the name of the theater).
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theater might be changed to honor a major donor.18
C. The Creation of Respondent.
Eliot Feld and Cora Cahan knew that the purchase of the
Elgin Theater was just the beginning. It would take a
large, long-term fund-raising effort to pay for the
renovations and the continued operations of the theater.19
Exploratory meetings with potential donors confirmed that
there was great interest in a theater dedicated to dance,
“provided that it was clearly understood that the theater
would be operated for the benefit of dance companies in
general, and that the Board of the entity operating the
theatre (sic) would be made up of a representative cross
section of individuals from the dance community at large.”20
In addition, Mr. Feld and Ms. Cahan concluded that it would
be easier to raise funds through a separate entity because
many of the potential donors would be hesitant to donate to
petitioner twice: once to support the dance company and
once to support the theater.21
In consultation with petitioner’s attorneys and
accountants, Eliot Feld, Cora Cahan and petitioner’s other

18 Cahan Dep., pp. 76-77; Feld Dep. p. 43.
19 Cahan Dep., pp. 30 and Exhibit 6 (“Ms. Schwartz [a director]
stated that the Foundation should recognize that the raising of
the funds for the purpose of renovation would be a major
undertaking and that it was important to plan this activity
carefully”); Feld Dep. pp. 72-73.
20 Cahan Dep., pp. 56-57 and Exhibit 11 (the April 30, 1979
minutes of petitioner’s board of trustees); Feld Dep., pp. 41-43.
21 Cahan Dep., pp. 56-57 and Exhibit 11. See also Felcher Dep.,
pp. 17-19.
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trustees decided that petitioner should form a separate,
tax-exempt entity to raise funds for the renovation and
operation of the Elgin Theater.22
Petitioner’s trustees studied the roll of the new
entity and how to maintain control over it. They considered
transferring ownership of the theater, as well as leasing it
to the new entity for a nominal fee. Petitioner selected
the lease option because it would ensure that the theater
was operated in accordance with petitioner’s intentions.23
It was also indicated that the corporate
structure of [respondent] would be
designed so that [petitioner] would
maintain effective control to insure
that the intended purposes of the
project would be carried out.24

In addition, petitioner selected the lease option because
petitioner’s employees were doing all the work raising the
funds and planning and supervising the renovation and
petitioner was taking all the risk in acquiring and
developing the property.25
Having selected the lease option, petitioner, in
consultation with its legal counsel, “concluded that the
requisite control [over the new entity] could be achieved if
certain members [of the Board of Trustees] of the

22 Cahan Dep., Exhibit 11.
23 Cahan Dep., p. 64 and Exhibit 11. See also Felcher Dep., pp.
74-77 and Exhibit 8.
24 Cahan Dep., Exhibit 11.
25 Cahan Dep., pp. 16-19, 63.
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[petitioner] also were members [of the Board of Trustees] of
the new entity, and in addition, if certain officers of the
[petitioner] and the new entity were the same individuals.
The structure contemplated was to have respondent governed
by a board of trustees that managed its affairs, with Mr.
Feld, Ms. Cahan and Mr. Gersten constituting a body of
members that elected the board of trustees and having the
sole power to elect and remove directors and officers and
also be officers of the new entity.”26 In other words, if
member’s of respondent’s board voted in a manner contrary to
the wishes of Mr. Feld and Ms. Cahan, they could remove
them.27
Ultimately, petitioner founded respondent with the
structure described above,28 and respondent was called the

26 Cahan Dep., Exhibit 11. Mr. Felcher ultimately took Mr.
Gersten’s spot in the new entity. See also Cahan Dep., p. 140
(“The establishment of the three-permanent-member aspect of the
trustees was clearly meant to protect the interests of the
[petitioner] in terms of the way the [respondent] operated the
Elgin Theater”) and 262; Feld Dep. pp. 46-49; Felcher Dep., p.
24; Shelton Dep., p. 22.
27 Feld Dep., p. 167-168. See also Felcher Dep., p. 24
(respondent was governed by a board of trustees that managed its
affairs and there was a body of members [Mr. Feld, Ms. Cahan and
Mr. Felcher] that elected the board of trustees). Mr. Felcher
was not involved in the operation of or policy-making for the
theater. His role was limited to legal matters and taking notes
at the board meetings. (Felcher Dep., p. 25). He served as the
tie-breaking vote between “the very strong vested interest of Mr.
Feld and Ms. Cahan.” (Felcher Dep., p. 85).
28 Cahan Dep., p. 167. These events contradict Mr. Felcher’s
testimony that respondent “should not be closely associated with”
petitioner. (Felcher Dep., p. 17). However, Mr. Felcher later
testified that respondent was initially designed so that it was
controlled by petitioner. (Felcher Dep., pp. 70-71).
Opposition No. 91180789
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Elgin Theater Foundation so that it would be associated with
the name of the theater.29 According to Ms. Cahan,
petitioner owned the Elgin Theater building and the Elgin
Theater name, and it gave respondent permission to use the
name the Elgin Theater Foundation.30 Moreover, if the name
of the theater was changed to honor a donor, then it was
understood that the defendant would change its name to match
the theater name and to maintain the association between the
defendant and theater.31
D. The Name Change to the Joyce Theater.
LuEsther Mertz proved to be a major benefactor for
petitioner and respondent. Accordingly, Eliot Feld and Cora
Cahan wanted to honor Ms. Mertz by naming the theater after
her. After some prodding, Ms. Mertz agreed that the theater
could be called the Joyce in honor of her deceased
daughter.32 Once Ms. Mertz agreed that the theater could be
called the Joyce, Elliot Feld and Cora Cahan promised that
“it would be known forevermore as the Joyce.”33 Eliot Feld
and Cora Cahan reported this decision to respondent’s board
and then to petitioner’s board. The respective boards of

