Zarr Men L.A., Inc.v.Henry Duarte

Trademark Trial and Appeal Board

Apr 21, 1999

No. 91105510 (T.T.A.B. Apr. 21, 1999)

Paper No. 13
HRW
THIS DISPOSITION IS NOT CITABLE AS PRECEDENT
OF THE TTAB APRIL 21, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Zarr Men L.A. , Inc.
v.
Henry Duarte
_____
Opposition No. 105,510
to application Serial No. 75/132,107
filed on July 10, 1996
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I. Michael Bak-Boychuk for Zarr Men L.A., Inc.
Henry Duarte, pro se.
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Before Cissel, Hanak and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Henry Duarte has filed an application to register the
mark LORDS for clothing, namely, shirts, trousers, jackets,
sweaters, and shoes.1

1 Serial No. 75/132,107, filed July 10, 1996, alleging dates of
first use of February 1, 1995.
Opposition No. 105,510
2
Zarr Men L.A., Inc. has filed an opposition to
registration of the mark on the grounds of likelihood of
confusion under Section 2(d) and fraudulent representations
made in the application with respect to applicant’s
exclusive use of the mark. Opposer alleges use, since
December 6, 1994, of the mark LORDS in connection with the
sale of clothing and the likelihood of confusion with
applicant’s use of his mark. Opposer further alleges that,
prior to February 1, 1995, it engaged applicant to assist in
the fabrication of clothing for opposer bearing the mark
LORDS; that applicant performed in accordance with this
engagement for the benefit of opposer; and that the
assertions of use and exclusive use made by applicant in his
application are deceptive and fraudulent, rendering the
application invalid.
Applicant, in his answer, denied the allegations of
opposer, and further alleged that he “created and developed
the mark LORDS prior to February 1, 1995” and he “was
engaged by opposer to design and produce product with the
mark LORDS for joint venture.”
The record consists of the file of the involved
application; the trial testimony of Nabeel Abdeljaber,
president of opposer, and accompanying exhibits 1-10; and
opposer’s notice of reliance introducing opposer’s requests
for admissions and the declaration of counsel as to
Opposition No. 105,510
3
applicant’s failure to respond to the requests. Opposer
filed a brief on the case, but no oral hearing was
requested. Applicant has failed to take any action in the
case since the filing of his answer.
In his deposition for opposer, Nabeel Abderjaber
testified that opposer was founded in November 1994 as a
retail and wholesale clothing operation, with apparel for
the music business particularly in mind; that a fictitious
business name statement was filed by opposer in December
1994, showing opposer to be operating under the name
“Lords,”2 and that this name was displayed on a marquis on
its store; that in December 1994 opposer engaged applicant
to work as designer of the private label clothing to be
retailed under the mark LORDS; and that applicant signed a
six-month preliminary contract setting forth applicant’s
monthly payment of $2000 and containing the statements that
applicant would “treat label as own with effort commitment
and passion to launch Lords label” and that a formal
contract would be drawn up after six months with “shares and
percentages [to be] negotiated.” (Exhibit 2). Mr.
Abderjaber introduced copies of checks paid to applicant in
December 1994 and January 1995 (Exhibit 3). He further
testified that opposer was responsible for the creation and

2 Opposer has shown that, under California Business and
Professions Code, section 17920, this statement expires five
Opposition No. 105,510
4
production of the LORDS label (Exhibits 5 and 6); that
applicant was never authorized to operate under the name
LORDS independently of his services to opposer; but that
applicant later left opposer and started selling articles
bearing the LORDS mark on his own.
The requests for admissions, which under FRCP 36(a) are
deemed admitted in view of applicant’s failure to respond
thereto, include the following:
2. Admit that the mark LORDS was adopted by the Opposer
on or prior to December 6, 1994.
3. By reference to your Answer on file in these
proceedings, and particularly to the paragraph numbered
2 therein, admit that the joint venture referred to in
said paragraph 2 was a joint venture conducted at the
business premises of the Opposer.
8. By reference to your trademark application Serial
No. 75/132,107 admit that the words therein “...he/she
believes the applicant to be the owner of the
trademark/service mark to be registered...” are
substantially untrue.
Opposer characterizes this opposition as the result of
the departure of a “disgruntled” designer from an engagement
by opposer, with the application process being misused to
settle a joint venture dispute. Opposer points to the
reference by applicant in his answer to a “joint venture”
and argues that, on this pleading admission alone,
registration to applicant should be refused. Opposer
further maintains that the subject matter admitted by means

