Brody Chemical Company Inc.v.Tammy L. Goldthorpe f/k/a Tammy Price

Trademark Trial and Appeal Board

Aug 11, 2014

No. 91204070re (T.T.A.B. Aug. 11, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed:
August 11, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Brody Chemical Company Inc.
v.
Tammy L. Goldthorpe f/k/a Tammy Price
_____

Opposition No. 91204070
to Application Serial No. 85099334

_____

Request for Reconsideration

David G. Bray of Dickinson Wright/Mariscal Weeks for Brody Chemical Company,
Inc.

Nathan S. Winesett of Avery, Whigham & Winesett, P.A. for Tammy L. Goldthorpe
f/k/a Tammy Price.
_____

Before Quinn, Kuhlke and Taylor, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On July 3, 2014, Opposer filed a Request for Reconsideration of the Board’s
decision issued on June 5, 2014, in which the Board dismissed Opposer’s opposition
against registration of Applicant’s mark based on the grounds of ownership.
Applicant filed a response on July 23, 2014; Opposer did not file a reply brief.
The purpose of a Request for Reconsideration is to point out errors made by
the Board in rendering its decision. Reconsideration may not be used to introduce
Opposition No. 91204070

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into the record additional evidence or to reargue points presented in the requesting
party’s brief on the case.
By its decision, the Board determined that Opposer had not established that
Applicant is not the owner of the mark.
In the Request for Reconsideration, Opposer asserts the following:
While Opposer’s Opening Brief argued that “[a] party
cannot obtain rights for thinking of an ‘idea’ for a
trademark” (Opening Brief, at p. 2) the Board did not
address this point in its Order. This fundamental
principle of trademark law is absolutely critical to the
question of whether Brody Chemical’s sole and exclusive
use of the SLIPPERY WIZARD mark should somehow
inure to the benefit of the Applicant as found by the
Board in its Order. With all due respect to the Board,
what its June 5, 2014 decision overlooked is the question of
whether Ms. Goldthorpe had any trademark rights in the
SLIPPERY WIZARD designation to orally license to Brody
Chemical back in 2004. When one applies the foregoing
undisputed facts to the law, the answer is an unequivocal
“no.”
Req. for Recon., p. 3 (emphasis in original).
Citing to excerpts from McCarthy’s treatise on trademark law and unfair
competition, Opposer concludes that:
Thus in order for Brody Chemical’s “use of the SLIPPERY
WIZARD mark” to “insure[] [sic] to Applicant’s benefit”
(Order, at p. 19), Applicant must have had some
trademark rights in the SLIPPERY WIZARD designation
at the time the parties entered into the alleged oral
license. Based on the facts and the law cited above, she
clearly did not. While Applicant may have other rights
under contract law or trade secret law, she clearly does
not have trademark rights. As a result, Opposer
respectfully requests that the Board reconsider its
decision and not allow Applicant’s SLIPPERY WIZARD
trademark application to proceed to publication.
Opposition No. 91204070