29 Cahan Dep., p. 59; Feld Dep., pp. 43, 56.
30 Cahan Dep., pp. 60-61. See also Feld Dep. p. 54 (it was Mr.
Feld’s expectation that respondent was going to operate the
theater as the Elgin).
31 Cahan Dep., 76-78; Feld Dep. pp. 45-46, 58, 112-113, 130.
32 Cahan Dep., pp. 89-96; Feld Dep., pp. 35-38.
33 Cahan Dep., pp. 96, 107-108.
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directors passed resolutions approving the name change,34
including a second resolution by each board affirming that
“the name Joyce Theater shall be permanently used as the
name of the theater.”35
E. Monitoring the Renovation of the Theater and the
Initial Operation of Respondent.

Initially, the staffs of the petitioner and respondent
were the same.36
Well in the initial years when we were
renovating the theater, all of my staff
was [petitioner’s] staff, so we just
worked out of the [petitioner’s] offices
and we were doing both jobs
simultaneously. I mean, we were just
running the company and raising money
for the theater and meeting with the
architects and talking with the
contractor and raising the money and
writing the grant applications and
dealing with the MCDC and Department of
Commerce and UDAG grant and the City of
New York.

It was simple. There were very few of
us and we just worked all the time, and
we saw the Elgin Theater, which became
the Joyce Theater, was of prime
importance to the company, so we didn’t
separate, really, our roles. We were
running the company, but we were also
building a theater, and the fate, the
destiny of the theater was tied to that
- - of the company was tied to the
theater being built, the theater being
built well and that theater succeeding
over the long haul.

So we didn’t separate the making-the-
theater-happen activities from the

34 Cahan Dep., pp. 99-106, 171-187 and Exhibits 16 and 20.
35 Cahan Dep., Exhibits 21 and 22.
36 Cahan Dep., pp. 75-76, and 78; Feld Dep. pp. 73-75.
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keeping-the-company-running activities
because the company and the theater were
- - the fate of the company was bound up
in the ultimate successful establishment
of the Joyce Theater.37

In other words, respondent was an extension of
petitioner.38
The [respondent] was created by, set up
by and defined by [petitioner], so it
wasn’t the way you put it, as two
separate entities. It really was set up
so that we could have a vehicle to both
raise money and spend money on behalf of
the Joyce Theater or the Elgin Theater,
whatever it was being called at any
particular moment.”39

In fact, Ms. Cahan was responsible for planning the
renovation of the theater, including fundraising and acting
as respondent’s first CEO and Vice President of its board of
directors.40
Finally, petitioner controlled the respondent by virtue
of the fact that Eliot Feld, Cora Cahan, and Peter Felcher
were the three permanent members of respondent’s board of
trustees.41
F. The Lease.

37 Cahan Dep., pp. 109-110. See also Cahan Exhibit 17 (Ms.
Cahan’s November 15, 1982 correspondence declining to accept
compensation for her activities at respondent because
“undertaking the responsibilities at the Joyce and spending
whatever time is required by the Joyce during this period is by
definition an extension of my function at the Feld Ballet”).
38 Cahan Dep., pp. 137 – 139; Feld Dep. pp. 106-107 (respondent is
a “surrogate to implement the ideas, the wishes” of petitioner).
39 Cahan Dep., p. 139.
40 Cahan Dep., pp. 12 and 164.
41 Cahan Dep., p. 76.
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On March 6, 1981, petitioner and respondent signed the
lease for the Elgin Theater, now called the Joyce Theater.
Eliot Feld signed the lease on behalf of petitioner, Cora
Cahan signed the lease on behalf of respondent, and Peter
Felcher witnessed the signatures.42
Petitioner asks us to view the lease as including an
implied trademark license covering the name of the theater
whether, it is called the Elgin Theater or the Joyce
Theater. “Although the lease does not expressly mention the
parties’ trademark relationship . . . it nonetheless still
includes the basic structure of a trademark license.”43
However, in our opinion, the lease is nothing more than a
lease for real property. First, the lease does not
reference the name of the theater. Second, the lease
neither expressly nor impliedly licenses any trademark
rights. Nevertheless, the lease is relevant because it
helps to illuminate the dealings of the parties for
determining whether there was an informal system of quality
control sufficient to support an implied trademark license.
The lease provides that the property will be used as a
dance theater.

