Miсky A. GUTIER, Appellant, v. HUGO BOSS TRADE MARK MANAGEMENT GMBH & CO. KG, Appellee.
No. 2013-1481.
United States Court of Appeals, Federal Circuit.
Jan. 8, 2014.
Rehearing Denied Feb. 25, 2014.
947
Andrew L. Deutsch, DLA Piper, LLP, of New York, New York, for appellee. With him on the brief was Airina L. Rodrigues.
Before LOURIE, DYK, and WALLACH, Circuit Judges.
DYK, Circuit Judge.
Micky A. Gutier appeals frоm the decision of the Trademark Trial and Appeal Board (“the Board“) cancelling two marks registered to him. The Board‘s decision was based on the judgment of the United States Court for the District of Arizona, ordering cancellation of the marks under
BACKGROUND
Before the challenged cancellations, Micky A. Gutier (“Gutier“) owned federal registrations for two marks: XY COSMETICS, Registration No. 2,909,091, registered on December 7, 2004, and XY SKIN CARE, Registration No. 2,921,574, registered on January 25, 2005. In Au
On June 11, 2010, Hugo Boss Trade Mark Management GmbH & Co. KG (“Hugo Boss“) filed petitions before the Board, seeking сancellation of Gutier‘s registrations. The Board consolidated the proceedings, and suspended them pending final disposition оf the infringement lawsuit. On February 25, 2011, the district court determined that the plaintiffs had no “valid, protectable rights” in the marks because they “did not engage in bona fide commercial use.” JA85. The court also found that the defendants, who had used the marks continuously in commerce, had рriority. The court granted summary judgment for defendants, declaring Gutier‘s trademarks invalid and not infringed, and ordered cancellation of the federal registrations for XY SKIN CARE and XY COSMETICS under
After the district court judgment on February 25, 2011, the plaintiffs and defendants participated in a mediation cоnference and entered into a Mediation Conference Memorandum (the “Memorandum“). Under the Memorandum, the plaintiffs and defendants agreed to “mutually release all claims, known or unknown” against each other and “stipulate to ... a Final Judgment in the Litigation in favor of Hugo Boss consistent with the Order dated February 25, 2011 granting summary judgment in favor of Hugo Boss.” JA94. Apparently no other final judgment was entered, and the parties treated the February 25 judgment as the final judgment of the district court. The plaintiffs also “waive[d] any right of appeal from the Final Judgmеnt and any right to seek relief from the Final Judgment that might exist in the absence of th[e] Memorandum.” JA96. The Memorandum also provided that “[s]ubject tо the terms of the Final Judgment, Hugo Boss agrees that Plaintiffs may use their marks (XY COSMETICS and XY SKINCARE).” JA95.
Thereafter, the Board received a certified copy of the district court‘s judgment and the Memorandum. Based on the district court‘s judgment and pursuant to
DISCUSSION
Section 37 of the Lanham Act provides that
[i]n any action involving a registered mark the court may determine the right to registration, order the cancеllation of registrations, in whole or in part ... and otherwise rectify the register with respect to the registrations of any party to the action. Decrees and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Patent and Trademark Office, and shall be controlled thereby.
Gutier argues that the Board erred in cancelling the marks. First, he argues that the Board еrred in cancelling the registrations because he had filed for each mark a § 8 affidavit of use and a § 15 affidavit of incontestability (аttesting to continuous use in commerce for five consecutive years from the date of registration, see Lanham Act §§ 8, 15,
The filing and receipt of these declarations did not prevent the district court from ordering cancellation. Lanham Act § 15 specifically cоnditions a mark‘s incontestability on the fact that “there is no proceeding involving said rights pending in the United States Patent and Trademark Office or in a court and not finally disposed of.”
Next, Gutier argues that the cancellations contravene thе Memorandum‘s terms. The Memorandum expressly states that “Hugo Boss agrees that Plaintiffs may use their marks (XY COSMETICS and XY SKINCARE),” JA 95, but this did not give Gutier the right to retain registrations that the district court had already found invalid and ordered cancelled. Gutier‘s argument mistakenly conflates the right to use a trademark with the right to register a trademark. See, e.g., In re Fox, 702 F.3d 633, 639 (Fed.Cir.2012) (applicant is not precluded from making commercial use of unregistrable mark); 3 McCarthy, supra, § 19:3 (” ‘A refusal by the PTO to register a mark does not preclude the owner of the mark from his right to use it.’ “) (quoting Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812, 819 (1st Cir.1987)). The Memorandum gave Gutier the right to continue using the marks, but did nothing to undo the district court‘s judgment of cancellation. In fact, it confirmed that the district court‘s grant of summary judgment would bе final, and that the parties would not appeal or seek relief from that judgment. The Memorandum cannot provide a basis for overturning the court-ordered cancellations issued by the Board in accordance with
The other factual issues that Gutier raises on appeal were presented to the Board, and are attempts to relitigate the district court‘s finding of trademark invalidity. The Board did not address these issues,
AFFIRMED
Costs
Costs to Appellee.