Bibiji Inderjit Kaur Puri v. Yogi Bhajan Administrative Trust (Fed. Cir. 2021)
I practice a form kundalini yoga that is somewhat in the tradition of Yogi Bhajan. Bhajan died in 2004 leaving his widow (Puri) as well as an Administrative Trust (YBAT). In recent years, Bhajan’s history of sexual abuse has come to light as well.
Puri and YBAT have a fairly long history of litigation over ownership and control of Bhajan’s estate. The most valuable aspect today is probably YOGI TEA that is sold by a third party, the East West Tea Company, but with Puri and YBAT each having a 50% undivided ownership of intellectual property rights.
The dispute at issue here started when Puri, acting alone, filed a trademark registration application for the mark YOGI for bath and beauty products. YBAT opposed, and the PTAB sided with YBAT — holding that:
[Puri] did not have a bona fide intent to use the mark in commerce solely in her individual capacity at the time she filed her involved because, at such time, [Puri] was aware that both [YBAT] and [Puri] each had an undivided and equal interest in the applied-for mark for the identified goods. Accordingly, we find that the involved application is void ab initio.
[TTAB Decision – OPP_47]. On appeal, the Federal Circuit has affirmed, finding the Board’s legal conclusions “without error” and its factual findings supported by substantial evidence.
The basic legal rule here is that all owners of a trademark must at least consent to the filing of a use-based trademark application. Without consent, “the application
is void ab initio.” For this point, the TTAB cites to Kristin Marie Conolty d/b/a Fairway Fox Golf v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302, 1310 (TTAB 2014) (“the involved application is void ab initio because applicant is not the sole owner of the mark”).
This basic rule is derived from the statute 15 U.S.C. § 1051(a), which requires the trademark owner be the one who files for registration. The statute goes on to require a statement from the owner that “no other person has the right to use such mark..” 15 U.S.C. § 1051(a)(3)(D). Here, although Puri as an owner of the mark, YBAT is also an owner with its own rights.