O’Neill Beverage Co., Ltd.

Trademark Trial and Appeal Board

Aug 15, 2013

No. 85152684 (T.T.A.B. Aug. 15, 2013)

Mailed:
Aug. 15, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re O’Neill Beverage Co., Ltd.
________

Serial No. 85152684
_______

Barry Strike and Katherine Robb of Strike & Techel for
O’Neill Beverage Co., Ltd.

Linda M. Estrada, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Seeherman, Grendel and Hightower, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

INTRODUCTION.
O’Neill Beverage Co., Ltd. (applicant) seeks
registration on the Principal Register of the mark MARTIN &
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 85152684
2
WEYRICH ROSSO ALLEGRO (in standard character form) for
goods identified in the application as “wine.”1
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark under Trademark Act
Section 2(c), 15 U.S.C. §1052(c). Specifically, the
Trademark Examining Attorney contends that the mark
comprises the names of two particular living individuals,
i.e., Mary Martin Weyrich and David Weyrich, whose written
consent to applicant’s registration of the mark is not of
record, as is required by the statute. She has made final
her requirement that applicant submit:

A written consent, personally signed by the
individual(s) whose name, signature or portrait
appears in the mark, authorizing applicant to
register the identifying matter as a trademark
and/or service mark with the USPTO, e.g., ‘I, DAVID
WEYRICH or I, MARY (MARTIN) WEYRICH, consent to the
use and registration by O’Neill Beverage Co., Ltd.
of my name as a trademark with the USPTO.

Applicant has appealed the final refusal, arguing that
an express written instrument or statement of consent to

1 Serial No. 85152684, filed on October 14, 2010. The
application is based on applicant’s allegation of a bona fide
intention to use the mark in commerce, under Trademark Act
Section 1(b), 15 U.S.C. §1051(b). The application includes a
translation statement asserting that “The English translation of
ROSSO ALLEGRO in the mark is RED CHEERFUL.” The application also
includes a disclaimer of the word ROSSO apart from the mark as a
whole. The application also includes a claim of ownership of
prior Reg. No. 2964738, which is of the mark MOSCATO ALLEGRO for
“wine.”
Ser. No. 85152684
3
register from the individuals named in the mark is not or
should not be required because those individuals should be
deemed to have given their implied consent to registration
of applicant’s mark comprising their names.
After careful consideration of the evidence of record
and the arguments of counsel, we affirm the refusal to
register.

TRADEMARK ACT SECTION 2(c).
In pertinent part, Trademark Act Section 2(c)
provides: “No trademark ... shall be refused registration
on the principal register on account of its nature unless
it ... Consists of or comprises a name, portrait, or
signature identifying a particular living individual except
by his written consent...”.2
Thus, if the mark the applicant seeks to register
includes or comprises the name of a particular living
individual, then under Section 2(c) that individual’s

2 In its entirety, Trademark Act Section 2(c) reads as follows:

No trademark by which the goods of the applicant may be
distinguished from the goods of others shall be refused
registration on the principal register on account of its
nature unless it ... (c) Consists of or comprises a name,
portrait, or signature identifying a particular living
individual except by his written consent, or the name,
signature, or portrait of a deceased President of the
United States during the life of his widow, if any, except
by the written consent of the widow.
Ser. No. 85152684
4
written consent to registration of that mark must be
submitted by the applicant, failing which registration of
the mark must be refused.

Applicant’s Mark Identifies Particular Living Individuals.
“A name is considered to ‘identify’ a particular
living individual for purposes of Section 2(c) if the
‘individual bearing the name in question will be associated
with the mark as used on the goods, either because the
person is so well known that the public would reasonably
assume the connection, or because the individual is
publicly connected with the business in which the mark is
used.’” Krause v. Krause Publications Inc., 76 USPQ2d
1904, 1909-10 (TTAB 2005), quoting Martin v. Carter Hawley
Hale Stores, Inc., 206 USPQ 931, 933 (TTAB 1979). Also,
Section 2(c) “operates to bar the registration of marks
containing not only full names, but also surnames,
shortened names, nicknames, etc., so long as the name in
question does, in fact, ‘identify’ a particular living
individual.” In re Sauer, 27 USPQ2d 1073, 1074 (TTAB
1993).
The evidence of record establishes and, in its appeal
brief applicant apparently does not dispute, that for
purposes of Section 2(c) in this case, the designation
Ser. No. 85152684
5
MARTIN & WEYRICH in the mark applicant seeks to register
identifies particular living individuals, i.e., Mary Martin
Weyrich and David Weyrich. The Trademark Examining
Attorney has submitted Internet evidence showing that these
individuals were the previous owners of and were publicly
associated with the Martin & Weyrich Winery, a winery in
Paso Robles, California. For example:

Becoming the new sole owners of Martin Brothers in
1998, along with their eight children, David and
Mary (Martin) Weyrich are working hard on
strengthening an already impressive reputation. ...
Martin & Weyrich Winery was the first modern grower
and producer of Nebbiolo in the U.S.3

Growth for the Martin & Weyrich Winery was slow and
steady, and in 1998, David and his wife Mary Martin
Weyrich bought out all the other family members. By
then, the winery had grown to 180 acres through the
purchase of the Weyrich Family Home Ranch two years
earlier. ... Total production for Martin & Weyrich
Winery exceeds 80,000 cases, making it one of the
larger wineries along the Central Coast.4

Martin & Weyrich were among the first families to
recognize the incredible potential of the future
Paso Robles Viticultural Appellation. ... In a few
short years, Martin Weyrich became known as one of
the country’s premier producers of Italian

3 A page from the website www.pasowine.com, downloaded December
16, 2010 and attached to the Trademark Examining Attorney’s
December 17, 2010 Office Action.

4 A page from the website www.goldmedalwineclub.com, downloaded
on July 12, 2011 and attached to the Trademark Examining
Attorney’s July 15, 2011 Office Action.

Ser. No. 85152684
6
varietals. ... In 1998 David and Mary (Martin)
Weyrich purchased the winery from their siblings.5

Based on this evidence and on applicant’s apparent
concession of the point, we find that the mark MARTIN &
WEYRICH ROSSO ALLEGRO comprises the names of and identifies
two particular living individuals, i.e., Mary Martin
Weyrich and David Weyrich.

Written Consent to Register is Required.
Because the mark applicant seeks to register comprises
the names of particular living individuals, Section 2(c)
requires those individuals’ written consent to registration
of the mark as a pre-condition to such registration.
The record in this case includes no written
document(s) or instrument(s) signed by Mary Martin Weyrich
and David Weyrich which would constitute their express
written consent to applicant’s registration of its mark
comprising their names. Because no such written consent to
register is of record, Section 2(c) bars registration of
applicant’s mark. We therefore find the Trademark
Examining Attorney’s refusal of registration under Section
2(c) to be proper.