42 Cahan Dep., Exhibit 14 (the lease). Although Cora Cahan signed
the lease on behalf of The Elgin Theater Foundation, Inc., the
lease was signed after the name of the theater was changed to the
Joyce Theater and after the respondent changed its name to The
Joyce Theater Foundation, Inc. (Felcher Dep., pp. 27-28). This
out-of-order chronology has no effect on our findings other than
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[T]he Demised Premises will at all times
be operated and maintained by Tenant as
a not-for-profit theatre, primarily for
dance, and that Tenant will use all
reasonable efforts and will diligently
endeavor to raise funds and
contributions from public and private
sources in an attempt to minimize the
charges which must be imposed on dance
companies using the Demised Premises.44

In this regard, respondent agrees to maintain the premises
consistent with “‘first class’ buildings of similar
construction which contain similar facilities,” pursuant to
petitioner’s “reasonable judgment.”45
Petitioner has the right to enter the theater and
inspect the premises.46
Respondent may not change or alter the premises without
petitioner’s consent if the proposed change or alteration
would change the type or character of the “Improvement,”
reduce the size or value of the “Improvement,” or cost more
than $10,000.47 Any change or alteration costing more than
$10,000 shall be made under the supervision of an architect
or engineer selected by respondent and approved by
petitioner.48 Respondent must give petitioner advance

to add to the confusion regarding the parties’ relationship and
ownership of the JOYCE marks.
43 Petitioner’s Brief, p. 37.
44 Lease, ¶15.2.
45 Lease, ¶8.2
46 Lease, ¶17.1.
47 Lease, ¶12.2. “Improvements” mean the building, including the
appurtenances and fixtures. (Lease, ¶1.4).
48 Lease, ¶12.6.
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notice of any change or alteration exceeding $5,000.49 With
respect to changes or alterations to the theater, the
“Joyce” name on the marquee appears to be a fixture because
it is built into the marquee,50 and it was designed to be
the permanent name of the building.51
If respondent fails to perform or comply with any
provisions in the lease, petitioner may terminate the
lease.52
Upon the termination of the lease, for any reason, the
respondent will surrender possession of the premises,
including “Tenant’s Alterations,” to petitioner.53
Petitioner has the right of first refusal to use the
theater for up to 90 days per year, and agrees that it will
pay respondent the same rent and perform under the same
terms and conditions as other dance companies.54 Petitioner
agreed to rent and perform under the same terms and
conditions as other dance companies to show that the only
benefit it was receiving from owning the theater was the
right of first refusal for performance dates.55
G. The Joyce Theater Performance Rental Agreement.

49 Lease, ¶12.5
50 Russek Dep., p. 22-23 (“I mean again those letters are
fashioned out of stainless steel. They’re part of the structure
because they have been wired into it. I mean all that neon that
runs through that is wired into those letters. I have to believe
that you can’t just take a letter off”).
51 Russek Dep., p. 24.
52 Lease, ¶24.
53 Lease, ¶7.1.
54 Lease, ¶25.
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The Joyce Theater rental agreement provides that
respondent has the right to review and approve advertising
to make sure that the JOYCE marks are used properly.56 In
fact, respondent has had to reprimand petitioner for failing
to properly use the JOYCE marks.57
H. Monitoring the Quality of Respondent’s Performance.
In addition to the lease between the parties,
petitioner has monitored the quality of services rendered
under the JOYCE marks in the following manner:
1. Petitioner’s staff acted on behalf of respondent;

2. Cora Cahan reported the status of the renovations
to petitioner’s board of directors; and,

3. The Feld Ballet Company performs at the theater.58

The Feld Ballet Company performed at the Joyce Theater
every season since 1982 except for the 2003-2004 and the
1997-1998 seasons.59 Over the twenty-five year history of
the Joyce Theater, the Feld Ballet Company performed at the
theater more than any other dance company.60 Mr. Feld
estimated that the Feld Ballet Company performed at the

