Opposer Joyce K. Thomas tossed up an air ball in this opposition to register the mark WINDY CITY GROOVE & Design for "Entertainment in the nature of basketball games; Entertainment services in the nature of live professional minor-league basketball games." Thomas claimed that she, and not the applicant, is the owner of the mark because she designed it and registered the copyright. The Board disagreed. Joyce K. Thomas v. Chicago Basketball League Corporation, Opposition No. 91228767 (May 1, 2019) [not precedential] (Opinion by Judge Albert Zervas).

Under Section 1(a)(1) of the Trademark Act, 15 U.S.C. § 1051(a)(1), only "[t]he owner of a trademark used in commerce may request registration of its trademark ...." Accordingly, only the owner of the mark may file a valid application. If the entity who filed the application is not the owner, the application is void ab initio.

"To acquire ownership of a trademark it is not enough to have invented the mark first ...; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services." Sengoku Works Ltd. v. RMC Intern., Ltd., 96 F.3d 1217, 40 USPQ2d 1149, 1151 (9th Cir. 1996), as modified, 97 F.3d 1460 (9th Cir. 1996).

Opposer Thomas designed the subject mark for use by the Windy City Groove in the Midwest Professional Basketball Association ("MPBA"). Thomas and her husband are co-owners of the MPBA. Her evidence did not establish that Opposer ever used the mark for any services.

The Board first considered whether Thomas ever licensed use of the mark to the MPBA or to applicant. The record contained no signed agreements and no evidence of any fees paid to Thomas for use of a mark. The Board found "no basis for an implied license by Opposer to Applicant or to the MPBA." 

The Board also considered "who controlled the nature and quality of the services provided under the mark, if at all." There was no evidence regarding opposer's efforts in that regard.

In sum, Opposer argues that she is the true owner of the subject mark. In view of the foregoing, however, we find that the evidence Opposer adduced at trial in her case-in-chief fails to establish prima facie that Applicant is not the owner of the applied-for mark. Opposer has thus not met her burden of proof and Opposer's claim is dismissed.

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