5 May 13, 2009 online article from Entrepreneur, at
www.entrepreneur.com, attached to the Trademark Examining
Ser. No. 85152684
7
However, applicant contends that an express written
statement of consent should not be required in order to
register its mark in this case because, based on the facts
recounted later in this opinion, Mary Martin Weyrich and
David Weyrich should be deemed to have impliedly consented
to applicant’s registration of its mark comprising their
names, and that such implied consent is sufficient for
purposes of Section 2(c).
In response, the Trademark Examining Attorney contends
that, at most, applicant with its evidence has shown that
Mary Martin Weyrich and David Weyrich have impliedly
consented to applicant’s use of its mark comprising their
names, but not also to the registration of that mark, as
required by Section 2(c).
It is long-settled that, to overcome the Section 2(c)
statutory bar to registration, the written consent of the
particular individual named in the mark must be that
individual’s consent to registration of the mark, not
merely consent to the use of the mark.
The early inter partes cancellation case of Mary
Garden v. Parfumerie Rigaud, Inc., 34 USPQ 30 (Comm’r Pats.
1937), which was decided under Section 5 of the 1905
Trademark Act (the precursor to Section 2(c) of the 1946

Attorney’s July 15, 2011 Office Action.
Ser. No. 85152684
8
Lanham Act),6 involved a mark comprising the name MARY
GARDEN and Ms. Garden’s portrait. The Commissioner of
Patents held that even though Mary Garden had given her
express written consent to the respondent corporation’s use
of the mark bearing her name and portrait, that did not
satisfy the statute’s requirement for her written consent
to the corporation’s registration of that mark. The
Commissioner stated: “The statute leaves nothing to
inference or implication. The requirement is unmistakably
clear that before the portrait of a living individual may
be registered as a trade mark his written consent to such
registration must be supplied.” Mary Garden, supra, 37
USPQ at 31.
In the Section 2(c) inter partes cancellation case of
Reed v. Bakers Engineering & Equipment Co., 100 USPQ 196
(Comm’r Pats. 1954), involving the respondent corporation’s
mark REED REEL OVEN, the Commissioner of Patents held that
even if the individual named in the respondent
corporation’s mark, Mr. Reed, were to be deemed to have
given his implied consent to the corporation’s use of the
mark comprising his name by virtue of his long-time
association with the corporation, that did not satisfy the

6 Section 5 of the 1905 Trademark Act provided as follows, in
pertinent part: “No portrait of a living individual may be
Ser. No. 85152684
9
statute’s requirement for his written consent to the
corporation’s registration of that mark. Rejecting the
contention that the right to use necessarily also
constitutes the right to register, the Commissioner stated:

This, however, is a non sequitur; while the right to
register derives from the right to use, the right to
register is based upon the specific requirements of
the statute relating to registration and if the
requirements are not met there is no right to
register. The statute requires the written consent
of a particular individual in certain cases and if
this written consent does not exist in those cases
in which it is required there can not be any
registration. The only material question involved is
whether this is a case where the written consent of
a particular individual is required. Consent to
register must be distinguished from consent to use.
There may very well be consent to use without any
consent to register. And neither is consent to
register sufficient under the statute unless it is a
written consent as specified in the statute.

Reed, supra, 100 USPQ at 199.
In the inter partes cancellation case of Laub v.
Industrial Development Laboratories, Inc., 101 USPQ 595
(TTAB 1959), involving the respondent corporation’s mark
LAUB, the Board held that Mr. Laub’s previous grant to the
respondent corporation of an express license to use the
mark comprising his name was insufficient to satisfy the
statute’s express requirement for his written consent to

registered as a trade mark except by the consent of such
individual, evidenced by an instrument in writing.”
Ser. No. 85152684
10
the corporation’s registration of that mark. “In the
absence of such written consent, registration must be
refused.” Laub, supra, 101 USPQ at 595.
In the ex parte case of In re New John Nissen
Mannequins, 227 USPQ 569 (TTAB 1985), involving the
applicant corporation’s mark JOHN NISSEN MANNEQUINS, the
Board affirmed the refusal under Section 2(c), holding that
even if the individual named in the applicant’s mark, John
Nissen, were to be deemed to have impliedly consented to
the applicant’s use of the mark comprising his name by
virtue of his previous signature on the deed of
incorporation of the applicant’s predecessor corporation
and his previous written consent to the use of his name in
several foreign trademark registrations, that did not
satisfy the statute’s requirement for his written consent
to the applicant corporation’s registration of that mark.
The Board stated: “The statutory language is clear in its
prohibition of registration where the mark comprises the
name of a living individual except by his written consent.”
In re New John Nissen Mannequins, supra, 227 USPQ at 571.
The ex parte case of In re D.B. Kaplan Delicatessen,
225 USPQ 342 (TTAB 1985), upon which applicant in the
present case specifically relies (see discussion infra),
appears to be the only reported Section 2(c) case in which
Ser. No. 85152684
11
it was found that the lack of a specific express written
consent to registration did not preclude registration of a
mark naming a particular living individual, because the
named individual was found to have impliedly consented to
registration of the applicant’s mark comprising his name.
In Kaplan, the applicant corporation, D.B. Kaplan
Delicatessen, sought to register the mark D.B. KAPLAN
DELICATESSEN for restaurant services. Registration was
refused under Section 2(c) on the ground that the mark
comprised the name of a living individual, i.e., D.B.
Kaplan, whose written consent to registration was not of
record.
The evidence of record in Kaplan established that
Donald Kaplan was one of the original shareholders,
officers and directors of the applicant corporation. Mr.
Kaplan and the other original shareholder, Lawrence Levy,
had entered into a written agreement whereby Mr. Kaplan
agreed to sell, and Mr. Levy agreed to purchase, Mr.
Kaplan’s entire interest in the corporation. According to
the Board’s opinion, this “buy-out” agreement provided in
pertinent part that the trade name and service mark “D.B.
Kaplan Delicatessen” and any name or mark confusingly
similar thereto was to be the property of the applicant
Ser. No. 85152684
12
corporation D.B. Kaplan Delicatessen, Inc., and that Donald
Kaplan could not use it in any subsequent business.
The Trademark Examining Attorney contended that, under
the terms of the buy-out agreement, Mr. Kaplan had merely
consented to the applicant corporation’s use of his name in
its mark, but not to the applicant’s registration of that
mark, as required by Section 2(c).
However, the Board found:

In the present case, Donald Kaplan has indicated in
writing that the trade name and service mark “D.B.
Kaplan Delicatessen” and any name or mark
confusingly similar thereto is the property of D.B.
Kaplan Delicatessen, Inc., the applicant herein, and
that Donald Kaplan cannot use it in any subsequent
business. We disagree with the Examining Attorney
that the foregoing agreement is simply a consent to
use and does not constitute a consent to register.
Kaplan clearly has relinquished to applicant
corporation all rights in the mark “D.B. Kaplan
Delicatessen” which comprises his name and has
agreed that he cannot use it in any subsequent
business. We think that these provisions are beyond
a mere “consent to use” situation and that a
reasonable reading of this provision clearly implies
that consent to applicant's registration of the mark
was contemplated.

