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Keywords

summary judgmentpatenttrademarkadoptiongood faithbad faith
trademarkcorporationadoptiongood faithappellant

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Person’s Co., Ltd. v. Christman, 900 F.2d 1565, 58 USLW 2636, 14 U.S.P.Q.2d 1477

Facts

In 1977, Takaya Iwasaki applied a logo with the name 'PERSON'S' to clothing in Japan and later formed Person's Co., Ltd. to market these items. In 1981, Larry Christman, after purchasing clothing with the 'PERSON'S' logo in Japan, began selling his own line in the U.S. under the same mark. Christman filed for U.S. trademark registration in 1983, which was granted in 1984. Meanwhile, Person's Co. sought to enter the U.S. market and filed for trademark registration in 1985, leading to a dispute over the rights to the 'PERSON'S' mark.

In 1977, Takaya Iwasaki first applied a stylized logo bearing the name 'PERSON'S' to clothing in his native Japan. Two years later Iwasaki formed Person's Co., Ltd., a Japanese corporation, to market and distribute the clothing items in retail stores located in Japan.

Issue

Whether knowledge of a mark's use outside U.S. commerce precludes good faith adoption and use of the identical mark in the United States prior to the entry of the foreign user into the domestic market, and whether the Board properly granted summary judgment in favor of Christman on the issue of abandonment.

Does knowledge of a mark's use outside U.S. commerce preclude good faith adoption and use of the identical mark in the United States prior to the entry of the foreign user into the domestic market?

Rule

The Patent and Trademark Office may cancel a trademark registration within five years of its issuance if there is a valid ground for cancellation and the party petitioning has standing. The legal issue in a cancellation proceeding is the right to register a mark, which can be based on ownership of a foreign registration or use in U.S. commerce. The term 'used in commerce' refers to the sale or transportation of goods bearing the mark in U.S. interstate commerce or affecting such commerce.

The Board may properly cancel a trademark registration within five years of issue when there is a valid ground why the trademark should not continue to be registered and the party petitioning for cancellation has standing.

Analysis

The Board found that Person's Co.'s use of the mark in Japan did not establish priority in the U.S. since it had no effect on U.S. commerce. Christman was the first to use the mark in the U.S. and had no knowledge of Person's Co.'s plans to enter the U.S. market. The Board concluded that Christman's actions did not constitute bad faith, as he was not aware of any superior rights held by Person's Co. in the U.S. market.

The Board found that Person's use of the mark in Japan could not be used to establish priority against a 'good faith' senior user in U.S. commerce. The Board found no evidence to suggest that the 'PERSON'S' mark had acquired any notoriety in this country at the time of its adoption by Christman.

Conclusion

The court affirmed the Board's decision, holding that Christman was the senior user of the 'PERSON'S' mark in the U.S. and that Person's Co. had no basis for claiming priority.

The Board's conclusion that Christman's adoption and use of the mark were in good faith is affirmed.

Who won?

Larry Christman prevailed in this case as the court upheld the Board's decision to cancel Person's Co.'s trademark registration. The court reasoned that Christman was the first to use the mark in U.S. commerce and had no knowledge of any prior rights held by Person's Co. in the U.S. market, thus his adoption of the mark was in good faith.

Christman was the first to use the mark in United States commerce and the first to obtain a federal registration thereon. Appellant has no basis upon which to claim priority and is the junior user under these facts.

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