555 F. App'x 947
Fed. Cir.2014Background
- Gutier owned federal registrations for XY COSMETICS (Reg. No. 2,909,091) and XY SKIN CARE (Reg. No. 2,921,574).
- In 2008 Gutier and others sued Hugo Boss for infringement related to XY Hugo and XX Hugo marks.
- Hugo Boss sought cancellation of Gutier’s marks; the district court later granted summary judgment canceling both registrations under 15 U.S.C. § 1119.
- After judgment, the parties mediated and signed a Memorandum waiving appeals and permitting Gutier to continue using the marks per terms of the Final Judgment.
- The Board received the district court judgment and Memorandum and canceled the registrations as moot under § 1119; Gutier appealed the Board’s decision.
- The court affirms the Board’s cancellation, holding the district court judgment controls and § 1119 supports PTO entry of cancellation.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the Board correctly canceled registrations under §1119 despite Gutier's filings. | Gutier argues §1119 cancellations were improper due to §8/§15 filings and Memorandum rights. | Boss contends the district court judgment governs and §1119 authorizes cancellation. | Yes; cancellations proper under §1119 and controlled by district court judgment. |
| Effect of §8 and §15 incontestability filings on cancellation. | Gutier claims incontestability prevents cancellation. | Boss asserts incontestability not applicable due to pending proceedings already pending when filed. | Declarations did not prevent cancellation; §1065(2) not satisfied here. |
| Whether Memorandum authorized retaining registration despite district court’s judgment. | Gutier argues Memorandum allows continued use and preserves registrations. | Boss argues Memorandum does not override court-ordered cancellations. | Memorandum did not undo cancellations or grant registration rights; stay of judgment not provided. |
| Whether the district court’s findings of invalidity were reviewable on Board appeal. | Gutier seeks to relitigate district court findings before the Board. | Boss contends Board need only implement §1119 results without reweighing merits. | Board decisions based on district court judgment; no relitigation of merits. |
Key Cases Cited
- Massa v. Jiffy Prods. Co., 240 F.2d 702 (9th Cir. 1957) (district court can determine right to registration and its decree controls PTO)
- In re Wells Fargo & Co., 231 U.S.P.Q. (BNA) 95 (T.T.A.B. 1986) (competent-court determination binds PTO under §1119)
- In re Fox, 702 F.3d 633 (Fed. Cir. 2012) (use of unregistrable mark may occur; registration not required for use)