2-3 noting that “there is technically no statutory basis for nonownership claim” in the intent-to-use context and “hus, the only claim we entertain … is a bona fide intent” But when it gets to the core part of the reasoning on pp. In turn, intent to use applications are made pursuant to § 1051(b), not subsection (a).Įven after eliminating that confusion, I still found the initial TTAB opinion a bit convoluted and difficult to follow. As noted in the block quote from the TTAB opinion, this case involves an intent to use application, not a use-based one. More importantly, the references to “use-based” applications and § 1051(a) in the penultimate and final paragraphs, respectively, are wrong. For one, “PTAB” should be “TTAB” in the third paragraph. It seems like ownership only has to be substantiated if challenged, such as in this opposition case.Īlso, there are some typos and other errors in the OP that make this a little more confusing than it needs to be.
(I’d imagine that, aside from creating a vulnerability to opposition, knowingly misstating facts on a registration might open someone up to fraud/perjury charges too.) So, assuming a registration is valid, then the listed owner(s) of the registration are the owner(s) of the underlying mark too. But isn’t there a distinction between owning the underlying mark-independent of it being registered-and owning the registration? And part of seeking registration involves attesting to ownership. That seemed a little circular to me too at first blush. Here, although Puri as an owner of the mark, YBAT is also an owner with its own rights. The statute goes on to require a statement from the owner that “ no other person has the right to use such mark.” 15 U.S.C.
§ 1051(a), which requires the trademark owner be the one who files for registration.
This basic rule is derived from the statute 15 U.S.C. Conolty O’Connor NYC LLC, 111 USPQ2d 1302, 1310 (TTAB 2014) (“the involved application is void ab initio because applicant is not the sole owner of the mark”). Is void ab initio.” For this point, the TTAB cites to Kristin Marie Conolty d/b/a Fairway Fox Golf v. The basic legal rule here is that all owners of a trademark must at least consent to the filing of a use-based trademark application. On appeal, the Federal Circuit has affirmed, finding the Board’s legal conclusions “without error” and its factual findings supported by substantial evidence. Accordingly, we find that the involved application is void ab initio. did not have a bona fide intent to use the mark in commerce solely in her individual capacity at the time she filed her involved because, at such time, was aware that both and each had an undivided and equal interest in the applied-for mark for the identified goods. YBAT opposed, and the PTAB sided with YBAT - holding that: The dispute at issue here started when Puri, acting alone, filed a trademark registration application for the mark YOGI for bath and beauty products. The most valuable aspect today is probably YOGI TEA that is sold by a third party, the East West Tea Company, but with Puri and YBAT each having a 50% undivided ownership of intellectual property rights. Puri and YBAT have a fairly long history of litigation over ownership and control of Bhajan’s estate. In recent years, Bhajan’s history of sexual abuse has come to light as well. Bhajan died in 2004 leaving his widow (Puri) as well as an Administrative Trust (YBAT). I practice a form kundalini yoga that is somewhat in the tradition of Yogi Bhajan. the company finally decided in favor of the Exact ERP solution portfolio.Bibiji Inderjit Kaur Puri v.