Wednesday, December 14, 2016

Pro se party prevails, as the CAFC explicates 15 U.S.C. § 1060(a)(1)

The issue was one of trademark in the renewable energy sector:

In November 2008, Orlando filed an application at the
PTO, seeking to register the mark THE EMERALD CITY
for use in business development and consulting services in
the renewable energy industry. The application was an
intent-to-use application under 15 U.S.C. § 1051(b). On
November 24, 2009, the PTO issued a Notice of Allowance,
which commenced a six-month period for Orlando to
file a Statement of Use (“SOU”) as required for registration
of the mark.

The CAFC affirmed the TTAB:

Because the Board did
not err in determining that the 2009 agreement between
ECC and Perry Orlando (“Orlando”) regarding the mark
THE EMERALD CITY prior to its registration constituted
an assignment of the intent-to-use application for that
mark in violation of Section 10 of the Lanham Act, 15
U.S.C. § 1060(a)(1), we affirm.

Emerald Cities Collaborative [ECC] made arguments that ultimately were
rejected by the CAFC:

ECC argues that the Board erred in construing the
Agreement as an immediate assignment, and therefore
that it was not in violation of § 1060(a)(1). ECC contends
that the Agreement shows that ECC and Orlando intended
to assign the mark only upon registration, and that the
Board’s interpretation disregarded and contradicted the
intention of the parties. ECC also argues that the Board
erred in interpreting the provisions relating to (1) ECC’s
right to oversee the quality of products sold under the
mark, and (2) ECC’s exclusive right to enforce the mark
against third parties, as evidence of an immediate assignment.
According to ECC, those provisions only applied
after registration.

As one footnote to this case, the appellee Roese appeared pro se, and


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