55 Cahan Dep., pp. 116-118, 197.
56 Cahan Dep., Exhibit 18 (the theater rental agreement), ¶10.
57 Shelton Dep., pp. 90-92 and Exhibit 9. Petitioner corrected
its misuse of the JOYCE marks, and never complained that
petitioner, not respondent, was the owner of the JOYCE marks.
(Shelton Dep., pp. 91-92).
58 Cahan Dep., p. 122; Feld Dep., pp. 76-79, 89-90 (the Feld
Ballet continues to perform at the Joyce Theater), 92, 116 (in
2006, Mr. Feld visited the theater 3 or 4 times and his company
also performed at the theater for 2 weeks during which he was at
the theater 14 hours a day, every day).
59 Feld Rebuttal Dep., pp. 5-8.
60 Feld Rebuttal Dep., p. 9.
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Joyce Theater just under 20% of the available time through
the 2002-2003 season.61
When respondent hired its first executive director,
that person reported to Ms. Cahan.62 In addition, Ms. Cahan
was involved in the decision to hire Linda Shelton,
respondent’s current executive director.63
Respondent has maintained the quality of the Joyce
Theater as a “first-class” dance theater.64
I. Dissolution of Interlocking Permanent Trustees.
The system of interlocking directorships terminated in
1993 when Eliot Feld resigned from respondent’s board.65
Mr. Feld resigned from respondent’s board because the
LuEsther T. Mertz Charitable Trust wanted ownership of the
theater to be transferred to respondent. Mr. Feld believed
it would be a conflict of interest to negotiate the transfer
of ownership as a member of both boards.66

61 Feld Rebuttal Dep., p. 10. However, Mr. Feld acknowledged that
over the last four years his company has had fewer performances
at the Joyce Theater. (Feld Rebuttal Dep., p. 20). Ms. Shelton
testified that she is not aware that petitioner’s representatives
visit the Joyce Theater on a regular basis. (Shelton Dep., p.
83).
62 Cahan Dep., p. 111.
63 Cahan Dep., pp. 122-123.
64 Cahan Dep., p. 119; Feld Dep. pp. 88-89. See also Post Dep.,
p. 44-45 (during the time Ms. Post worked for respondent, 1982 -
1991, the reputation of the Joyce Theater did not change).
65 Cahan Dep., pp. 124-127; Feld Dep., p. 86.
66 Feld Dep., p. 87. See also Shelton Dep., pp. 60-61.
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Discussion
A. Ownership of the JOYCE Marks
Based on the facts and circumstances forming the
relationship of the parties, we find that petitioner is the
owner of the JOYCE marks and that respondent is using the
JOYCE marks pursuant to an implied license. In reaching
this conclusion, we start with the premise that ownership of
a service mark may be acquired through controlled use by
one’s related companies (or licensees) even in the absence
of any use by the purported trademark owner. Section 5 of
the Trademark Act of 1946, 15 U.S.C. §1055, provides that
“[w]here a registered mark or a mark sought to be registered
is or may be used legitimately by related companies, such
use shall inure to the benefit of the registrant or
applicant for registration, and shall not affect the
validity of such mark or of its registration.”67
Accordingly, ownership of a mark may be acquired through its
use by a controlled licensee, even though the trademark
owner itself does not use the mark. Central Fidelity Banks,
Inc. v. First Bankers Corporation of Florida, 225 USPQ 438,
439-440 (TTAB 1984); In re Raven Marine, Inc., 217 USPQ 68,
69 (TTAB 1983); Warner Bros. Inc. v. Road Runner Car Wash,

67 The term “related company” is defined as “any person whose use
of a mark is controlled by the owner of the mark with respect to
the nature and quality of the goods or services on or in
connection with which the mark is used.” Section 45 of the
Trademark Act of 1946, 15 U.S.C. §1127.
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Inc., 189 USPQ 430, 431 (TTAB 1976); Basic Incorporated v.
Rex, 167 USPQ 696, 697 (TTAB 1970). On the basis of the
record, we are persuaded that petitioner is the owner of the
JOYCE marks even though respondent has been the only user
because there is an implied license between the parties.68
Our analysis shows that petitioner ultimately controls the
nature and quality of the services rendered in connection
with the mark.
Petitioner bought the Elgin Theater and intended to
operate it as the Elgin Theater unless a donor agreed to
contribute a significant sum to finance the renovation of
the theater. After LuEsther Mertz made substantial
contributions for acquisition and renovation of the Elgin
Theater, she agreed that the theater could be renamed the
“Joyce Theater” in honor of her late daughter.
After petitioner purchased the Elgin Theater, it
established respondent to operate the theater. Petitioner
controlled respondent from respondent’s creation until 1993
by virtue of the interlocking directors comprising Eliot
Feld, Cora Cahan and Peter Felcher. In fact, respondent was
designed so that petitioner would maintain effective control

68 Contrary to respondent’s argument, the fact that respondent was
the first entity to use the JOYCE marks does not make it the
owner of the marks because of our finding that respondent used
the marks pursuant to the license with petitioner. See
Respondent’s Brief, p. 23.
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over it.69 Under these circumstances, we find that
petitioner selected the JOYCE name and intended to control
its use through an authorized licensee. We agree with Eliot
Feld that it would be “ludicrous” to contend that petitioner
did not own the JOYCE marks after petitioner purchased the
Elgin Theater, did all the work raising the funds and
renovating the theater, and took all of the risk involved in
the undertaking.70 Moreover, petitioner’s claim of
ownership is further supported by the decision that the
theater would be called the Joyce Theater forever because no
matter who managed the theater for petitioner, the theater
would always be called the Joyce Theater.