Kaplan, supra, 225 USPQ at 344. The Board concluded:

The fact that Kaplan has agreed in the document
[that] applicant owns the name and mark “D.B. Kaplan
Delicatessen” and that Kaplan cannot use it in any
subsequent business is, in our view, all that is
necessary to satisfy the requirement that a
particular living individual consent to the use and
Ser. No. 85152684
13
registration by another of a mark comprised of that
individual's name.”

Id.
The Board reached the opposite conclusion in the inter
partes cancellation case of Krause v. Krause Publications
Inc., supra, which appears to be the most recent reported
case (decided in 2005) involving the issue of Section 2(c)
“implied consent.”
In Krause, the respondent corporation, Krause
Publications Inc., had registered the mark KRAUSE
PUBLICATIONS. Petitioner Chester L. Krause, the individual
named in the mark, was the original founder of respondent
corporation but was no longer associated with the
corporation. Mr. Krause petitioned to cancel the
respondent’s registration of the mark KRAUSE PUBLICATIONS
on the ground that he did not consent and had not consented
in writing to registration of the mark bearing his name, as
required by Section 2(c).
In its defense, the respondent corporation maintained
in pertinent part that Mr. Krause’s written consent was
unnecessary because, by virtue of various previous written
agreements and dealings with the corporation, he had
impliedly consented to respondent’s registration of the
mark bearing his name. Specifically, respondent contended
Ser. No. 85152684
14
that Mr. Krause had impliedly consented to the
corporation’s registration of the mark by virtue of the
facts that: (a) he had incorporated his company, which had
been a sole proprietorship doing business as “Krause
Publications,” into the respondent corporation, which then
continued doing business as “Krause Publications”; (b) he
later sold all of his shares of stock in the corporation to
the corporation’s employee stock ownership plan; and (c) at
various times as the corporation’s president and chairman
of the board, he had pledged the corporation’s assets,
including its trademarks comprising his name, as security
for obtaining loans to finance the corporation’s operations
and expansion.
In granting the petition for cancellation, the Board
found that these facts did not support a finding that Mr.
Krause had consented to the respondent corporation’s
registration of the KRAUSE PUBLICATIONS mark, for purposes
of Section 2(c). Specifically distinguishing Kaplan, the
Board found that in none of the prior transactions
involving Mr. Krause had he ever expressly stated in
writing that the mark KRAUSE PUBLICATIONS was the property
of respondent corporation, nor had he ever agreed to
refrain from use of his name in any subsequent business.
Based on these findings, the Board held that Section 2(c)’s
Ser. No. 85152684
15
explicit requirement for written consent to registration of
the mark had not been met.
With this prior caselaw in mind, we turn now to the
evidence applicant has submitted in support of its claim
that Mary Martin Weyrich and David Weyrich, the individuals
named in its mark MARTIN & WEYRICH ROSSO ALLEGRO, should be
deemed to have consented to applicant’s registration of
that mark.

The Receivership Order and the Asset Purchase Agreement.
The record establishes (or reasonably suggests) the
following facts which occurred prior to the filing of
applicant’s present application on October 14, 2010. We
derive these facts from the documents submitted by
applicant with its June 12, 2011 response to the Trademark
Examining Attorney’s December 17, 2010 Office action.
These documents include a February 11, 2010 “Order
Appointing Limited Purpose Receiver and Issuing Preliminary
Injunction” issued by the Superior Court of the State of
California for the County of San Luis Obispo Paso Robles
Branch (Case No. 098250) (the “Receivership Order”), and an
April 29, 2010 “Asset Purchase Agreement” between the
court-appointed Receiver, as Seller, and O’Neill Beverage
Ser. No. 85152684
16
Company, Ltd. (applicant herein), as Buyer (the “Asset
Purchase Agreement”).
The Martin Weyrich Winery LLC, and its principals Mary
Martin Weyrich and David Weyrich, had obtained a loan from
Heritage Oaks Bank, a California bank, secured by certain
collateral (see below). The borrowers defaulted on the
loan. The bank then brought a lawsuit based on its rights
under the secured loan agreement. The Receivership Order
indicates that the defendants named in the lawsuit included
Martin Weyrich Winery, LLC, a California limited liability
company, and David Weyrich and Mary Martin Weyrich,
individually and as husband and wife.
The Receivership Order indicates that earlier in the
judicial proceedings, the bank and “the Winery” had entered
into a “Stipulation and Order Appointing Limited Purpose
Receiver and Issuing Preliminary Injunction” (the
“Stipulation”). (Receivership Order, “Findings” ¶1.) The
Stipulation itself is not of record. The Receivership
Order does not expressly indicate whether the named
defendants David Weyrich and Mary Martin Weyrich, as
individuals, were themselves (in addition to Martin Weyrich
Winery LLC) parties to, or signatories to, the Stipulation.
The February 11, 2010 Receivership Order stated that
the case had, at that time, come up to the court on the
Ser. No. 85152684
17
bank’s “ex parte application to request that the terms of
the Stipulation be ordered by the Court....” (Receivership
Order, “Findings” ¶2.) The Receivership Order stated that
“[t]he Stipulation provided among other things, that it may
be entered by the Court upon plaintiff’s ex parte
application, without showing of cause or other
justification and without objection by defendants.”
(Receivership Order, “Findings” ¶1.)
The Receivership Order (at page 1) stated that “No one
appeared on behalf of Defendant Martin Weyrich Winery, LLC
(the ‘Winery’)” at the hearing on the bank’s ex parte
application. (Id.) Nor is there reference in the Order to
any appearance by the named individual defendants David
Weyrich and Mary Martin Weyrich.
The Receivership Order (at pp. 2-4) included a
Preliminary Injunction, which ordered:

1. Defendants and each of them, and their agents,
partners, servants, employees, and all persons acting
under, in concert with, or on behalf of any of them, are
hereby enjoined and restrained from and in any manner,
directly or indirectly, demanding, collecting,
discounting, receiving or in any way diverting any
rents, issues, profits, or income from the sale of
Plaintiff’s Collateral defined as:

All Accounts Receivables, Chattel Paper, General
Intangibles, wine inventories, all juice inventory
now owned or hereafter acquired including, but not
limited to, the following: All cased and bottled
goods, all bulk wine. All general intangibles now
Ser. No. 85152684
18
owned or hereafter acquired including but not
limited to the following: All rights to the use of
the name, “Martin Weyrich Winery LLC and/or York
Mountain Winery” this includes all wine inventory
with the “York Mountain” label and all trademarks,
whether registered or unregistered, patented, or not
yet patented, all common law copyright and all trade
names whether now in use or to be used; all
accounts, contract rights, and rights to payment of
every kind now existing or hereafter arising,
together with all possessions and returns
thereunder.

