Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 SIGRUNE MARLENE CHAPMAN
v.
MILL VALLEY COTTON
Opposition No. 80,529
August 20, 1990
Before Sams, Rice and Simms
Members
By the Board:
J.D. Sams, J.E. Rice and R.L. Simms
Members, Trademark Trial and Appeal Board
An application to register the mark MILL VALLEY COTTON for clothing made in whole or in part of cotton, namely pants, tops, dresses, skirts and jumpsuits [FN1] was filed in the name of Mill Valley Cotton, an entity described as a joint venture organized under the laws of California, composed of Jeffrey Vinokour and Sigrune Chapman.
Registration was opposed by Sigrune M. Chapman. Opposer alleged that opposer was using the trade name MILL VALLEY COTTON for the manufacture and sale of clothing prior to the date of first use claimed by applicant and that applicant's mark so resembles opposer's mark, as to be likely, when used in connection with applicant's goods, to cause confusion, to cause mistake or to deceive. Opposer further claims that after opposer adopted and used the trade name MILL VALLEY COTTON, opposer and Jeffrey Vinokour entered into an oral agreement for the manufacture and sale of garments. Opposer alleges that, under the agreement, the mark MILL VALLEY COTTON was to be placed on the garments, and the trademark MILL VALLEY COTTON belonged to opposer. Opposer maintains that without opposer's consent Jeffrey Vinokour filed the application involved herein for the registration of MILL VALLEY COTTON in the name of a joint venture composed of opposer and Jeffrey Vinokour. Opposer alleges that the mark sought to be registered was not owned by the alleged joint venture and that Jeffrey Vinokour was not authorized to execute and file the opposed application. Finally, opposer alleges that the oral agreement between opposer and Jeffrey Vinokour was terminated by Jeffrey Vinokour some time in November of 1988; that Jeffrey Vinokour has expressly abandoned whatever rights he may have claimed in MILL VALLEY COTTON; and that opposer is the sole owner of MILL VALLEY COTTON.
Proceedings were suspended, on September 22, 1989, pending the final determination of a civil action between the parties in the Superior Court of the State of California.
Applicant filed, on July 26, 1990, a copy of an assignment of the mark MILL VALLEY COTTON and of application Serial No. 756,635 from Jeffrey Vinokour to opposer. That assignment, which makes no reference to a joint venture, reads as follows:
I, Jeffrey Vinokour, for valuable consideration received, hereby assign to Sigrune Chapman, solely and exclusively, all right, title and interest in and to the trademark MILL VALLEY COTTON, and related goodwill, that I may have. This assignment specifically includes all right, title, interest in and to the federal trademark application I have filed for such mark (Serial No. 756,635). (emphasis added)
Applicant filed, along with the copy of the assignment, a declaration authenticating the assignment, and a request by opposer and Jeffrey Vinokour to approve the application for registration in the name of opposer and to dismiss the opposition contingent upon the recordation of the assignment.
*2 The Board construes the assignment made by Jeffrey Vinokour and the request filed by the parties as an admission by Jeffrey Vinokour that opposer is the owner of the mark and the person entitled to register it. In view thereof, the Board orders that application Serial No. 756,635 be amended to show Sigrune M. Chapman as applicant (and owner of the trademark MILL VALLEY COTTON) and that a registration of the mark be issued in the name of Sigrune M. Chapman. Section 18 of the Trademark Act of 1946, 15 U.S.C. 1068. [FN2]
Decision: The opposition is dismissed as moot, and the application will proceed to issue in the name of Sigrune M. Chapman, in accordance with this opinion.
J. D. Sams
J. E. Rice
R. L. Simms
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 756,635, filed October 11, 1988, claiming dates of first use on or about October 5, 1988. No claim was made to the exclusive right to use the word "cotton" apart from the mark as shown.
FN2. Section 18 of the Trademark Act, as amended by the Trademark Law Revision Act of 1988, provides, in pertinent part, as follows:
In such [inter parties] proceedings the Commissioner may refuse to register the opposed mark, may cancel the registration, in whole or in part, may modify the application or registration by limiting the goods or services specified therein, may otherwise restrict or rectify with respect to the register the registration of a registered mark, may refuse to register the registration of a registered mark, may refuse to register any or all of several interfering marks, or may register the mark or marks for the person or persons entitled thereto, as the rights of the parties hereunder may be established in proceedings...."
The language setting forth the Commissioner's authority, exercised by the Trademark Trial and Appeal Board, to "rectify with respect to the register" was added to Section 18 to allow the Board "to determine trademark ownership rights where they are at variance with the register ..." and "to obviate the need to initiate a formal court proceeding in a matter that could be readily resolved by the Board." S.Rep. No. 515, 100th Cong., 2d Sess. 35. The impetus for this new provision of Section 18 was the United States Trademark Association's Trademark Review Commission Report and Recommendations, which recommended the language eventually incorporated in amended Section 18 and which explained the need for the amendment as follows:
We also believe the Board should have statutory authority to determine trademark ownership rights where they are at variance with the register. For example, in an inter parties case the Board should be able to find that a cancellation petitioner is the true owner of the registration, such as by imposition of a constructive trust, and to correct the register accordingly. At present it is necessary for the petitioner to file a court action to obtain this relief. We therefore propose adding "or rectify with respect to the register" to Section 18. 77 Trademark Reporter 452 (1987).
While the amendment speaks of rectifying the "register" to change the ownership of "registrations," we believe the Section is broad enough to authorize the Board to take similar action with respect to an application to register (as in this case), particularly in light of the language of Section 18 authorizing the Board to "register the mark ... for the person or persons entitled thereto, as the rights of the parties ... may be established in the proceedings...."