69 Respondent contends that petitioner “recognized that the only
way to raise the required funds for the Elgin Theater renovations
would be to create a separate and autonomous not-for-profit
entity that could raise the required money for the theater
renovations and then operate and manage the theater into the
future.” (Respondent’s Brief, p. 6). However, at least until
1993, when Eliot Feld resigned from respondent’s board,
respondent was not autonomous. It was controlled by Eliot Feld,
Cora Cahan and Peter Felcher in their roles as the interlocking
directors of petitioner and respondent. Respondent’s argument
that the interlocking directors had the sole power of electing
and removing trustees and officers of respondent, but that they
did not have the authority to control how the other trustees
voted, exalts form over substance. (Respondent’s Brief, p. 7).
If the trustees did not vote as directed, they could be removed
by Eliot Feld, Cora Cahan, and Peter Felcher.
70 Feld Dep., p. 166.
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B. Petitioner Controls the Nature and Quality of the
Services Rendered Under the JOYCE Marks.

Based on the evidence of record, we find that
petitioner informally, rather than formally, monitored the
quality of the services rendered by respondent under the
JOYCE marks. While there was no specific program or
particular procedures for inspecting the services,
nevertheless, petitioner’s efforts to control the nature and
quality of the services rendered under the JOYCE marks are
sufficient to support the licensing relationship. Stock
Pots Restaurant, Inc. v. Stockpot, Inc., 737 F.2d 1576, 222
USPQ 665, 667-668 (Fed. Cir. 1984) (defendant exercised
sufficient control over the use of its mark through the
provisions of a lease); Woodstock’s Enterprises Inc.
(California) v. Woodstock’s Enterprises Inc. (Oregon), 43
USPQ2d at 1446 (“Sufficient control by a licensor may exist
despite the absence of any formal arrangements for policing
the quality of the goods sold or services rendered under the
mark by its licensee(s)”).
First, as described above, from its creation until
1993, petitioner controlled respondent by virtue of the
interlocking directors. Cora Cahan, Peter Feld, and Peter
Felcher had the authority to remove any of respondent’s
directors who disagreed with them. Moreover, immediately
after the creation of respondent and through the opening of
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the JOYCE theater, petitioner and respondent were
effectively one-and-the-same.
Second, the lease between petitioner and respondent for
the theater is a part of the process by which petitioner
exercises control over the nature and quality of the
services rendered under the JOYCE marks. The lease contains
the following provisions illustrating petitioner’s control
over the services rendered in the theater:
1. Respondent must maintain the premises as a not-
for-profit, “first-class” dance theater. The
determination of whether the Joyce Theater is
“first-class” is within petitioner’s reasonable
judgment.

2. Petitioner has the right to enter the theater and
inspect the premises.

3. Respondent may not change or alter the premises
without petitioner’s consent. As discussed above,
we have found that the name of theater on the
marquee is a fixture that may not be changed
without petitioner’s consent.

4. If respondent fails to perform or comply with any
provisions in the lease, petitioner may terminate
the lease.

5. Upon the termination of the lease, for any reason,
the respondent will surrender possession of the
premises, including any changes that respondent
makes to the premises.71

Finally, petitioner, through the Feld Ballet Company,
utilizes the theater services provided by respondent. Thus,
petitioner has had ample opportunity to inspect the nature

71 If the name of the theater is a fixture and the fixture
transfers to petitioner, then the name would remain with
petitioner.
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and quality of the theater services rendered under the JOYCE
marks.
Under these circumstances, we find that petitioner has
exercised sufficient control over the nature and quality of
the services rendered under the JOYCE marks. Cf Taco Cabana
International, Inc. v. Two Pesos Inc., 952 F.2d 1113, 19
USPQ2d 1253, 1259 (5th Cir. 1991), aff’d 505 U.S. 763 (1993)
(“Where the license parties have engaged in a close working
relationship, and may justifiably rely on each parties’
intimacy with standards and procedures to ensure consistent
quality, and no actual decline in quality standards is
demonstrated,72 we would depart from the purposes of the law
to find an abandonment simply for want of all the inspection
and control formalities”).
C. Department of Parks and Recreation for the State of
California v. Bazaar Del Mundo Inc.

Respondent argues that these proceedings are
“extraordinarily similar to the dispute between the parties
in California Departments of Parks and Recreation.”73 The
critical issue in Department of Parks and Recreation for the
State of California v. Bazaar Del Mundo Inc., 448 F.3d 1118,
78 USPQ2d 1887 (9th Cir. 2006) was whether the State of
California owned the trademarks CASA DE BANDINI and CASA DE

72 Respondent’s performance operating the Joyce Theater has been
exemplary. (Cahan Dep., p. 119).
73 Respondent’s Brief, pp. 28-29.
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PICO for restaurant services. The operative facts are set
forth below:
1. In 1968, the State acquired land encompassing the
Casa de Pico and Casa de Bandini properties in Old
Town San Diego.