The Receivership Order’s Preliminary Injunction also
affirmatively ordered the defendants to surrender
possession of the collateral, and certain documents and
records associated therewith, to the Receiver. Preliminary
Injunction, ¶2.
The Receivership Order also provided (at pp. 4 et
seq.), in pertinent part:

5. Thomas Cook of Cook, Ekmanian & Associates (the
“Receiver”) shall be appointed as Receiver to take
possession, custody and control of the Collateral...

...

14. ... the Receiver shall operate, manage and sell
the Collateral ...

Subsequently, on April 29, 2010, the above-referenced
Asset Purchase Agreement was executed. The parties to the
agreement were “Tom Cook, State Court Receiver (Seller),
and O’Neill Beverages Co. LLC (Buyer).” The lawsuit
defendants Martin Weyrich Winery LLC and the individuals
Ser. No. 85152684
19
Mary Martin Weyrich and David Weyrich were not named as
parties to the Asset Purchase Agreement nor were they
signatories thereto.
In pertinent part, the Asset Purchase Agreement
provided:

Recital A: Seller is authorized by Order of the
San Luis Obispo County Superior Court in the case
entitled Heritage Oaks Bank v. Martin Weyrich
Winery, LLC (Case No. CV 098250) now pending, to
sell the brand names Martin & Weyrich Moscato
Allegro, the Martin Weyrich Winery, and the
associated intellectual property and intangibles and
approximately 58,152 gallons of Moscato wine and to
account for same to the Superior Court.

Recital B: Seller desires to sell and Buyer
desires to purchase the Brands and the associated
intellectual property and intangibles on the terms
and conditions set forth in this Agreement.

1. PURCHASE AND SALE OF ASSETS.
Subject to the terms and conditions of this
Agreement, and in reliance on the representations,
warranties and covenants set forth in this
Agreement, Seller agrees to sell, transfer and
assign to Buyer, and Buyer agrees to purchase and
acquire from Seller on the Closing Date (as defined
in Section 10.1), (a) all of Seller’s right, title
and interest in and to the brand names Martin &
Weyrich, Moscato Allegro, the Martin Weyrich Winery,
and the York Mountain Winery, including all
registered or unregistered trademarks, trademark
applications, trademark rights, trade names and all
derivations thereof, fictitious business names,
service marks, logos, copyrights, uncopyrighted
works (the “Brands”), (b) any related intangible
property, not including cash or accounts receivable,
associated with the Brands that were acquired by
Seller in consideration of any indebtedness or the
foreclosure of any collateral acquired held by the
Ser. No. 85152684
20
Seller or a related party in the Martin Weyrich
Winery LLC (the “Winery”), and 58,152 gallons of the
Winery’s Moscato wine (the “Wine Inventory”)
(collectively, the “Assets”). The Assets shall be
conveyed free and clear of all liens, pledges,
mortgages, security interests, restrictions,
charges, encumbrances, equities, liabilities and
claims [of] any nature (“Liens”).

...

4. REPRESENTATIONS AND WARRANTIES OF SELLER.
Seller hereby represents and warrants to Buyer as
follows:

...

4.4 Title to Assets. (i) Seller has good and
marketable title to, or has the right to use and
transfer to Buyer, each of the Assets ... The
delivery to Buyer of the instruments of transfer of
ownership contemplated by this Agreement will vest
good, marketable and exclusive title to the Assets
in Buyer free and clear of all Liens.

...

For the reasons discussed below, we find that neither
the Receivership Order nor the Asset Purchase Agreement,
whether considered separately or in conjunction with each
other, satisfies Section 2(c)’s clear requirement for Mary
Martin Weyrich’s and David Weyrich’s express written
consent to applicant’s registration of the mark comprising
their names, i.e., MARTIN & WEYRICH ROSSO ALLEGRO. Also,
to the extent that Kaplan suggests that the required
consent to register might be implied or imputed to the
named individuals in certain circumstances, we find that it
Ser. No. 85152684
21
is distinguishable on its facts from the present case. We
likewise find that there is no other valid basis in the
record for finding implied consent to register in this
case.

The Receivership Order Does Not Constitute the Named
Individuals’ Express Written Consent to Register.

The Receivership Order in the underlying lawsuit
indicates that it was based on the terms of an earlier
Stipulation which had been entered into by the plaintiff
Heritage Oaks Bank and the defendant “Martin Weyrich Winery
LLC.” The Stipulation therefore apparently was the basis
of the terms of the Receivership Order, including its
recitation of collateral to be transferred from the
individual defendants to the Receiver. We note that at
several points in its brief, applicant specifically asserts
and relies on this Stipulation as a basis for its
contention that the individuals named in its mark have
consented to registration of that mark.
The Stipulation itself is not of record. It does not
appear from the face of the Receivership Order, nor from
anything else in the record, that the individual defendants
David Weyrich and Mary Martin Weyrich themselves personally
signed the Stipulation. The Receivership Order on its face
Ser. No. 85152684
22
identifies only Martin Weyrich LLC as a party to the
Stipulation.
Given the absence of the Stipulation itself from the
record, and the apparent absence (implicit in the
Receivership Order) of the named individuals’ signatures on
the Stipulation underlying the Receivership Order, we find
that the Stipulation itself cannot be a basis for finding
that the individuals consented in writing to applicant’s
registration of its mark, for purposes of Section 2(c).
Nonetheless, the Receivership Order based on the
Stipulation refers to the lawsuit “defendants” several
times. In view thereof, we will find for purposes of this
case that the individuals, as named defendants in the
bank’s lawsuit (in addition to the named defendant Martin
Weyrich Winery LLC), were subject to the entry and terms of
the Receivership Order.
However, we find that even if the individuals may be
deemed to have been subject to the entry and terms of the
Receivership Order, there is nothing in the Receivership
Order itself which would constitute the individuals’
express written consent to registration of applicant’s mark
comprising their names, for purposes of Section 2(c).
First, the only direct substantive references in the
Receivership Order to the duties and obligations of the
Ser. No. 85152684
23
lawsuit defendants (including the individual defendants)
appear in the “Preliminary Injunction” portion of the
Receivership Order. The Preliminary Injunction negatively
enjoined and restrained the defendants from taking certain
specified actions with respect to the collateral recited in
the Order. (Preliminary Injunction ¶1.) We find that
those negatively enjoined and restrained actions did not
include and cannot in any way constitute or be construed as
the individual defendants’ affirmative consent to anything,
including their consent to registration of applicant’s
mark.
The Preliminary Injunction also imposed on the
defendants certain affirmative obligations with respect to
the surrender of the collateral and certain associated
records and documents. (Preliminary Injunction, ¶2.)
However, the specification of the affirmative obligations
on the defendants imposed by the Preliminary Injunction did
not include, whether expressly or impliedly, any obligation
with respect to registration of any trademark(s), including
any obligation on the part of the individual defendants to
provide written consent to registration of such mark(s).
Next, we agree with the Trademark Examining Attorney
that the recitation of collateral itself, which identified
the intellectual property assets being transferred to the
Ser. No. 85152684
24
Receiver, specifically identified and was limited to the
right “to the use of” the name “Martin Weyrich Winery LLC”
and additional unidentified trademarks and trade names.
The Receivership Order’s recitation of collateral included,
in pertinent part:

All general intangibles now owned or hereafter
acquired including but not limited to the following:
All rights to the use of the name, “Martin Weyrich
Winery LLC and/or York Mountain Winery” this
includes all wine inventory with the “York Mountain”
label and all trademarks, whether registered or
unregistered, patented, or not yet patented, all
common law copyright and all trade names whether now
in use or to be used.

(Receivership Order, ¶1; emphasis added.)
We find that, contrary to applicant’s argument, the
recitation of collateral did not include the right to
register the name “Martin Weyrich Winery LLC” or any
portion or derivation thereof, but specifically conveyed to
the Receiver merely the right to use that name. The
recitation of collateral did not address or provide for the
future registration of or right to register such
designation(s). We find that it thus does not constitute
the named individuals’ express consent to registration of
any trademark(s) for purposes of Section 2(c), including
the MARTIN & WEYRICH ROSSO ALLEGRO mark applicant seeks to
register here.
Ser. No. 85152684
25
We note that the Receivership Order’s recitation of
collateral to be transferred to the receiver included the
wording “all trademarks, whether registered or
unregistered.” However, reading the recitation of
collateral as a whole, we find that the introductory words
“all rights to the use of” apply to all of the following
wording, including to the words “all trademarks, whether
registered or unregistered.” That is, we find that the
assets and rights transferred to the receiver by the
Receivership Order included only the rights to the use of
the unnamed registered and unregistered trademarks, and not
the right to register any such marks. Again, we find that
this does not suffice as the named individuals’ express
consent to registration of such marks.
We also find, contrary to applicant’s unstated but
implicit contention, that the mere presence in the
recitation of collateral of a reference to “unregistered”
trademarks does not in itself constitute or imply any right
to register any such unregistered marks, and does not
constitute the the named individuals’ express consent to
any such registration.
In short, we find that the Receivership Order (which,
for purposes of this decision, we find David Weyrich and
Mary Martin Weyrich to be bound by as defendants in the
Ser. No. 85152684
26
bank’s lawsuit despite the fact that they may not have
signed the underlying Stipulation) does not in itself
suffice as a basis for finding that applicant has the right
to register the mark it seeks to register, i.e., MARTIN &
WEYRICH ROSSO ALLEGRO, as opposed to the mere right to use
the mark. It certainly does not suffice as a basis for
finding that the individuals named in applicant’s mark have
expressly consented in writing to applicant’s registration
of that mark, as required by Section 2(c).

The Asset Purchase Agreement Does Not Constitute the Named
Individuals’ Express Written Consent to Register.

Next, we find that the Asset Purchase Agreement
between the Receiver and applicant, which was authorized by
the Receivership Order, does not suffice as the named
individuals’ express written consent to registration of
applicant’s mark comprising their names, for purposes of
Section 2(c).
It is clear from the face of the Asset Purchase
Agreement that it was not personally signed by David
Weyrich and Mary Martin Weyrich, but rather by the Receiver
as “Seller.” We find that it therefore cannot be deemed to
be the individuals’ express written consent to anything,
including in particular their written consent to
Ser. No. 85152684
27
registration of applicant’s mark comprising their names,
MARTIN & WEYRICH ROSSO ALLEGRO, for purposes of Section
2(c).
We also find that the Receiver’s signature on the
Asset Purchase Agreement does not suffice for this purpose.
Section 2(c) clearly requires that the written consent to
register must be that of the individual named in the mark.
The named individual’s right under Section 2(c) to consent
to registration of a mark comprising his/her name is a
right that is personal to the individual. Cf. Ross v.
Analytical Technology Inc., 51 USPQ2d 1269, 1276 (TTAB
1999)(finding that, in the context of an opposition
proceeding involving a Section 2(c) claim by the individual
named in the applicant’s mark (as plaintiff/opposer), the
equitable defenses of laches, acquiescence and estoppel are
available to the defendant/applicant, because the named
individual’s Section 2(c) claim is personal in nature).
In view thereof, we find as a general matter that, for
purposes of Section 2(c), any asserted conveyance or
transfer to another of the named individual’s right to
consent to register, if that right may be conveyed at all,
must be clearly and explicitly expressed in writing by the
named individual. In the absence of such clear and
explicit conveyance of such right to consent to
Ser. No. 85152684
28
registration, we will not impute such Section 2(c) consent
to the named individual, especially in an ex parte case.
No such clear and explicit written conveyance by the
named individuals David Weyrich and Mary Martin Weyrich of
their Section 2(c) right to consent to registration of
applicant’s mark comprising their names is present in this
case. As noted above, the Receivership Order is silent on
this issue. We find that the Receiver therefore was not
entitled in the Asset Purchase Agreement (or otherwise) to
assert any such consent to register on the individuals’
behalf or in their stead, and we will not impute such
consent to the individuals.
Moreover, even if we were to find that the Receiver
was entitled to act in the individuals’ legal stead in
executing the Asset Purchase Agreement pursuant to the
Receivership Order, it would not suffice in this case. As
noted above, the Receivership Order did not transfer to the
Receiver the right to register any trademark(s), nor did it
address the issue of the named individuals’ consent to
register any trademark(s). This includes the mark MARTIN &
WEYRICH ROSSO ALLEGRO. The Receiver could not convey to
applicant in the Asset Purchase Agreement what he had not
received under the Receivership Order to begin with.
Ser. No. 85152684
29
In short, we find that the Asset Purchase Agreement
between the Receiver and applicant, whether considered
alone or in conjunction with the Receivership Order, does
not constitute or suffice as the named individuals’ express
written consent to registration of applicant’s mark, for
purposes of Section 2(c). The named individuals did not
themselves sign the Asset Purchase Agreement, nor was the
Receiver entitled and clearly authorized by the individuals
to do so in their legal stead. In any event, the assets
conveyed to the Receiver under the Receivership Order did
not include the named individuals’ right to consent to
applicant’s registration of the mark comprising their
names, and the Receiver therefore was not entitled to grant
such consent to register to applicant under the Asset
Purchase Agreement.

Ownership of a Mark Is Not Necessarily An Entitlement to
Register That Mark.

