Trademark Licensee Cannot Claim Priority Based on Brand-Owner’s Pre-License Common-Law Rights

On September 8, 2017, the TTAB held that, absent ownership rights, a trademark licensee cannot establish priority based on a licensor’s use of the mark prior to the date of the license.

Pro Boxing Supplies, Inc. owns a federal trademark registration for the CASANOVA mark, and sought to register two “Casanova”-related design marks covering various items of boxing equipment, including boxing gloves:

Non-party Deportes Casanova, a producer of boxing-related equipment in Mexico City, owns a Mexican registration for the “Deportes Casanova” design mark:

Deportes (which means “sports” in English) has manufactured boxing gloves bearing that mark for more than 60 years, and sold boxing-related equipment to boxers, gyms, and others in the United States since at least 1972. Julie A. Moreno became Deportes’ exclusive licensee in the United States on July 23, 2013.  She sought to cancel Pro Boxing’s registration for the CASANOVA mark, and opposed registration for its design marks, alleging a likelihood of confusion. Ms. Moreno claimed priority for herself and Deportes based on Deportes’ longstanding common-law use of its mark in the United States, and by her use of the mark since becoming Deportes’ licensee.   

The parties did not dispute that contemporaneous use of the respective trademarks was likely to cause confusion. The only question before the Board was one of priority. Pro Boxing asserted a constructive first use of the mark back to October 22, 2012, the filing date for its CASANOVA registration. Ms. Moreno could not argue that she personally used the CASANOVA mark prior to that date.  Instead, she framed the issue as: “[w]hether Plaintiff’s licensor, and therefore Plaintiff, holds rights of priority over Defendant, not abandoned, to the word mark ‘Casanova’ and the word and design mark ‘Deportes Casanova’ as used in relation to boxing equipment.” 

The Board said no. Noting that use of a mark by a licensee inures to the benefit of the trademark owner, the Board found no authority for the proposition that the converse was true, namely, that use of a mark by the controlling trademark owner inures to the benefit of the licensee. The Board stated:  “Allowing a licensee to claim priority for itself in an inter partes proceeding based on the licensor’s use of the mark (whether through the license or otherwise), could result in a licensee being able to claim de facto ownership of the licensed mark.”  The Board continued: “Due to [the] express disavowal of any transfer to Moreno of ownership rights in CASANOVA, we cannot view the license as tantamount to an assignment of the mark, which might have allowed Moreno to assert whatever priority rights Deportes Casanova may have in the United States in the mark CASANOVA.” Accordingly, even though the marks were likely to cause confusion, the Board dismissed Ms. Moreno’s oppositions and denied her petition to cancel.

The case is Julie A. Moreno v. Pro Boxing Supplies, Inc., Opp. Nos. 91214580, 91214877, and Cancellation No. 92058878 (TTAB Sept. 8, 2017).