2. In 1971, the State and Bazaar Del Mundo executed a
contract providing that Bazaar Del Mundo could
operate a Mexican-style shopping arcade on the
properties in exchange for rent and a percentage
of the receipts.

3. In 1985, Bazaar Del Mundo federally-registered the
marks CASA DE BANDINI and CASA DE PICO for
restaurant services.

4. In March 2005, after a bitter administrative
proceeding, the State terminated the contract with
Bazaar Del Mundo, and a new concessionaire took
over.

5. In May, 2005, Bazaar Del Mundo announced that it
was opening new CASA DE BANDINI and CASA DE PICO
restaurants on the water-front in downtown San
Diego.

6. The State filed a declaratory judgment action for
trademark infringement. The district court found
that the State failed to demonstrate that it owned
the trademarks, and the State appealed.

On appeal, the State argued that the Concession
Agreement with Bazaar Del Mundo operated as trademark
license. However, the State was unable to prove that there
was an implied license “because it failed to introduce any
evidence of an agreement or course of conduct by the parties
to contract for a trademark license. The clear intent of
the parties as evidenced by the Concession Agreement itself
was solely to lease premises – not to license trademarks.”
Department of Parks and Recreation for the State of
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California v. Bazaar Del Mundo Inc., 78 USPQ2d at 1896.
There was no course of dealing between the parties to create
an implied license and nothing to show that the State
controlled or supervised the nature and quality of the
restaurant services rendered under the marks. The court of
appeals noted that there was no recourse to the State if the
quality of the food, service, or sanitation deteriorated and
that the State “‘played no meaningful role in holding’ the
restaurants to any ‘standard of quality – good, bad, or
otherwise.’” Department of Parks and Recreation for the
State of California v. Bazaar Del Mundo Inc., 78 USPQ2d at
1897-1898.
Contrary to the facts in Bazaar Del Mundo, in these
proceedings we find that the course of conduct between the
parties created an implied license. First, when petitioner
purchased the Elgin Theater and then formed respondent,
petitioner intended to own the name of the theater and
license it to respondent. Second, petitioner designed
respondent so that petitioner could maintain control over it
and, thus, maintain control over the name of the theater.
Third, the lease, as evidence of the dealings between the
parties, provides that respondent must render “first class”
dance theater services, cannot make alterations or changes
to the theater without petitioner’s consent, and upon
termination of the lease for any reason, including a default
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or breach by respondent, respondent must surrender the
premises, including any alterations, to petitioner. In
addition, the lease provides petitioner with a right to
enter and inspect the premises. Finally, by virtue of
petitioner’s use of the theater, petitioner has monitored
the nature and quality of the services rendered under the
JOYCE marks.
D. The JOYCE SOHO Expansion.
Respondent argues that petitioner’s failure to object
to the JOYCE SOHO theater, a second location acquired and
operated by respondent for the past 12 years without
permission or any input from petitioner, demonstrates that
petitioner has not exercised any control over the services
rendered by respondent, and therefore an implied license
does not exist.74 As indicated above, we have determined
that petitioner is the owner of the JOYCE marks and that
respondent is using the marks by virtue of an implied
license. Petitioner’s failure to object to respondent’s use
of the JOYCE SOHO mark does not prove that petitioner has
not exercised quality control over the services rendered
under the marks. In other words, petitioner’s failure to
object to the JOYCE SOHO mark does not amount to an
abandonment of petitioner’s trademark rights in the JOYCE
marks. We find that petitioner is exercising sufficient

74 Respondent’s Brief, pp. 17, 43-44.
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control over the JOYCE marks by virtue of the lease between
the parties and through its performances at the theater.
See Woodstock’s Enterprises Inc. (California) v. Woodstock’s
Enterprises Inc. (Oregon), 43 USPQ2d at 1447 (no
uncontrolled use resulting in the mark losing all of its
source significance); University Book Store v. University of
Wisconsin Board of Regents, 33 USPQ2d at 1396 (third-party
use of college mascot was not uncontrolled use resulting in
abandonment; rather it was a royalty-free, implied license).
Moreover, petitioner believed that respondent’s expansion to
the JOYCE SOHO Theater was consistent with the mission and
goals of the original Joyce Theater, and that it was an
acceptable use of the Joyce name at that theater.75
Therefore, petitioner saw no reason to object to
respondent’s use of the JOYCE SOHO service mark.
E. Respondent’s Control Over the Use of the JOYCE marks.
Relying on the Joyce Theater performance rental
agreement, respondent argues that it, not petitioner, has
been the exclusive user of the JOYCE marks and that it, not
petitioner, has always controlled the nature and quality of
the services rendered under the JOYCE marks. That document

