Although AT&T Mobility has demonstrated to the TTAB its basic ability to bring claims in the opposition proceeding, Eric Perrott, trademark and copyright attorney with Gerben Law Firm, notes that the low threshold AT&T Mobility has cleared doesn’t mean that the entity will be successful on its claims.
The Trademark Trial and Appeal Board (TTAB) recently issued a decision allowing an opposition proceeding to continue after finding that opposer AT&T Mobility had standing to bring the proceeding to the TTAB. Applicants Mark Thomann and Dormitus Brands had argued that AT&T Mobility did not have standing to oppose applications to register “CINGULAR” trademarks because the opposer abandoned its own marks when it changed its business name more than a decade earlier.
TTAB Says Relevant Public Might Confuse Trade Name
AT&T Mobility’s opposition challenges a pair of trademark applications filed by Thomann which were then assigned to Dormitus Brands: a standard character mark for “CINGULAR” and a “CINGULAR” composite mark including the disclaimed word “WIRELESS.” Both trademark applications were filed to cover a variety of goods in International Class 9 including mobile phones, accessories, telecommunications equipment and downloadable media. AT&T Mobility opposed the registration of these marks on multiple Lanham Act grounds including false suggestion of a connection, misrepresentation of source and invalid assignment of the applications.
The TTAB bifurcated the opposition proceedings in order to first deal with the issue of standing raised by Thomann and Dormitus. AT&T Mobility stated four grounds for standing: its persona as the original Cingular Wireless before a 2007 name change; its interest in the trade name use of the term by its subsidiary New Cingular Wireless; reasonable belief that the trademarks would cannibalize its business; and reasonable belief that consumer complaints could mistakenly invite wrongful investigation by the Federal Communications Commission. Thomann and Dormitus argued that “CINGULAR” was abandoned after the AT&T Mobility name change, New Cingular only uses its trade name on legal documents and that all customer-facing transactions are under the name AT&T Mobility.
While the TTAB faulted AT&T Mobility for relying on the trade name use of the mark by an entity in New Cingular that wasn’t a party to the opposition proceeding, the Board found no legal bar to claiming false suggestion of a connection with a trade name. Thomann and Dormitus argued that the New Cingular trade name was only included in legal contracts and licenses and that its public-facing business was conducted entirely under the assumed name of AT&T Mobility. However, the TTAB found that the applicants’ definition of “public” was too narrow. In the Board’s reasoning, because the applicant would be competing with AT&T Mobility through the sale of digital calling cards, the relevant public includes those who would be viewing the legal agreements in which AT&T Mobility includes the New Cingular trade name.
The TTAB further found that New Cingular’s use of the trade name supported AT&T Mobility’s standing by establishing the necessary relationship allowing AT&T Mobility to believe that “damage to [its] subsidiary will naturally lead to financial injury to itself.” While AT&T Mobility had been previously admonished by the TTAB for relying on a theory of personal standing that was “too tenuous,” AT&T Mobility responded by presenting documentary evidence showing that it owned a majority interest in the entity which owns 100 percent of New Cingular. This record evidence drew a clear nexus between the two entities and the relationship gave rise to AT&T Mobility’s real and direct interest in the proceeding.
Consumer Recognition and Resurrected “Zombie Brands”
Although AT&T Mobility has demonstrated to the TTAB its basic ability to bring claims in the opposition proceeding, Eric Perrott, trademark and copyright attorney with Gerben Law Firm, notes that the low threshold AT&T Mobility has cleared doesn’t mean that the entity will be successful on its claims. “The minimal requirement of standing is to show enough interest in a trademark to get a case heard,” Perrott said. “This decision is in line with what the Board has done in the past by saying that standing requirements are minimal when it comes to being able to bring a claim.” AT&T Mobility presented enough evidence in contracts and other legal agreements to prove to the TTAB that it had an interest in the case being heard, but the Board’s decision on standing doesn’t necessarily mean that it has the trademark rights required to successfully oppose the “CINGULAR” applications.
While the TTAB didn’t broach the subject in its decision, Perrott discussed the impact of zombie brands and their residual consumer goodwill that can still provide value and recognition if such a brand is resurrected. In February 2016, a federal judge in the Northern District of California determined that the department store chain Macy’s had a protectable interest in the Marshall Field’s brand despite the fact that Macy’s had shuttered that brand in 2006. Macy’s was asserting its trademark rights to that brand in a trademark infringement action filed against a seller of clothing apparel displaying the Marshall Field’s brand. “It’s a concept that we sometimes see in the auto industry, this idea that a brand that was part of everyday culture could cause confusion with the brand’s original owners if resurrected by another company,” Perrott said.
Perrott expected AT&T Mobility to have to do some heavier lifting moving forward if the company was to have more success in its opposition proceeding. “I think that the argument based on the use of Cingular as a trade name is weak because they need to show consumer recognition,” he said, adding that a stronger argument could possibly be made based on consumers who could recall Cingular’s past television advertising campaigns. Such individuals might see the applicant’s goods and services as AT&T’s attempt to resurrect the brand. Whether evidence of such consumer recognition exists is another question, however, and given that a consumer recognition survey could easily cost tens of thousands of dollars, finding a way to settle the opposition proceeding might produce a more favorable outcome. “From a practical standpoint, every trademark case can be settled and 99 percent of the time, it should be settled,” Perrott said.
The TTAB’s decision also set out the trial schedule for the second phase of the opposition proceeding, which will focus on AT&T Mobility’s trademark claims. Expert disclosures were due to the TTAB on March 31 and discovery will close on April 30, with main briefs to be filed during the first few months of 2021.