Applicant argues that under the terms of the
Receivership Order and the Asset Purchase Agreement,
applicant acquired from the Receiver outright and exclusive
title to, and full ownership of, all of the winery’s
intellectual property assets including its trademarks and
trademark rights, which would include the mark MARTIN &
Ser. No. 85152684
30
WEYRICH ROSSO ALLEGRO. Applicant contends: “Ownership is
more than a right to use for certain specific matters or
for a limited period of time; it constitutes free and full
rights to use the item in all legal manners.” (Applicant’s
Brief at 4-5.) Applicant argues that its outright
ownership of the winery’s trademarks, including the
trademark MARTIN & WEYRICH ROSSO ALLEGRO, necessarily
encompasses all rights appurtenant to such ownership, and
that those rights necessarily include the right to register
the trademarks, and not merely the right to use them.
We are not persuaded by these arguments.
First, we find that the Receivership Order in fact did
not specifically transfer ownership of the mark MARTIN &
WEYRICH ROSSO ALLEGRO to the Receiver (nor even mention
that mark).
However, even if we were to assume that applicant in
fact acquired from the Receiver under the Asset Purchase
Agreement outright ownership of the trademark MARTIN &
WEYRICH ROSSO ALLEGRO it now seeks to register, we find
that applicant’s ownership of that trademark does not in
itself entitle applicant to register that trademark without
the written consent of the individuals named in the mark,
as required by Section 2(c).
Ser. No. 85152684
31
Trademark Act Section 1(a)(1), 15 U.S.C. §1051(a)(1),
provides in pertinent part that “[t]he owner of a trademark
used in commerce may request registration of its
trademark...”.7 However, that right to request
registration is explicitly subject to the restrictions of
Trademark Act Section 2, 15 U.S.C. §1052, which provides
that “No trademark ... shall be refused registration on the
Principal Register on account of its nature unless...”
(emphasis added) it falls within the proscriptions
specified in Section 2. These include, for example,
Section 2(d)’s bar to registration of a mark which is
confusingly similar to a previously-registered mark, and
Section 2(e)(1)’s bar to registration of a merely
descriptive mark. In such circumstances, an applicant’s
mere ownership of such a mark does not entitle it to
register that mark.
Section 2(c) is one of these explicit bars to
registration. It expressly provides that a mark which
comprises the name of a particular living individual may
not be registered without that individual’s express written

7 In the equivalent context of applicant’s intent-to-use
application in this case, Trademark Act Section 1(b)(1), 15
U.S.C. §1051(b)(1), provides that “A person who has a bona fide
intention, under circumstances showing the good faith of such
person, to use a trademark in commerce may request registration
of its trademark...”.

Ser. No. 85152684
32
consent to such registration. The fact that an applicant
may be the owner of the subject mark comprising the name of
a particular living individual does not relieve the
applicant of the statutory obligation to supply the named
individual’s written consent to registration. As the
Commissioner held in Reed v. Bakers Engineering & Equipment
Co., supra,

... the right to register is based upon the specific
requirements of the statute relating to registration
and if the requirements are not met there is no
right to register. The statute requires the written
consent of a particular individual in certain cases
and if this written consent does not exist in those
cases in which it is required there can not be any
registration.

100 USPQ at 199.
In short, even if we assume that applicant in fact is
the owner of the particular mark MARTIN & WEYRICH ROSSO
ALLEGRO by virtue of the Receivership Order and/or the
Asset Purchase Agreement, such ownership does not in itself
entitle applicant to register that mark without the written
consent to such registration of the individuals named in
the mark. That written consent is expressly and explicitly
required by Section 2(c). Because no such written consent
Ser. No. 85152684
33
is of record, Section 2(c) bars registration of applicant’s
mark.8

Kaplan is Distinguishable.
Applicant argues that the case of In re D.B. Kaplan
Delicatessen, supra, is highly analogous to this case.
Applicant argues that the Board in Kaplan found that,
despite the absence of an express written statement of
consent by Mr. Kaplan to the applicant’s registration of
the mark bearing his name, D.B. KAPLAN DELICATESSEN, the
written buy-out agreement between Mr. Kaplan and the
corporation was more than merely Mr. Kaplan’s consent to
the corporation’s use of his name in its mark. The Board
held that the buyout agreement constituted Mr. Kaplan’s
implied consent to the corporation’s registration of its
mark, and that this implied consent to register was
sufficient for purposes of Section 2(c).
Likewise in the present case, applicant argues, the
Stipulation, the Receivership Order and the Asset Purchase

8 We note that, if prior to the bank’s lawsuit the Martin Weyrich
Winery LLC itself had been the owner of the mark MARTIN & WEYRICH
ROSSO ALLEGRO comprising the individuals’ names, and had itself
sought to register the mark, it, like applicant, would have been
required under Section 2(c) to provide the written consent of the
named individuals to registration of the mark. Cf. Trademark
Manual of Examining Procedure § 1206.04(b) (April 2013) (consent
to register may be presumed only if the application is personally
signed by the individual whose name appears in the mark).
Ser. No. 85152684
34
Agreement suffice to establish David Weyrich’s and Mary
Martin Weyrich’s implied consent to applicant’s
registration of its mark comprising their names. Applicant
argues that, under Kaplan, this implied consent to register
suffices for purposes of Section 2(c), even in the absence
of the named individuals’ express written consent to such
registration.
However, to the extent that Kaplan suggests that
implied consent might be sufficient to satisfy Section
2(c)’s explicit requirement for the named individual(s)’
written consent to register the applicant’s mark, we find
that Kaplan is distinguishable on its facts from the
present case in several crucial respects.
First, in Kaplan, Mr. Kaplan himself had personally
signed the buyout agreement between himself and the
applicant corporation upon which the applicant was basing
its claim of implied consent to register its mark. In the
present case, by contrast, David Weyrich and Mary Martin
Weyrich did not themselves personally sign the Asset
Purchase Agreement upon which applicant bases its claim of
implied consent. As discussed above, we find that the
Receiver’s signature on the Agreement is not sufficient,
because he had not been expressly authorized by the
individuals to assert their personal right to consent to
Ser. No. 85152684
35
registration in their legal stead. Also, insofar as
applicant is basing its claim of implied consent on the
original Stipulation underlying the terms of the
Receivership Order, including its recitation of collateral,
it does not appear on this record, as discussed above, that
David Weyrich and Mary Martin Weyrich had personally signed
that Stipulation either.
Second, Kaplan is distinguishable from the present
case because, in Kaplan, Mr. Kaplan had expressly
acknowledged in the written buyout agreement that the
particular mark the applicant sought to register, D.B.
KAPLAN DELICATESSEN which had been in long use as the name
of the business, and any mark(s) confusingly similar
thereto, were the property of the applicant corporation.
In the present case, by contrast, nothing in the record
establishes that David Weyrich and Mary Martin Weyrich have
ever expressly acknowledged, whether in the Stipulation,
the Receivership Order, the Asset Purchase Agreement or
otherwise, that the particular mark applicant seeks to
register, MARTIN & WEYRICH ROSSO ALLEGRO, and any mark(s)
confusingly similar thereto, are the property of applicant.
As discussed above, ownership of that mark was never
conveyed or otherwise transferred to applicant in any of
those documents, nor was it even mentioned.
Ser. No. 85152684
36
We also find this to be so with respect to the “brand
name” MARTIN & WEYRICH which was specifically identified in
Section 1 of the Asset Purchase Agreement as one of the
assets being conveyed by the Receiver to applicant. Even
if we assume that ownership of this designation per se was
in fact conveyed to applicant in the Asset Purchase
Agreement, and that the named individuals impliedly
consented to such conveyance and thereby impliedly
acknowledged applicant’s ownership of that designation,
that does not suffice under Section 2(c) or Kaplan as the
individuals’ consent to register the mark MARTIN & WEYRICH
ROSSO ALLEGRO.
In this regard, the individuals’ implied
acknowledgement of applicant’s ownership of the designation
MARTIN & WEYRICH itself, if any, would not also and
necessarily constitute their acknowledgement of applicant’s
ownership of and right to register in the future any and
all marks which might include that designation or otherwise
comprise their names. To conclude otherwise would
effectively be entitling applicant, notwithstanding Section
2(c), to register any mark comprising the designation
MARTIN & WEYRICH or otherwise comprising the individuals’
Ser. No. 85152684
37
names, no matter how objectionable a particular mark might
be to them.9
Third, we find that Kaplan is distinguishable from the
present case because, in Kaplan, Mr. Kaplan had expressly
agreed in the buyout agreement that he would not use the
mark D.B. KAPLAN DELICATESSEN, nor any confusingly similar
mark(s), in any future business. In the present case,
David Weyrich and Mary Martin Weyrich have never expressly
agreed, whether in the Asset Purchase Agreement or
otherwise, that they were relinquishing their right to use
marks comprising their names in any future business
endeavors.