75 Feld Dep., pp. 117-119, 160-164 (“So it was a pleasing
amplification of what we had established at the Joyce Theater”);
Cahan Dep., pp. 242, 244. See also Shelton Dep., p. 67 (“Oh,
[Cora Cahan] was very supportive of [the Joyce Soho]. She
thought purchasing the building was well within the Joyce’s
mission and that this would be a wonderful addition to the dance
field and that it would something that we should do”).
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sets forth “the terms under which the performers may use the
JOYCE trademarks” and “require(s) that the licensees obtain
approval from [respondent] before using the JOYCE marks.”76
Respondent reasons that petitioner never believed that it
owned the JOYCE marks because it signed the Joyce Theater
performance rental agreement numerous times and never once
claimed that it, not respondent, was the owner of the JOYCE
marks.77
We do not interpret petitioner’s compliance with the
terms under which performers may use the JOYCE marks in the
Joyce Theater performance rental agreement as a declaration
or concession that respondent is the owner of the JOYCE
marks. It is simply an expression that petitioner agreed to
perform under the same terms and conditions as other dance
companies.
Moreover, we construe petitioner’s compliance with the
terms of the Joyce Theater performance rental agreement as
petitioner’s delegation to respondent to police the use of
the JOYCE marks. Woodstock’s Enterprises Inc. (California)
v. Woodstock’s Enterprises Inc. (Oregon), 43 USPQ2d at 1446
(“Control may also be adequate where the licensor
justifiably relies on the integrity of the licensee to
ensure the consistent quality of the services performed

76 Respondent’s Brief, p. 13.
77 Respondent’s Brief, p. 14.
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under the mark”); Winnebago Industries, Inc. v. Oliver &
Winston, Inc., 207 USPQ 335, 341 (TTAB 1980) (the informal
nature of opposer’s quality control included the general
reputation of the manufacturer). See also Restatement
(Third) of Unfair Competition §33, comment c (1995)
(trademark owner may rely on the reputation and expertise of
the licensee so long as there is no evidence indicating
deviations from the agreed standards or procedures).
F. Ms. Cahan Suggested that Respondent Register the JOYCE
marks.

To further support its position that it is the rightful
owner of the JOYCE marks, respondent asserts that it “filed
its trademark applications for the JOYCE marks only after
Ms. Cahan herself, who at that time was still a member of
[respondent’s] Board of Trustees, recommended in her
fiduciary capacity to [respondent’s] Board of Trustees that
steps be taken to register the JOYCE marks with the U.S.
Patent and Trademark Office.”78 In fact, respondent argues
that Ms. Cahan “believed [respondent] was the appropriate
entity to seek and finance registration of the marks in the
U.S. Patent and Trademark Office because it was the sole
entity responsible for operating and managing the Joyce
Theater.”79

78 Respondent’s Brief, p. 14.
79 Respondent’s Brief, p. 15. Respondent contends that Ms.
Cahan’s current position that petitioner is the rightful owner of
the JOYCE marks is “fueled by personal considerations,” namely
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We believe that respondent has overstated the
importance and meaning of Ms. Cahan’s suggestion to Ms.
Shelton that respondent protect the JOYCE marks. In 1997,
Ms. Cahan, in her capacity as President of The 42nd Street
Entertainment Corporation, learned, for the first time, that
a non-profit corporation could protect its name.
They [counsel] said well, you can
trademark your name and you can protect
the name. You can protect the name so
that others can’t use it, and that was
something that had never occurred to me
and I was unfamiliar with any non-profit
ever going through any kind of
registration of the name of the
organization or the name of their place
in order to protect it.80

Prior to this event, Ms. Cahan had no knowledge about
trademark law in general, or trademark ownership issues in
particular.81 Ms. Cahan became energized by this
information and shared it with everyone she could.
I then began to proselytize wherever I
went and speak to everybody about the
fact that you could protect the name of
a non-profit by registering it with the
trademark entities, whatever they’re
called.82

the shock and hurt caused by respondent’s decision not to re-
elect her to the Board. (Respondent’s Brief, p. 15). Ms. Cahan
admits that she was hurt when she was not re-elected to the
Board, we find her testimony to be credible and not based on a
desire for retaliation.
80 Cahan Dep., p. 235.
81 Cahan Dep., pp. 271-273
82 Cahan Dep., pp. 235-236. See also Post Dep., pp. 8 (“So
[Cahan] was telling everybody that we met with about, that they
should trademark their name. It became her, you know, song at
the time”), 31-32, 34 (“Cora was telling everybody she came into
a room with that this is what they should do. This, the
conversation that she had with, at the Joyce board meeting was
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Ms. Cahan shared her trademark epiphany with
respondent’s executive director, Linda Shelton.
Certainly, because I was actively
talking to Linda on a regular basis, I
suggested to her at some point after
that experience that it might be in the
interest of the Joyce name to protect it
from any third-party use of the Joyce
name.

