January 2009 Issue
TTAB Cases
Ballet Tech Found., Inc. v. Joyce Theater Found., Inc.,
Opp’n No. 91180789, Can. No. 92042019 (TTAB Dec. 11, 2008)
ABSTRACT
Petitioner, the owner of the Joyce Theater, sought to cancel and oppose various JOYCE-formative registrations and an application for entertainment and charitable services owned by Respondent, the tenant and manager of the Joyce Theater. The TTAB found that because Petitioner selected the JOYCE marks, intended to control the use of those marks though Respondent, and controlled the nature and quality of the services rendered under the JOYCE marks, Petitioner was the owner of the JOYCE marks and Respondent was using the JOYCE marks pursuant to an implied license. Accordingly, the TTAB sustained Petitioner’s opposition and granted its petition to cancel.
CASE SUMMARY
FACTS
Ballet Tech Foundation, Inc. (“Petitioner”) is a charitable foundation responsible for funding the Feld Ballet Company and operating a tuition-free dance school for public school children. It is also the owner of the premises known as the Joyce Theater. The Joyce Theater Foundation, Inc. (“Respondent”) is a charitable foundation that, among other things, manages the Joyce Theater. Respondent registered the marks JOYCE, JOYCE THEATER, JOYCE SOHO, and JOYCE (stylized) for “dance performance theaters and entertainment in the nature of performance arts theater productions” in Class 41. Respondent also registered the mark JOYCE THEATER FOUNDATION and filed a use-based application for the mark JOYCE for “charitable fund raising services” in Class 36. Collectively, the marks shown in these registrations and application are referred to as the JOYCE marks.
Petitioner sought to cancel all of the JOYCE registrations and opposed the JOYCE application on the ground that Petitioner, not Respondent, was the owner of the JOYCE marks, and that Respondent used the marks pursuant to an implied license. Respondent denied the salient allegations in the petition for cancellation and notice of opposition.
In 1978, Petitioner bought an empty motion picture theater known as the Elgin Theater for use by the Feld Ballet Company and other midsized dance companies. Petitioner intended to operate the theater under the Elgin Theater name unless a donor agreed to contribute a significant sum to finance the renovation of the theater. After LuEsther Mertz, a patron of the arts, agreed to fund the acquisition of the theater and to contribute a significant sum to finance its renovation, the theater was renamed the “Joyce Theater” in honor of her late daughter. Ms. Mertz was promised by Eliot Feld and Cora Cahan, trustees of Petitioner and board members and officers of Respondent, that the theater “would be known forevermore as the Joyce.” The Feld Ballet Company performed at the Joyce Theater every season since 1982 except for the 1997-1998 and 2003-2004 seasons.
The trustees of Petitioner, including Mr. Feld and Ms. Cahan, created Respondent because they believed that Petitioner should form a separate, tax-exempt entity to raise funds for the renovation and operation of the Elgin Theater (now the Joyce Theater). During the initial operation of Respondent, the staffs of Petitioner and Respondent were the same.
Petitioner decided to lease the premises to Respondent to ensure that the theater was operated in accordance with Petitioner’s intentions. Under the terms of the lease, Respondent was required to maintain the premises consistent with “first class” buildings of similar construction, Petitioner had the right to enter the theater and inspect the premises, Respondent was precluded from changing or altering the premises without Petitioner’s consent under certain circumstances, Petitioner could terminate the lease if Respondent failed to comply with its provisions, and upon termination of the lease, Respondent was required to surrender possession to Petitioner.
Ms. Cahan was responsible for planning the renovation of the theater, including fundraising and acting as Respondent’s first CEO and Vice President of its board of directors. In addition, Petitioner decided that a board of trustees would manage Respondent’s affairs, with Mr. Feld and Ms. Cahan elected to this board with the power to remove directors and officers of Respondent. Petitioner controlled Respondent by virtue of the fact that Mr. Feld and Ms. Cahan, who were both directors of Petitioner, were also permanent members of Respondent’s board of trustees with the power to remove other members of the board that voted contrary to their wishes. This system of interlocking directorships terminated in 1993 when Mr. Feld resigned from Respondent’s board.
ANALYSIS
In determining the ownership of the JOYCE marks, the TTAB explained that the ownership of a service mark may be acquired through controlled use by one’s related companies (or licensees) even in the absence of any use by the purported trademark owner. Based on the record, the TTAB found that Petitioner ultimately controlled the nature and quality of the services rendered in connection with the JOYCE marks. First, the TTAB found that Petitioner selected the JOYCE name and intended to control its use through an authorized licensee (i.e., Respondent). The TTAB agreed with Petitioner’s witness, Mr. Feld, that it would be “ludicrous” to find that Petitioner did not own the JOYCE marks after Petitioner purchased the Elgin Theater, did all the work raising the funds and renovating the theater, and took all of the risk involved in the undertaking. Further, the TTAB found that the decision that the theater would be called the Joyce Theater also supported Petitioner’s ownership of the marks because no matter who managed the theater for Petitioner, the theater would always be called the Joyce Theater.
Second, the TTAB found that Petitioner informally monitored the quality of the services rendered by Respondent under the JOYCE marks, and such control was sufficient to support a licensing relationship. Specifically, the TTAB found that the course of conduct between Petitioner and Respondent constituted an implied license because: (1) when Petitioner purchased the Elgin Theater and then formed Respondent, Petitioner intended to own the name of the theater and license it to Respondent; (2) Petitioner designed Respondent so that Petitioner could maintain control over it, including through the use of interlocking directorships; (3) the lease provided that Respondent must render “first class” dance theater services, could not make alterations or changes to the theater without Petitioner’s consent, and upon termination of the lease for any reason, Respondent had to surrender the premises; (4) Petitioner had a right to inspect the premises under the lease; and (5) Petitioner monitored the nature and quality of the services through its use of the theater.
Finally, the TTAB rejected Respondent’s argument that Petitioner’s failure to object to the JOYCE SOHO, a second location acquired and operated by Respondent for the past 12 years without permission or any input from Petitioner, demonstrates that Petitioner had not exercised any control over the services rendered by Respondent, and thus an implied license did not exist. The TTAB found that the lease between the parties and its performances at the theater constituted sufficient control to avoid abandonment of its JOYCE marks. Further, the TTAB found that Petitioner had no reason to object to Respondent’s use of the JOYCE SOHO mark because it was consistent with the mission and goals of the original Joyce Theater. Thus, its failure to object did not constitute abandonment of Petitioner’s rights in the JOYCE marks.
Based on the evidence describing the relationship of the parties, the TTAB concluded that Petitioner was the owner of the JOYCE marks and that Respondent used the JOYCE marks pursuant to an implied license.
CONCLUSION
In cases where two parties claiming ownership in the same mark have a relationship with one another that includes elements typical of a licensing arrangement (e.g., quality control, right to inspect, restrictions on use of the mark), the TTAB may find the existence of an implied license.