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Req. for Recon., p. 4.
Opposer relies on the following excerpts from the treatise MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION:
Rights in a trademark are gained through the use before
the relevant public in the marketplace, not through
invention. … The idea person who fails to make sure of
the intent-to-use system will find herself without
trademark rights and having to rely on the law of trade
secrets and confidential disclosures for any possible relief
against another’s use.
2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 16:11 at p. 16-25 (4th ed. June 2014);
Unlike patent law, rights in trademarks are not gained
through discovery or invention of the mark, but through
actual usage. … No trademark rights accrue to someone
who merely selects a designation without actual use of it
in the advertising or sale of goods. Trademark rights grow
out of use, not mere adoption. The mere fact that a party
conceived the idea of a trademark and discussed it with
others does not establish priority as of the date of those
events. Similarly, no priority of use is created as of the
date that a party announced to a few persons that he
intended to use a certain designation as a mark.
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 16:11 at p. 16-23-25.
However, as further explained in the treatise the first use establishing
trademark rights may be by the licensee, i.e., the trademark rights created by the
licensee’s use inure to the benefit of another, the licensor, based on a prior
agreement for the distribution and sale of a new product under a new brand name.
Ownership rights in a trademark or service mark can be
acquired and maintained through the use of the mark by
a controlled licensee even when the first and only use of
the mark was made, and is being made, by the licensee.
This is because use of a designation as a mark by a
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qualified licensee inures to the benefit of the licensor, who
as a result becomes owner of the trademark or service
mark rights in the designation. …
… For some time, there was considerable doubt as to
whether initial rights in a mark could be acquired and
sustained through use of the mark only by controlled
licensees when the licensor itself makes no use of the
mark. For example, when party Alpha creates a concept
for a hot dog fast-food franchise system identified by the
mark THE DOG HOUSE, and then licenses it to party
Zeta, is Alpha the “owner” of that mark? The argument
that at one time appeared to be the law was that because
Alpha did not use the words as a “mark” first, before
licensing, Alpha had no “mark” to license to Zeta. The
apparent result of accepting this argument is that Zeta
becomes the “owner” of the mark by virtue of being the
first to use the words as a mark to identify and
distinguish the goods or services. This result appears
grossly inequitable. If it were to be the law, Alpha would
have to first go through the formalism of itself operating
such a fast-food outlet before it could engage in licensing
others. The Fifth Circuit rejected the above argument and
held that a person like Alpha does acquire trade or service
mark ownership through first use by controlled licensees
even though Alpha itself may not have “used” the mark.
Similarly, the Trademark Board in 1981 expressly
overruled prior inconsistent decisions and held that rights
to a mark can be acquired and maintained through use of
a mark by a controlled licensee even when the only use of
the mark has been made by the licensee. PTO policy
expressly permits an application by a party who claims
use of the mark through a licensee. …
… The Trademark Law Revision Act of 1988 amended
Lanham Act § 5 to codify the case law rule that first use
by a controlled licensee inures to the benefit of the
applicant or registrant, such that rights to a mark can be
acquired and maintained through use of mark by a
controlled licensee even when the only use of the mark
has been made by the licensee.
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 18:46 (internal
citations omitted, emphasis added).
Opposition No. 91204070

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Section 5 of the Trademark Act provides:
… If first use of a mark by a person is controlled by the
registrant or applicant for registration of the mark with
respect to the nature and quality of the goods or services,
such first use shall inure to the benefit of the registrant or
applicant, as the case may be.
15 U.S.C. § 5.
Ownership rights in a trademark or service mark may be acquired and
maintained through the use of the mark by a controlled licensee even when the only
use of the mark has been made by the licensee. Turner v. HMH Publ’g Co., 380 F.2d
224, 229, 154 USPQ 330, 334 (5th Cir. 1967), cert. denied, 389 U.S. 1006, 156 USPQ
720 (1967); Cent. Fid. Banks, Inc. v. First Bankers Corp. of Fla., 225 USPQ 438, 440
(TTAB 1984). A controlled licensing agreement may be recognized whether oral or
in writing. Pneutek, Inc. v. Scherr, 211 USPQ 824, 833 (TTAB 1981); Basic Inc. v.
Rex, 167 USPQ 696 (TTAB 1970). See also In re Raven Marine, Inc., 217 USPQ 68,
69 (TTAB 1983) and TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) §
1201.03(f) (USPTO accepts applications by parties who claim to be owners of marks
through use by controlled licensees, pursuant to a contract or agreement.)
Thus, Opposer’s use of the mark SLIPPERY WIZARD, including the first use
of this mark, as Applicant’s licensee inured to the benefit of Applicant based on the
oral license entered into prior to the first sale of that product. Opposer’s contention
that “Applicant must have had some trademark rights [based on prior use] in the
SLIPPERY WIZARD designation at the time the parties entered into the alleged
oral license,” is not supported by the law.
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Opposer specifically conceded that for the purposes of the Request for
Reconsideration Applicant entered into an oral license agreement with Opposer “to
license the ASA-12 product, including its formula and the idea for the SLIPPERY
WIZARD designation.” Req. for Recon., p. 2. To the extent that footnote 2 in the
Request for Reconsideration also questions the finding that Applicant controlled the
nature and quality of the product, the record supports this finding. As noted in the
decision, Opposer’s testimony provided by Mr. Liddiard was unreliable in view of
the many contradictions with Applicant’s five witnesses, including one of Opposer’s
own witnesses, and Opposer’s tampering with a key piece of evidence. Thus,
Opposer did not meet its burden to prove by a preponderance of the evidence that
an oral license did not exist or that it was not sufficient. Moreover, Applicant’s
testimony and evidence is unrebutted and sufficient to establish an oral license and
control over the nature and quality of the product.
After carefully considering Opposer’s request, we find no error in the findings
and legal conclusions that Opposer did not meet its burden of proof to establish that
Applicant is not the owner of the mark SLIPPERY WIZARD. In view thereof,
Opposer’s Request for Reconsideration of the Board’s decision is denied, and the
decision of June 5, 2014 stands.
***