Emerald Cities Collaborative, Inc. v. Roese
666 F. App'x 908
| Fed. Cir. | 2016Background
- In Nov. 2008 Perry Orlando filed an intent-to-use PTO application for THE EMERALD CITY; Notice of Allowance issued Nov. 24, 2009, starting the SOU period.
- On Dec. 30, 2009 Orlando and Emerald Cities Collaborative, Inc. (ECC) executed a "Trademark Assignment and License" agreement with an "effective date" of Dec. 30, 2009 providing assignment language, an irrevocable power of attorney to ECC’s cofounder to prosecute the application, payment terms, and quality-control and exclusive-enforcement provisions.
- The agreement stated Orlando ‘‘may continue to use’’ the mark pre-registration but required him not to challenge ECC’s use, to assist prosecution, and gave ECC exclusive rights to enforce and oppose confusing marks "whether before or after the Registration Date."
- Orlando filed the Statement of Use on Apr. 19, 2010; PTO registered THE EMERALD CITY on July 6, 2010; a formal assignment to ECC was recorded July 6, 2010 referencing the 2009 agreement.
- Sheri Roese filed to register EMERALD CITIES in Sept. 2009; after publication ECC opposed and Roese counterclaimed to cancel ECC’s registration, arguing the 2009 agreement violated 15 U.S.C. §1060(a)(1) (anti‑trafficking rule for intent‑to‑use applications).
- The TTAB found the 2009 agreement tantamount to an assignment of the intent‑to‑use application before filing the SOU, cancelled ECC’s registration, and dismissed ECC’s opposition; the Federal Circuit affirmed.
Issues
| Issue | Plaintiff's Argument (ECC) | Defendant's Argument (Roese) | Held |
|---|---|---|---|
| Whether the Dec. 30, 2009 Agreement constituted an impermissible assignment of an intent‑to‑use application in violation of 15 U.S.C. §1060(a)(1) | The agreement was only an agreement to assign upon registration; control and enforcement provisions apply only after registration; the POA created a normal agent relationship | The agreement, read as a whole, transferred effective control/ownership of the application to ECC immediately, so it violated §1060(a)(1) | Agreement unambiguously gave ECC immediate control/ownership of the application (tantamount to assignment); anti‑trafficking rule violated; registration voided |
| Whether extrinsic evidence (deposition) was required or improperly relied upon to interpret the Agreement | ECC argued the Board relied on ambiguous deposition testimony and misinterpreted contract language | Roese argued the Board correctly construed the agreement itself as unambiguous | Court held the contract was unambiguous on its face; extrinsic evidence unnecessary; Board’s reading affirmed |
Key Cases Cited
- First Annapolis Bancorp, Inc. v. United States, 644 F.3d 1367 (Fed. Cir.) (contract interpretation reviewed de novo)
- Salamone v. Gorman, 106 A.3d 354 (Del.) (Delaware adheres to the objective theory of contract interpretation)
- E.I. du Pont de Nemours & Co. v. Shell Oil Co., 498 A.2d 1108 (Del. Super.) (contract portion cannot control whole where inconsistent with overall scheme)
- GMG Capital Invs., LLC v. Athenian Venture Partners I, L.P., 36 A.3d 776 (Del.) (extrinsic evidence inadmissible when contract is unambiguous)
- In re Pacer Tech., 338 F.3d 1348 (Fed. Cir.) (standard of review for TTAB legal conclusions and factual findings)