So I suggested that she talk to the
lawyers about looking into protecting
the Joyce name by trademarking the Joyce
name at that time.83
Ms. Cahan’s conversation with Ms. Shelton was prior to
one of respondent’s board meetings, not in the formal
context of a proposal for action.
I remember that we, the conversation
took place before the board meeting
started.84

Ms. Cahan is not an expert in trademark law, as
evidenced by her statements that “you can trademark your
name” and “registering it with the trademark entities.” She

similar to conversations that she was having at other meetings”),
35 (“She was giving information”), 40, 50.
83 Cahan Dep., p. 236. See also Post Dep., pp. 32 (“I remember
that Cora came to that, to a board meeting and said that the
Joyce name should be protected from infringement by - - of the
sort that we experienced at the 42nd Street”), 40 (“She was having
a conversation before the meeting at which she was talking to
Linda the way she had been talking to other people about the
importance of trademarking”).
84 Post Dep., p. 47-48. However, Linda Shelton testified that the
issue of protecting the JOYCE marks was raised at a board
meeting, and that Cora Cahan instructed Ms. Shelton to contact
Peter Felcher to investigate protecting the marks. (Shelton
Dep., pp. 84, 110). Mr. Felcher’s testimony is not helpful on
this topic because he has no independent recollection of these
events. (Felcher Dep. pp. 111-114 and 131-133).
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suggested that respondent should protect the JOYCE marks
because respondent was the entity responsible for managing
and operating the Joyce Theater, not because Ms. Cahan
thought that respondent was the owner of the JOYCE marks.
Q. Did you think that [respondent] as
the company that [petitioner] had
created to operate the theater was
an appropriate entity to be
spending the money to protect this
name against the third parties?

A. They had signed a lease to operate
and manage the theater, and they
had responsibilities and
obligations to operate it as a
dance theater and protect it as a
dance theater and have certain
standards of operation as a dance
theater.
So indeed, they also had a budget
to protect, manage and operate that
theater, so it seemed that given
their responsibilities and
fulfilling the mission as it was
set forth by [petitioner], that
sure, as part of their
responsibilities they should be
protecting that name.85

* * * *

Q. But if you understood that it was
the owner of the building, namely
[petitioner], that owned the name,
then why wouldn’t you have made the
recommendation to the owner of the
building or its principal, Mr.
Feld, in terms of protecting it?

A. Because actually that’s a
misstatement in terms of who owned
the name. The name was owned by
[petitioner]. However,
[respondent] was vested with the

85 Cahan Dep., p. 238
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responsibility for protecting,
maintaining, and operating the
Joyce Theater and all the
activities of the Joyce Theater.

So, therefore, if the name of the
theater was in jeopardy or if I
thought there was some chance that
someone else might use it, I might
very well have gone to the
licensee, the tenant who had
responsibility for that building
and for the name of that building,
and said because I was in a formal
relationship with them, I was on
the board and vice president of
that board, we better protect this
name.

We made a commitment to LuEsther
and we’re responsible for
protecting this theater, and it
would be consistent with protecting
the theater to protect the name
because that was an obligation of
[respondent].86

Accordingly, Ms. Cahan found it logical for respondent to
protect the JOYCE marks because respondent was responsible
for operating the theater for petitioner.
Despite having recommended that respondent seek
protection for the JOYCE marks, Ms. Cahan did not learn that
the marks had been registered in the name of respondent, or
that they had even been registered at all, until after these
proceedings were instituted.87 In fact, several years after
having been removed from the board of trustees for
respondent, Ms. Cahan suggested to Eliot Feld that he should

86 Cahan Dep., pp. 276-277. See also Post Dep., pp. 10-11, 41.
87 Cahan Dep., pp. 239-241, 279-283.
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consider protecting his company’s trademarks, including the
JOYCE marks.88
Respondent eventually registered the JOYCE marks. At
no time did respondent notify petitioner that it had filed
any applications or received the registrations.89 Thus,
petitioner was unaware of respondent’s actions until
petitioner sought to register the Joyce name iteself.90
Petitioner filed these proceedings promptly after learning
that respondent had registered the JOYCE marks in its own
name.91
Based on the evidence describing the relationship of
the parties, we find that petitioner is the owner of the
JOYCE marks and that respondent uses the JOYCE marks
pursuant to an implied license.
Decision: The petition for cancellation is granted and
the registrations will be cancelled.
The opposition is sustained and registration to
applicant is refused.

88 Cahan Dep., pp. 240-241, 279, 281-282.
89 Shelton Dep., p. 109.
90 Feld Dep., pp. 102-103
91 Respondent did not allege laches as an affirmative defense.