years after filing, unless there is an earlier change in
circumstances.
Opposition No. 105,510
5
of the requests for admission provides additional bases for
sustaining the opposition. Finally, opposer fully briefs
the issues of priority and likelihood of confusion, relying
upon its prior use of the trade name LORDS. Opposer notes
that, by visual comparison alone, it is obvious that the
labels which opposer had designed for its use while
applicant was working for opposer are the same as the labels
filed by applicant as specimens in his application.
Pursuant to Section 1(a) of the Trademark Act, it is
only the owner of a trademark used in commerce who may file
an application to register the mark. Otherwise the
application is void for failure to comply with the statutory
requirement that an applicant be the owner of the mark
sought to be registered. See Huang v. Tzu Chen Food Co.
Ltd., 849 F.2d. 1458, 7 USPQ2d 1335 (Fed. Cir. 1988). A
joint venture may qualify as a separate legal entity for
purposes of ownership of a trademark and filing of an
application for registration thereof. See In re Hercofina,
207 USPQ 777 (TTAB 1980); 2 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, § 16.41 (1998).
Here applicant has made two admissions against
ownership which negate the validity of his application to
register the mark LORDS for clothing. First, he has pled in
his answer that he was engaged by opposer to produce the
goods with which the mark LORDS was being used as part of a
Opposition No. 105,510
6
joint venture.3 Second, by failing to respond to Request
for Admission No. 8, he has admitted that that the statement
made in his application that he believed himself to be the
owner of the mark was “substantially untrue.” On the basis
of these admissions alone, applicant is not entitled to
registration of the mark LORDS as the sole owner thereof and
the application is void ab initio.4
Looking to the ground of likelihood of confusion, we
note that applicant has admitted opposer’s adoption of the
mark prior to December 6, 1994, and thus prior to the only
date upon which applicant may rely in the absence of proof
of an earlier date, namely, the filing date of his
application. See 37 CFR 2.122(b)(2). Opposer has produced

3 Whether or not a legally recognizable joint venture had been
formed between opposer and applicant is immaterial. Applicant’s
statement of belief that a joint venture existed is adequate to
invalidate his prior claim of sole ownership of the mark LORDS.
In Hoyle Knitting Mills Inc. v. T.J. Manalo Inc., 12 USPQ2d 1720,
1724 (TTAB 1989) the Board noted that, in a trademark context, a
joint venture is an undertaking meeting the general requirements
for a joint venture in which “separate entities combine to
perform a specific function or to market the fruit of their
combined labors under a mark created by them jointly to identify
the venture", citing In re Hercofina, supra at 781.
We make no determination as to whether these qualifications have
been met here.
4 We recognize that opposer’s allegations in the notice of
opposition were in terms of applicant’s fraudulent
representations of exclusive use of the mark, and thus required
proof of the several elements of a claim of fraud, including the
intent to deceive. The evidence now being relied upon by
opposer, however, establishes only a misrepresentation of
ownership by applicant. While this is a lesser ground for holding
the application void, we find it sufficiently falls within the
broad allegations of misrepresentation made by opposer to sustain
the opposition on this ground.
Opposition No. 105,510
7
evidence of use of the trade name LORDS for its retail store
in December 1994. Although opposer has produced no evidence
of continuing use of LORDS either as a trade name or a mark
from that date until the present, applicant has failed to
raise any defense which might contradict opposer’s
allegations to this effect. Accordingly, since the marks
and the goods are identical, we find that opposer has
adequately established priority and the likelihood of
confusion.
Decision: The opposition is sustained on the ground
that the application was void at the time of filing, in that
applicant has admitted that he was not the owner of the
mark, and on the ground of likelihood of confusion under
Section 2(d).
R. F. Cissel
E. W. Hanak
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board