9 This implicates the named individuals’ rights of privacy and
publicity which underlie Section 2(c), i.e., their right to
control the commercial exploitation of their names and
identities. See generally The University of Notre Dame du Lac v.
J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505,
509 n.8 (Fed. Cir. 1983). Trademark Act Section 2(c) “is
intended to protect the intellectual property right of privacy
and publicity that a living person has in his/her identity.” In
re Hoefflin, 97 USPQ2d 1174, 1176 (TTAB 2010). The Board has
stated that, “If Section 2(c) is viewed as an embodiment of at
least the concept of the right of publicity, it must be construed
as a protection of the right of a person to control the
commercial use of his or her identity.” Ross v. Analytical
Technology Inc., supra, 51 USPQ2d at 1276 n.13 (TTAB 1999). In
Kaplan itself, the Board stated that “[t]he logical rationale for
the proscription of registration in Section 2(c) of the Act is to
protect living individuals ... from the commercial exploitation
of their names ... except where those living individuals ...
agree to such exploitation as evidenced by the written consent of
the individual ... to the use and registration of the name by the
applicant seeking to register a mark which consists of or
comprises said name.” In re D.B. Kaplan Delicatessen, supra, 225
USPQ at 344.

Ser. No. 85152684
38
As noted above, Kaplan appears to be the only reported
Section 2(c) case finding that the consent to register
required by the statute can be implied consent. Given the
clear language of Section 2(c) requiring written consent to
register, we find that Kaplan should be read narrowly and
limited to its specific facts.
In Kaplan, the Board found that, in the buyout
agreement between Mr. Kaplan and the applicant corporation,
which was personally signed by Mr. Kaplan, “... Kaplan
clearly has relinquished to applicant corporation all
rights in the mark “D.B. Kaplan Delicatessen” which
comprises his name and has agreed that he cannot use it in
any subsequent business.” Kaplan, supra, 225 USPQ at 344
(emphasis added). In this case, by contrast, we find that
the individuals named in applicant’s mark have not clearly
relinquished their rights in mark(s) comprising their
names, including the mark MARTIN & WEYRICH ROSSO ALLEGRO
which applicant seeks to register. The Board also found in
Kaplan that the written buyout agreement between Kaplan and
the applicant corporation “... clearly implies that consent
to applicant’s registration of the mark was contemplated
...”. Id. (Emphasis added). We find on the record in
this case that any implication that David Weyrich and Mary
Martin may have consented to applicant’s registration of
Ser. No. 85152684
39
its mark comprising their names, or that consent to
register was clearly contemplated in the Asset Purchase
Agreement or otherwise, is far from clear.

Section 2(c) Is Applicable In This Ex Parte Case.
Finally, applicant argues in effect that the Section
2(c) refusal should be reversed and that its application
should be passed to publication for opposition, thereby
giving the named individuals an opportunity to, and
imposing on them the obligation of, opposing registration
of the mark if they object to such registration. Applicant
argues:

Furthermore, the Individuals are not contesting
registration of the Mark. In both Krause and
Kaplan, registration of the mark in question was
opposed by the individual whose name was a part
of the mark. The opposition itself may give rise
to a question of whether implied consent exists
or does not. In the present case, however, the
only opposition to registration of the mark is
from the examining attorney, not the Individuals
whose names are in question.

(Applicant’s Brief at 7.) This argument is unavailing.
Section 2(c) is an absolute statutory bar to
registration where the mark comprises the name of a
particular living individual without that individual’s
written consent. This includes ex parte examination
Ser. No. 85152684
40
practice involving a Trademark Examining Attorney’s refusal
to register a mark which violates Section 2(c).10 The
Section 2(c) bar to registration certainly is applicable in
inter partes cases brought by the individual named in the
mark at issue, such as the Mary Garden, Reed, Laub, and
Krause cases discussed earlier in this opinion. However,
nothing in the clear language of Section 2(c), nor its
relevant caselaw, nor elsewhere in the Trademark Act,
limits the operation of Section 2(c) to inter partes
cases.11

CONCLUSION AND DECISION.
Trademark Act Section 2(c) is clear in precluding
registration of a mark that comprises the name of a
particular living individual without that individual’s
written consent to such registration. “The statute leaves

10 As discussed above, in the context of an inter partes case the
right of the named individual (as plaintiff) to consent to
registration of a mark comprising his/her name is a right that is
personal to him/her. However, that does not relieve the Office
of its duty to refuse registration ex parte under Section 2(c) if
a proper requirement for written consent to register has not been
satisfied by the applicant.

11 Applicant is incorrect in asserting that Kaplan was an inter
partes case in which registration of the applicant’s mark was
contested by the named individual himself. Kaplan was an ex
parte case involving the Trademark Examining Attorney’s refusal
to register the applicant’s mark. Likewise, In re New John
Nissen Mannequins, supra, was an ex parte case.

