TTAB considers assignments of intent-to-use applications

In Central Garden & Pet Company v Doskocil Manufacturing Company Inc (August 16 2013), the Trademark Trial and Appeal Board (TTAB) has explored assignments of intent-to-use applications in the context of a consolidated opposition and cancellation action. In cancelling the key registration asserted by the opponent, the TTAB held that, prior to the filing of a statement of use, a trademark applicant may not transfer an intent-to-use application to another, unless the assignee also acquires at least the part of the trademark owner-applicant’s business to which the mark pertains.

In a complicated proceeding from a priority perspective, Central Garden & Pet Company opposed – on the basis of its existing ZILLA trademark registration (the ’521 ZILLA registration) for various aquarium-related goods - the registration of two trademark applications owned by Doskocil Manufacturing Company Inc: one for the mark DOGZILLA (and design) and the other for the mark PETZILLA (for dog and pet toys, respectively). Doskocil also owned an existing DOGZILLA block letter registration (the ’965 DOGZILLA registration), but the application resulting in that registration was filed after the application giving rise to Central Garden’s asserted ’521 ZILLA registration (and was not opposed at the time by Central Garden). Complicating matters even more, Central Garden owned a registration for ZILLA for “pet food; pet toys” (the ’833 ZILLA registration), which was filed after the first use date of the ’965 DOGZILLA registration. When all of the dates were sorted out, Central Garden’s ’521 ZILLA registration gave it priority over Doskocil in the consolidated proceeding. 

Central Garden’s asserted ’521 ZILLA registration was based on a December 2005 intent-to-use application filed in the name of All-Glass Aquarium. Subsequent to the filing of the application, but prior to the filing of the statement of use, All-Glass assigned the application to Central Garden. At the time, Central Garden was a separate legal entity, although both All-Glass and Central Garden were ultimately under common ownership. In the assignment, Central Garden obtained the application together with any associated goodwill. Central Garden did not, however, obtain any of the business of All-Glass, and, indeed, All-Glass continued in the same business, including the production and sale of products under the ZILLA trademark.

The question relating to the assignment by All-Glass grew out of Doskocil’s efforts to undermine Central Garden’s priority (based on the ’521 ZILLA registration). As noted, the asserted ’521 ZILLA registration - the registration growing out of the application assigned by All-Glass - was based on an application filed prior to the filing of the application giving rise to Doskocil’s ’965 DOGZILLA registration. Central Garden ultimately filed a statement of use resulting in the ’521 ZILLA registration but, in the absence of the Central Garden ’521 ZILLA registration, Doskocil’s constructive use date (based on its intent-to-use filing of the application giving rise to the ’965 DOGZILLA registration) would give it priority. Doskocil therefore counterclaimed for cancellation of the ’521 ZILLA registration on the basis of the assignment from All-Glass to Central Garden, arguing that the assignment was inconsistent with the Trademark Act, §10(a)(1), 15 USC §1060(a)(1), which imposes limits on the assignment of intent-to-use applications.

In reaching its decision to cancel the ‘521 ZILLA registration because of the improper assignment, the TTAB found that the assignment violated the literal terms of Trademark Act §10(a)(1) because the assignment from All-Glass to Central Garden did not include the business to which the mark pertained. Central Garden was not a successor to All-Glass or any part of it, and All-Glass continued on with the same business after the assignment. It was not sufficient in the context of an intent-to-use application for which no statement of use had yet been filed for Central Garden to have merely succeeded to the goodwill associated with the mark. This was true even though use of the ZILLA mark by All-Glass had commenced at the time of the assignment. The statute requires that the statement of use must be filed prior to the assignment, if the assignment does not include the portion of the business to which the mark pertains.

Central Garden nonetheless argued that, although the assignment may not have technically complied with the statute, it was consistent with the purpose behind the law because “at the time of the assignment Central Garden... and All-Glass were related companies, and the assignment did not cause any confusion or discontinuity in the use of the ZILLA mark”. The TTAB was not persuaded, explaining that, in adopting the language of the Trademark Act §10(a)(1), Congress set specific restrictions on the transfer of intent-to-use applications. The TTAB’s responsibility is to apply the law; the TTAB “has no authority to tell Congress how to accomplish its goals and [it] cannot ignore the express language of the statute merely because it is arguably broader than necessary...”. In this case, the TTAB found that “the plain and clear meaning of the statute” provided no latitude for it to consider Central Garden’s theory that, despite the unquestionable non-compliance, the end result of the assignment was transparent to consumers familiar with the ZILLA mark and products. 

The TTAB’s decision also touched on the interesting question of “analogous use”. Analogous use relates to use made prior to the actual placement of a trademark on the goods or services covered by an application. In certain circumstances, analogous use can give rise to a priority date that pre-dates proper trademark use. In Central Garden, opponent Central Garden argued that certain pre-launch activities (a name validation study and a 'teaser' ad) entitled it to a priority date even earlier than either its application filing date or the date of first use submitted in connection with its application. The TTAB explained that, “even before proper trademark use commences, advertising or similar pre-sale activities may establish priority if they create the necessary association in the mind of the consumer”(emphasis added). 

The TTAB pointed out that “the touchstone of analogous use is a factual determination of whether the use of the mark has created in the minds of the relevant public an association between the goods or services and their source” - that is, whether the mark has actually functioned as a trademark. Refusing to apply analogous use in the Central Garden case, the TTAB ruled that neither the proffered name validation study nor the 'teaser' advertising gave rise to the necessary link between the goods and their source in the minds of the relevant public. 

Interestingly, because of the positions taken by the parties in the proceeding (in particular Doskocil), upon ordering the cancellation of Central Garden’s ’521 ZILLA registration, the TTAB found no need to reach a decision on the issue that is typically the key issue in opposition proceeding, namely likelihood of confusion. As the junior user in the opposition, applicant Doskocil took the position that its opposed applications were not likely to give rise to confusion in light of the ’521 ZILLA registration. Once the ’521 ZILLA registration was cancelled, the question of confusion with respect to the pending Doskocil applications was moot, and the opposition to those applications was dismissed. 

Remaining in the proceeding, however, was Doskocil’s counterclaim to cancel the ’833 ZILLA registration, which registration came subsequent in time to Doskocil’s ’965 DOGZILLA registration. Although Doskocil asserted the counterclaim for cancellation (essentially arguing that Central Garden’s ’833 ZILLA registration was likely to cause confusion with the ’965 DOGZILLA registration), this was in contrast to Doskocil’s position throughout the opposition portion of the proceeding where it had consistently taken the position that confusion was not likely between Central Garden’s asserted ’521 ZILLA registration and the opposed Doskocil applications. 

The TTAB was unwilling to permit Doskocil to walk both sides of the line. It found that, in light of Doskocil’s lengthy arguments as to the absence of likely confusion vis-à-vis its DOGZILLA and PETZILLA marks (while the ’521 ZILLA registration was in effect), it was improper to for the TTAB even to evaluate likelihood of confusion as between the ’965 DOGZILLA registration and Central Garden’s ’833 ZILLA registration, notwithstanding the fact that now, Doskocil had priority. In a case of “be careful what you wish for”, the TTAB held Doskocil to its position with respect to confusion: “[i]f the senior party does not believe there to be a likelihood of confusion, we need not – and should not – opine on this purely hypothetical question”. Accordingly, the TTAB dismissed Doskocil’s cancellation counterclaim as to the ’833 ZILLA registration and ruled that it was “leav[ing] the parties as we found them, without reaching the merits of either party’s [likelihood of confusion] claim”.

Timothy J Kelly, Fitzpatrick Cella Harper & Scinto, New York