Joint Ownership and Trademark Registration

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.  

Affirmed.

4 thoughts on “Joint Ownership and Trademark Registration

  1. 1

    15 U.S.C. § 1051(a), which requires the trademark owner be the one who files for registration.

    This is easy to say, but harder to understand what it means in practice. Under Title 35, a patent owner must trace a chain of title back to a listed inventor. Therefore, if you want to know who owns a patent, you just start with each of the listed inventors and ask “who owns the share from [Inventor #1]?”, “who owns the share from [Inventor #2]?”, etc. The same goes for authors and copyrights under Title 17.

    With a trademark, however, how exactly do you know who the “owner” is? For the most part, the “owner” of a trademark registration is just whoever files the registration, which makes a requirement that the one who files must be the true owner into something of a hollow tautology.

    1. 1.1

      That seemed a little circular to me too at first blush. But isn’t there a distinction between owning the underlying mark—independent of it being registered—and owning the registration? And part of seeking registration involves attesting to ownership. (I’d imagine that, aside from creating a vulnerability to opposition, knowingly misstating facts on a registration might open someone up to fraud/perjury charges too.) So, assuming a registration is valid, then the listed owner(s) of the registration are the owner(s) of the underlying mark too. It seems like ownership only has to be substantiated if challenged, such as in this opposition case.

      Also, there are some typos and other errors in the OP that make this a little more confusing than it needs to be. For one, “PTAB” should be “TTAB” in the third paragraph. More importantly, the references to “use-based” applications and § 1051(a) in the penultimate and final paragraphs, respectively, are wrong. As noted in the block quote from the TTAB opinion, this case involves an intent to use application, not a use-based one. In turn, intent to use applications are made pursuant to § 1051(b), not subsection (a).

      Even after eliminating that confusion, I still found the initial TTAB opinion a bit convoluted and difficult to follow. Maybe I was the only one though. It starts out on pp. 2-3 noting that “there is technically no statutory basis for [a] nonownership claim” in the intent-to-use context and “[t]hus, the only claim we entertain … is [lack of] a bona fide intent[.]” But when it gets to the core part of the reasoning on pp. 19-20, it basically just says that, because nonownership claims are recognized for use-based applications, and because used-based and intent-to-use applications must be treated the same, the failure to secure the co-owner’s consent dooms the intent-to-use application anyway. So to me it’s not all that different from recognizing a nonownership claim for intent-to-use applications in the first place. Let me know if anyone else found this part to be weird.

      1. 1.1.1

        [I]sn’t there a distinction between owning the underlying mark—independent of it being registered—and owning the registration?

        I don’t know—is there a distinction? I suppose that I can understand the distinction for a use application, but in the case of an intent-to-use I cannot see what one might mean by trying to distinguish between owning the mark itself and owning the registration. This gets at the circularity that you (rightly) purport to find confusing in your third paragraph.

        1. 1.1.1.1

          It’s a good question. There doesn’t seem to be a distinction for what I’d call “pure” ITU applications.

          This case actually isn’t a great example either, because the relevant mark (“YOGI”) had already been subject to actual use for other products, before the ITU application was filed for a new product category. Moreover there was an existing judicial declaration of joint ownership in separate litigation among the parties.

          The best example I found was a case cited by the TTAB, Hole In 1 Drinks. Lexology has a decent summary below.

          link to lexology.com

          As you can see, the summary points out that “ownership arises from the use of a mark. Before such use, there is no owner.” That supports there being no mark/registration ownership distinction in pure ITU cases, as you stated. It’s also reflected in the statutory text. Subsection (a)(3)(A) talks about verifying “ownership” while subsection (b)(3)(A) instead refers to “entitlement to use” a mark. So the question in pure ITU cases then becomes who has the bona fide intent to use the mark?

          In Hole In 1, while it was true that one of the two LLC members applying unilaterally had intent, it wasn’t accurate to say that he alone did; his other fellow member also did. So the unilateral applicant “lacked” the required intent under § 1051(b) in the sense that he lacked sole intent.

          You can see the summary’s “Author’s Note” likewise advises that an ITU application should be made by the full complement of parties having an intent to use.

          For me, the reasoning of Hole In 1 is way more direct and straightforward than this case’s convoluted reliance on analogy to use-based applications.

          If anyone better versed in trademarks wants to weigh in with further and/or more accurate explanation, that’d be great.

          -hr

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