Ser. No. 85152684
41
nothing to inference or implication. The requirement is
unmistakably clear that before the portrait [or name] of a
living individual may be registered as a trade mark his
written consent to such registration must be supplied.”
Mary Garden, supra, 37 USPQ at 31. “The statute requires
the written consent of a particular individual in certain
cases and if this written consent does not exist in those
cases in which it is required there can not be any
registration.” Reed, supra, 100 USPQ at 199.
In this case, the evidence establishes that, for
purposes of Section 2(c), applicant’s mark MARTIN & WEYRICH
ROSSO ALLEGRO comprises the names of two particular living
individuals, Mary Martin Weyrich and David Weyrich. The
evidence also establishes that these individuals have not
expressly consented in writing to applicant’s registration
of the mark as required by Section 2(c). To the extent
that, under Kaplan, the consent to register required by
Section 2(c) might be implied consent, we find Kaplan to be
distinguishable on its facts and that no such implied
consent to register is present in this case.
For these reasons, we conclude that the Section 2(c)
refusal to register applicant’s mark is proper.

Decision: The refusal to register is affirmed.
Ser. No. 85152684
42
Seeherman, Administrative Trademark Judge, dissenting:

I respectfully dissent from the majority’s view that
applicant has failed to satisfy the requirements of Section
2(c) of the Act regarding the written consent of the
individuals named in the applied-for mark. Although,
unlike in most situations involving a mark containing a
personal name, there is no specific document labeled
“Consent” in which the named individual specifically
consents to the registration and use of his or her name,
the documents of record are sufficient, in my view, to
satisfy the requirements of the statute for such written
consent.
The majority has done a very thorough job in examining
each of the documents that are of record, or that have been
discussed, and has reached the conclusion that none of them
constitutes the written consent of David Weyrich and Mary
Martin Weyrich, the individuals named in the mark.
However, in my view, when the documents are considered in
their entireties, and in connection with the activities
regarding the security interest and subsequent court
proceeding and sale, they are sufficient to demonstrate
consent for purposes of meeting the statutory requirement.
See West Florida Seafood Inc. v. Jet Restaurants Inc., 31
F.3d 1122, 31 USPQ2d 1660 (Fed. Cir. 1994).
Ser. No. 85152684
43
As noted, the Martin Weyrich Winery LLC and its
principals Mary Martin Weyrich and David Weyrich had
obtained a loan from Heritage Oaks Bank, secured by certain
collateral. The borrowers defaulted on the loan. The bank
then brought a lawsuit based on its rights under the
secured loan agreement, naming, inter alia, Mr. and Ms.
Weyrich, as defendants. As a result of the lawsuit, the
Court issued a Receivership Order which, as noted in the
majority opinion at p. 22, applied to David Weyrich and
Mary Martin Weyrich. The Order indicated that the
collateral that the bank had obtained from the defendants,
including the Weyriches, would be sold.12 The collateral
was defined as, inter alia, “all general intangibles now
owned or hereafter acquired,” including “all trademarks,
whether registered or unregistered.” ¶ 1. The Order
appointed Thomas Cook as the Receiver of the collateral
discussed in the Order, and authorized him to sell the
collateral. Mr. Cook subsequently entered into an Asset
Purchase Agreement with applicant, by which he transferred,
inter alia, certain brand names, and specifically including
the designation MARTIN & WEYRICH. The agreement recites
Mr. Cook’s authorization to sell the trademark by the order

12 The Order enjoined the defendants from receiving “any rents,
issues, profits, or income from the sale of Plaintiff’s
Ser. No. 85152684
44
of the San Luis Obispo Superior Court (the Receivership
Order).
There is no question that the rights in the trademark
MARTIN & WEYRICH were transferred by the Asset Purchase
Agreement pursuant to the Court Receivership Order.
Although the documents do not specifically include Mr. and
Ms. Weyrich’s consents to the registration of their names
as part of trademarks, in my view the Receivership Order
and the Asset Purchase Agreement should be read as
evidencing such consent. To do otherwise would essentially
eviscerate the purpose of the Order and Asset Purchase
Agreement, and have a deleterious impact on policy
involving use of trademarks as collateral.
The Order and Asset Purchase Agreement refer to
trademarks, and a transfer of trademark rights, not merely
to a transfer of personal names. This is not a situation
in which an individual is being asked to agree to the use
or registration of his or her name as a trademark, and a
written instrument is required so the Office can be sure as
to what the individual intended. Rather, Mr. and Ms.
Weyrich had been using their names as trademarks prior to
any of the incidents reflected in this record, and had
pledged their trademarks as security in order to obtain a

Collateral.” ¶ 1.
Ser. No. 85152684
45
loan. By the majority’s reading the Receivership Order and
Asset Purchase Agreement as narrowly as it has, the effect
is that the trademark collateral pledged by Mr. and Ms.
Weyrich as borrowers, and the security interest obtained by
the bank, is essentially worthless, as the applicant, who
bought the trademark as a result of the Court Order, cannot
register the trademark. I do not believe that the Court
contemplated such a result, and therefore I would interpret
the Receivership Order and the subsequent sale of the
trademark pursuant to the Asset Purchase Agreement as
evidencing Mr. and Ms. Weyrich’s written consent to the
registration of their names in the applied-for trademark.
Further, although the facts in this case are not
directly on point with the facts in Kaplan, Mr. and Ms.
Weyrich, by virtue of the Receivership Order, are enjoined
from gaining any benefits from the trademarks that include
their names. As a result, I disagree with the majority’s
view that these individuals have not relinquished their
rights in marks comprising their names. What would be the
purpose of pledging their marks as collateral, and having
the mark at issue herein sold to applicant as a result of a
Receivership Order, if Mr. and Ms. Weyrich could then use
their names in the same or other marks.
Ser. No. 85152684
46
Finally, I would argue that, to the extent that there
is any doubt on the issue of whether Mr. and Ms. Weyrich
have consented to the registration of their names in
applicant’s mark, such doubt should be resolved in favor of
publication of the mark. That is the general policy that
the Board has favored in connection with other grounds for
refusal of registration. See, for example, In re Benthin
Management GmbH, 37 USPQ2d 1332 (TTAB 1995) (surname); In
re Hines, 32 USPQ2d 1376 (TTAB 1994) (disparaging); In re
Over Our Heads Inc., 16 USPQ2d 1653 (TTAB 1990)
(scandalous); and In re Gourmet Bakers, Inc., 173 USPQ 565
(TTAB 1972) (descriptive). In fact, the only Section 2
ground that I am aware of in which this principle is not
applied is that of likelihood of confusion, because of the
rights afforded the owner of the cited registration by
virtue of that registration. In re Apparel, Inc., 366 F.2d
1022, 151 USPQ 353, 354 (CCPA 1966).