VITAFLEX Dr. Walter Mauch GmbH

Trademark Trial and Appeal Board

Jul 11, 2002

No. 75615858 (T.T.A.B. Jul. 11, 2002)

Mailed: July 11, 2002
Paper No. 14
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re VITAFLEX Dr. Walter Mauch GmbH
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Serial No. 75/615,858
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Charles L. Gagnebin III of Weingarten, Schurgin, Gagnebin &
Lebovici LLP for VITAFLEX Dr. Walter Mauch GmbH.
Amos T. Matthews, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
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Before Cissel, Quinn and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
VITAFLEX Dr. Walter Mauch GmbH, a German corporation,
has filed an application to register the mark BY DR. MAUCH
for “footwear, boots, gymnastic shoes, half-boots, inner
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/615,858
2
soles, sandals, shoes, slippers, soles for footwear, sport
shoes.”1
Registration bas been finally refused under Section
2(c) on the ground that the mark includes the name of a
living individual, namely, Dr. Mauch, whose written consent
to the use and registration of the mark has not been made
of record.
The refusal has been appealed and both applicant and
the Examining Attorney have filed briefs.2 An oral hearing
was not requested.
Applicant has acknowledged that Dr. Mauch is a living
individual. Applicant has also stated that applicant
attempted to locate Dr. Mauch to obtain his specific
written consent, but was unable to determine his
whereabouts. Applicant contends, however, that by the
provisions of the marital property settlement agreement
entered into by Dr. Mauch and his wife Margit Mauch, a copy
of which applicant has made of record, written consent has
implicitly been given to the registration of his name.
1 Serial No. 75/615,858, filed January 5, 1999, based on an
allegation of a bona fide intention to use the mark in commerce.
2 The Examining Attorney has objected to applicant’s untimely
submission of marketing documents with its brief. Pursuant to
Trademark Rule 2.142(d) the record in the application should be
complete prior to the filing of an appeal. Accordingly, we have
given no consideration to this newly filed evidence.
Ser No. 75/615,858
3
By the first provision in this agreement Dr. Mauch
conveyed to his wife his business interest in the
corporation registered under the name VITAFLEX Dr. Walter
Mauch GmbH, the applicant herein, so that Mrs. Mauch became
the sole associate of the company. By the second
provision, Dr. Mauch conveyed his share in all “protective
rights and protective rights applications which are listed
in enclosure 1 ... so that she is now the sole
owner/proprietor of any and all rights in ... 4.
trademarks, and any rights for their utilization... .”
Thus, Mrs. Mauch became the “sole owner of any and all
protective rights listed in enclosure 1.”
Looking to enclosure 1, the rights conveyed with
respect to trademarks include, inter alia, the following
marks:
1,166,676 German trademark
“by Dr. Mauch”
IR 613,103 International registration
“by Dr. Mauch”
countries named:
Austria
Benelux countries
Italy
Switzerland
74/521,165 USA trademark application
“by Dr. Mauch”
Ser No. 75/615,858
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Applicant maintains that by the plain meaning of this
agreement, Dr. Mauch has parted with all his trademark
rights in the designation BY DR. MAUCH. By signing over to
Margit Mauch all of the trademark rights of the corporation
and the various BY DR. MAUCH applications and
registrations, applicant insists it cannot be contended
that Dr. Mauch has retained any rights to use of the mark
in the future. The agreement is relied upon as sufficient
written consent to the use and registration of the mark BY
DR. MAUCH by applicant, the corporation of which Margit
Mauch became the sole associate.
The Examining Attorney takes the position that the
provisions of the settlement agreement are insufficient to
constitute written consent for applicant to register the
involved mark which includes the name Dr. Mauch. He argues
that a reasonable reading of the document provides evidence
that Dr. Mauch conveyed his rights in one particular United
States application to Mrs. Mauch, namely, 74/521,165, an
application which was later abandoned. He claims that this
document does not establish that Dr. Mauch has either given
written consent or that consent can be implied to
applicant’s use and registration of Dr. Mauch’s name in the
mark involved in the present application. He argues that
the marital settlement was directed to the division of
Ser No. 75/615,858
5
property accrued during the marriage, conveys ownership in
