Despite Years of Virtually No Use of a Trademark, Opposer Has Standing to Oppose Registration Says TTAB

If a mark owner mostly stops using a mark for over a decade, does that mark owner have standing to oppose an applicant from obtaining a registration for that mark? According to the Trademark Trial and Appeal Board, the answer is yes. In AT&T Mobility LLC v. Mark Thomann & Dormitus Brands LLC, the TTAB issued a precedential decision holding that AT&T Mobility LLC had standing to oppose Dormitus Brands LLC’s registration of CINGULAR and CINGULAR WIRELESS in connection with mobile phones and related goods, even though AT&T stopped most uses of those marks in 2007.

The CINGULAR mark had its heyday in the early 2000s, after which Cingular Wireless LLC acquired AT&T Wireless Services and mostly phased out CINGULAR, instead opting for AT&T and changing the company’s legal name to AT&T Mobility LLC. Years later, in 2014, Dormitus Brands LLC applied for trademark registrations for CINGULAR and CINGULAR WIRELESS in connection with mobile phones and related goods. AT&T opposed, alleging that Dormitus’ registrations constituted false suggestion of a connection.  Dormitus argued that AT&T lacked standing to oppose, alleging that AT&T stopped using CINGULAR after “making the switch” to AT&T; that AT&T’s CINGULAR registrations expired; and that “[c]ustomer-facing interactions are under the name AT&T Mobility.” AT&T argued that it had standing to oppose based on its “persona” as the original Cingular Wireless LLC, whose business is ongoing; the use of CINGULAR by its controlled subsidiary, New Cingular Wireless PCS, LLC; and its belief that due to residual goodwill in the marks, Dormitus’ use of CINGULAR would “cannibalize” AT&T’s business.

The TTAB analyzed these arguments under a two-prong approach: (1) whether New Cingular uses the term CINGULAR, and (2) if yes, whether that use gives AT&T’s standing to oppose. To establish standing, AT&T had to prove that it had a “real interest” in the proceeding and a “reasonable basis” for its belief of damage from Dormitus’ use and registration of CINGULAR. The TTAB reasoned that standing “does not rise or fall on the basis of a plaintiff’s proprietary rights in a term,” but instead is established by virtue of who the plaintiff is, including through any related entities. On that point, the TTAB stated that it saw no categorical legal bar precluding a corporate or institutional plaintiff, such as AT&T, from having standing based on alleged unauthorized use of a mark that falsely suggests a connection with a wholly owned subsidiary. All that is required is that a parent corporation of a wholly owned subsidiary “reasonably believe that damage to the subsidiary will naturally lead to financial injury to itself.”

As to the first prong, AT&T argued that New Cingular uses CINGULAR in “over 8,000 active [FCC] wireless licenses, 20 wireless spectrum leases, and 270 active antenna structure registrations that are used in AT&T’s wireless business.” Dormitus argued that those dense and formal legal documents are not “public-facing.” In finding that New Cingular uses CINGULAR, the TTAB refused to define “public” so narrowly because (1) the contracts, leases, and licenses in which CINGULAR appears are in the wireless communications field, where AT&T and Dormitus are would-be competitors; (2) the name appears prominently on those contracts or licenses; and (3) it would be viewed by professionals interested in the construction of cell towers and retail consumers purchasing cell phone wireless services. As to the second prong, the TTAB found that AT&T’s relationship to New Cingular—AT&T owns a majority interest in AT&T Mobility II LLC, which wholly owns New Cingular—established that AT&T could “reasonably believe that damage to the subsidiary will naturally lead to financial injury to itself.”

As a result, due to New Cingular’s use of CINGULAR and AT&T’s majority ownership share in AT&T Mobility II LLC (which in turn wholly owns New Cingular, which uses CINGULAR), the TTAB held that AT&T had a real and direct interest in opposing Dormitus’ registration of the mark CINGULAR, and thus had standing to do so.

The case is AT&T Mobility LLC v. Mark Thomann & Dormitus Brands LLC, 2020 TTAB LEXIS 5 (TTAB 2020), Opposition No. 91218108.