If a mark is “merely descriptive,” it may be registered if the applicant can show that it “has become distinctive of the applicant's goods in commerce.” 15 U.S.C. § 1052(f). Accordingly, the Board will allow the registration of “America’s Favorite” as a mark where there is proof both that it is true and that it has become so associated in the minds of consumers with the registrant as to have secondary meaning as an indicator of source.

The passage of three years between Victoria and Richards’ removal from their former company and the filing of Plaintiffs’ application does not magically erase the connection between Victoria and Richard and their last name “MacKenzie-Childs,” which was always their name by which they were known during this period. Plaintiffs’ application for the mark MACKENZIE-CHILDS must be denied as Plaintiff does not have the requisite written consent from either Victoria or Richard to 28 Case 6:06-cv-06107-MAT-MWP Document 159 Filed 04/02/2009 Page 32 of 34 29 overcome 15 U.S.C 1052(c). Accordingly, Plaintiffs’ motion for summary judgment dismissing Defendants’ Thirteenth Counterclaim should be denied.

Therefore, MMU registered the plain text mark contrary to § 2d of the Lanham Act and the mark may be cancelled at any time. Hot Stuff Foods, LLC v. Mean Gene's Enterprises, Inc., 468 F.Supp.2d 1078, 1091 (S.D. 2006) (“Cancellation of a trademark registration is allowed at ‘any time’ if the registration was obtained contrary to the provisions of 15 U.S.C. § 1052(c)”). A district court has concurrent power with the Patent and Trademark Office to secure cancellation of a trademark registration so that the entire controversy may be resolved in a single forum.

03(b)(5th ed. 2007) (citing In re McKee Baking Co., 218 U.S.P.Q. 287 (T.T.A.B. 1983) (applicant’s claim of ownership of a prior registration that includes a consent to register in the record held sufficient for purposes of complying with the consent requirement of §2(c) of the Lanham Act [15 U.S.C. §1052(c)])). b. Miyano USA’s “Miyano” Trade Name is Protectible Miyano USA also has superior rights in its “Miyano” trade name, separate from the related registration.

[SIGNATURE OF COUNSEL ON FOLLOWING PAGE] 26 Section 1052(a) of the Lanham Act is an absolute bar to registration for marks first used on or in connection with spirits after January 1, 1996. 15 U.S.C. § 1052(a). 27 Bacardi’s reliance on JASA’s use of “Havana Club” prior to 1959 to show that Bacardi has built up secondary meaning in the “Havana Club” mark, Opp.

However, descriptive marks might acquire the distinctiveness which will allow them to be protected if it “has become distinctive of the applicant's goods in commerce.” 15 U.S.C. §§ 1052(e), (f). This distinctiveness is generally called “secondary meaning.”

Finally, because Mr. Trump’s TRUMP mark contains the TRUMP name, and because TYC’s use of “TRUMP” Case 1:15-mc-00400-P1 Document 16 Filed 01/05/16 Page 11 of 20 8 is nearly identical to Mr. Trump’s use of that mark, TYC’s registration of the TRUMP YOUR COMPETITION mark will falsely suggest TYC’s connection with Mr. Trump. In response to TYC’s actions, Mr. Trump opposes TYC’s registration of TRUMP YOUR COMPETITION and alleges, among other things, violations of Section 2(d) of the Lanham Act (15 U.S.C. §§ 1052(d)), Section 43(c) of the Lanham Act (15 U.S.C. § 1125(c)), and Section 2(a) of the Lanham Act (15 U.S.C. § 1052(a)). C. Mr. Garten’s Testimony in the TTAB Proceeding On November 12, 2015, Mr. Garten testified under oath in the TTAB Proceeding during Mr. Trump’s testimony period as to the maintenance, use and policing of the TRUMP Trademarks.

Finally, because Mr. Trump’s TRUMP mark contains the TRUMP name, and because TYC’s use of “TRUMP” Case 1:15-mc-00400-P1 Document 17 Filed 01/05/16 Page 11 of 20 8 is nearly identical to Mr. Trump’s use of that mark, TYC’s registration of the TRUMP YOUR COMPETITION mark will falsely suggest TYC’s connection with Mr. Trump. In response to TYC’s actions, Mr. Trump opposes TYC’s registration of TRUMP YOUR COMPETITION and alleges, among other things, violations of Section 2(d) of the Lanham Act (15 U.S.C. §§ 1052(d)), Section 43(c) of the Lanham Act (15 U.S.C. § 1125(c)), and Section 2(a) of the Lanham Act (15 U.S.C. § 1052(a)). C. Mr. Garten’s Testimony in the TTAB Proceeding On November 12, 2015, Mr. Garten testified under oath in the TTAB Proceeding during Mr. Trump’s testimony period as to the maintenance, use and policing of the TRUMP Trademarks.

Finally, because Mr. Trump’s TRUMP mark contains the TRUMP name, and because TYC’s use of “TRUMP” Case 1:15-mc-00400-P1 Document 12 Filed 01/04/16 Page 11 of 20 8 is nearly identical to Mr. Trump’s use of that mark, TYC’s registration of the TRUMP YOUR COMPETITION mark will falsely suggest TYC’s connection with Mr. Trump. In response to TYC’s actions, Mr. Trump opposes TYC’s registration of TRUMP YOUR COMPETITION and alleges, among other things, violations of Section 2(d) of the Lanham Act (15 U.S.C. §§ 1052(d)), Section 43(c) of the Lanham Act (15 U.S.C. § 1125(c)), and Section 2(a) of the Lanham Act (15 U.S.C. § 1052(a)). C. Mr. Garten’s Testimony in the TTAB Proceeding On November 12, 2015, Mr. Garten testified under oath in the TTAB Proceeding during Mr. Trump’s testimony period as to the maintenance, use and policing of the TRUMP Trademarks.

Finally, because Mr. Trump’s TRUMP mark contains the TRUMP name, and because TYC’s use of “TRUMP” Case 1:15-mc-00400-P1 Document 15 Filed 01/04/16 Page 11 of 20 8 is nearly identical to Mr. Trump’s use of that mark, TYC’s registration of the TRUMP YOUR COMPETITION mark will falsely suggest TYC’s connection with Mr. Trump. In response to TYC’s actions, Mr. Trump opposes TYC’s registration of TRUMP YOUR COMPETITION and alleges, among other things, violations of Section 2(d) of the Lanham Act (15 U.S.C. §§ 1052(d)), Section 43(c) of the Lanham Act (15 U.S.C. § 1125(c)), and Section 2(a) of the Lanham Act (15 U.S.C. § 1052(a)). C. Mr. Garten’s Testimony in the TTAB Proceeding On November 12, 2015, Mr. Garten testified under oath in the TTAB Proceeding during Mr. Trump’s testimony period as to the maintenance, use and policing of the TRUMP Trademarks.