protective rights and the protective right applications
listed in the agreement, and does not contain any wording
as to future use of Dr. Mauch’s name.
Section 2(c) of the Trademark Act prohibits
registration of a mark that
consists of or comprises a name, portrait, or
signature identifying a particular living individual
except by his written consent... .
The facts are clear that DR. MAUCH identifies a
particular living individual and that his written consent
per se to the registration of his name as presented in the
involved mark is not of record. The issue for our
determination is whether the marital property settlement
agreement entered into by Dr. Mauch and his wife Margit
Mauch can reasonably be interpreted as Dr. Mauch’s implied
consent to the use and registration of his name in the mark
here sought to be registered, BY DR. MAUCH.
By this agreement Dr. Mauch conveyed to his wife “all
protective rights and protective rights applications”
specifically listed in the agreement. The “protective
rights and protective right applications” cover not only
various patents or patent applications, “utility models,”
and “design models” and but also specific trademarks in
registration or application form. The trademark relevant
Ser No. 75/615,858
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to our present inquiry, namely, BY DR. MAUCH, was listed as
the subject matter of a German registration, an
international registration and a United States application.
A reasonable interpretation of the rights conveyed in
the mark BY DR. MAUCH, as represented by these two
registrations and one application, would include Dr.
Mauch’s consent to the use and registration of his name in
this mark. In particular, the conveyance to his wife of
the earlier United States application for the same mark as
involved here is sufficient evidence that Dr. Mauch fully
consented to the registration of the mark, consisting for
the most part of his name, in this country. We find no
reason to conclude that the abandonment of the earlier
application eliminated this consent; instead we find it
only reasonable that the consent would carry over to the
present application, which is for the same rendering of his
name in the mark BY DR. MAUCH.
As stated by the Board in In re D.B. Kaplan
Delicatessen, 225 USPQ 342, 344 (TTAB 1985):
The 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, whether it be their
full name, shortened name, nickname, etc., 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
Ser No. 75/615,858
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which consists of or comprises said name.
Here Dr. Mauch conveyed to his wife by written
document his share in the trademark rights listed in the
agreement. These rights include the right to register the
mark BY DR. MAUCH in the United States, which necessarily
implies his consent to the use and registration of his name
as a part of this mark. We find that Dr. Mauch has agreed
to the exploitation of his name in this manner by his wife,
and thus by applicant, which is wholly owned by his wife.
The Examining Attorney has raised the issue that the
agreement contains no provisions with respect to future use
by Dr. Mauch of his name. Thus, the Examining Attorney
finds the agreement to distinctly differ from the buy-out
agreement involved in the D. B. Kaplan case wherein the
provisions were found to constitute written consent by
Donald Kaplan to the registration of the mark D.B. KAPLAN
DELICATESSEN by the applicant corporation. There, Donald
Kaplan had not only given up all rights in the mark which
included his name, but also had agreed that he could not
use the mark in any subsequent business.
We do not find the failure of Dr. Mauch to explicitly
relinquish any future rights to the use of his name in this
or any other mark in any subsequent business a prerequisite
to consent to the present registration by applicant of the
Ser No. 75/615,858
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mark BY DR. MAUCH in the United States. Dr. Mauch
conveyed a United States application for the mark BY DR.
MAUCH to his wife and thus gave up all rights to use and
registration of the mark which includes his name in the
United States. Whether or not Dr. Mauch may potentially
use his name in this mark or other similar marks in other
parts of the world is irrelevant. His consent to use and
registration by his wife, or applicant as her corporation,
in the United States is implicit in the agreement as it
stands.
Accordingly, we find that Dr. Mauch has given his
written consent to the use and registration of the mark BY
DR. MAUCH as required by Section 2(c).
Decision: The refusal to register is reversed.
Ser No. 75/615,858
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