Bello Fitness Ltdav.Body Up Fitness LLC

Trademark Trial and Appeal Board

Jan 5, 2012

No. 92049838re (T.T.A.B. Jan. 5, 2012)

Mailed: January 5, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Bello Fitness Ltda
v.
Body Up Fitness LLC
_______

Cancellation No. 92049838
_______

Request for Reconsideration

Jeffrey Furr for Bello Fitness Ltda

Michael A. Cornman of Ladas & Parry LLP for Body Up Fitness
LLC
_______

Before Quinn, Kuhlke and Shaw, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On November 23, 2011, respondent filed a request for
reconsideration of the decision issued on October 28, 2011,
in which the Board granted petitioner’s cancellation of
respondent’s mark under Section 2(d) of the Trademark Act.
The purpose of reconsideration is to point out errors
made by the Board in rendering its decision.
Reconsideration may not be used to introduce into the record
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92049838
2
additional evidence or to reargue points presented in the
requesting party’s brief on the case.
The Board’s decision found that the arbitration clause
in a distribution agreement between petitioner and a third
party prevented the Board from making findings of fact as to
the parties’ respective trademark rights based on the terms
of the agreement. The Board also found that petitioner
established prior common law trademark rights and a
likelihood of confusion between the marks.
Respondent requests reconsideration on the first point,
i.e., whether the Board should have considered the terms of
the distribution agreement in making its determination.
Specifically, respondent argues:
The Board made a fundamental and critical error
when it failed to determine the parties’
respective rights based on its conclusion of the
ambiguity of Paragraph 6 of the Distribution
Agreement and that it should be interpreted by
arbitration. Paragraph 6 is not ambiguous and is
subject to interpretation by the Board. ... The
Board erred in granting the Petition for
Cancellation of Reg. No. 3295316 on the basis of
priority of use because inter alia (1) the
unambiguous language as to the “exclusive and
irrevocable license” of the Distribution Agreement
signed by Petitioner was controlling on the
critical matter of ownership (the arbitration
clause, which the Board actually determined was
“unambiguous,” was not required to be triggered to
resolve ownership), and (2) the grant to
Registrant’s predecessor-in-interest of an
“exclusive and irrevocable license to register”
from Petitioner was legally an effective
assignment to Body Up LLC of ownership of
trademark rights for the purposes of registration.
... The language of the Distribution Agreement
contract is indisputably unambiguous, and
Cancellation No. 92049838
3
therefore the arbitration clause in paragraph 9.5
of the distribution agreement need not be
triggered to resolve the ownership issue.

Request pp. 2-4.
In short, it is respondent’s contention that the Board
may pick and choose “unambiguous” paragraphs in the
distribution agreement and apply them. We do not agree with
this position and maintain that the mandatory arbitration
paragraph prohibits the Board from making a determination
based on the agreement. If we were to take respondent’s
approach, we would have to determine whether the agreement
was terminated under the provisions of the agreement, and,
if not, what that means with regard to the ownership
interest in the mark. Further, we would have to interpret
what rights the “licensee” had to transfer any rights
obtained from the agreement, in the absence of a contractual
termination. For example, if there is a breach by either
party, the agreement is silent as to which party retains
ownership rights in the trademark. It is not possible to
look at only one paragraph in that agreement and make a
determination as to ownership. The parties actions and the
remaining paragraphs would require further inquiry.1

1 As noted in our decision, the language “license to register for
and use the trademark” in paragraph six is unusual. In the
United States, only the owner of a mark may register the mark,
yet the third party to the agreement is clearly designated as a
“licensee.” Respondent argues that an exclusive licensee can be
essentially an assignee; however, we cannot determine
petitioner’s state of mind and what it intended by that
Cancellation No. 92049838
4
After carefully considering respondent’s request, we
have determined that the findings and legal conclusion that
petitioner has priority and a likelihood of confusion exists
are clearly articulated and we do not find any error in
reaching those findings or legal conclusion. In view
thereof, respondent’s request for reconsideration of the
Board’s decision is denied, and the decision of October 28,
2011 stands.

paragraph, the effect of a breach on such rights, or the ability
to transfer such rights. Again, this frames the issue squarely
as a matter for arbitration.