6-03.John Anthony [oral license to employer].doc
John Anthony, Inc.
v.
Fashions by John Anthony, Inc.
Patent and Trademark Office Trademark Trial and Appeal Board
Decided Dec. 30, 1980
Before Lefkowitz [FNa1], Rice, and Kera, Members.
Rice, Member.
An application has been filed by Fashions By John Anthony, Inc., to register the mark "JOHN ANTHONY" for women's apparel, namely, women's suits, use of the mark since April, 1976 being asserted.
Registration has been opposed by John Anthony, Inc. on the grounds that since on or about January 1971, opposer has been using the mark "JOHN ANTHONY" in connection with the sale of women's coats, suits and dresses; that said use has been valid and continuous and has not been abandoned; that use of the mark has necessarily been suspended due to the various actions of applicant and its principals [hereinafter *518 recourted in detail in our recitation of facts in this case]; [FN1] and that since applicant seeks to register the same mark for use in connection with the same goods, ". . . allowance of the application would result in a substantial likelihood of confusion, mistake, and deception."
Applicant, in its answer to the notice of opposition, admits that opposer, since on or about January 1971, has been using the mark "JOHN ANTHONY" in connection with the sale of women's coats, suits and dress, but has denied the remaining salient allegations contained therein, including the allegations that opposer's use has been valid and continuous and has not been abandoned, and that opposer's use of the mark has been suspended due to the various actions of applicant and its principals. Applicant has also asserted affirmatively that opposer would not be damaged by the registration of applicant's mark because opposer is not presently a manufacturer or merchant of women's apparel; that applicant's president, John Anthony Iorio, is one of America's foremost designers of women's clothing; that he is known in the women's fashion field by the name of "JOHN ANTHONY"; that he built up a reputation as a designer of women's clothing long prior to opposer's contact with him; that, while carrying with him his reputation as a designer of women's clothing, he was employed by various firms in the business of manufacturing women's clothing; that he had agreements with these firms that they could use his name and reputation in the sale of his designs as long as he was associated with them; that subsequently he was employed by opposer as its president, and in the same manner had an understanding with opposer that as long as he was associated with opposer, opposer could use the mark "JOHN ANTHONY"; that it was understood that opposer neither owned nor had any other rights in the mark "JOHN ANTHONY"; that John Anthony Iorio is not presently associated with opposer and is not the designer or creator of any fashions which opposer may show at this time, wherefore opposer has no rights in the mark "JOHN ANTHONY"; that applicant has superior rights in the mark by virtue of its continuous use thereof in association with women's clothing since long prior to opposer's alleged date of first use; and that opposer has ceased using the mark "JOHN ANTHONY" in association with women's apparel with the intent to abandon the mark.
***
In the instant case, the evidence indicates that Anthony was known in the world of fashion by the name "JOHN ANTHONY" before opposer was formed, [FN5] and that he never transferred or assigned his rights in the name "JOHN ANTHONY" to opposer, but rather merely allowed opposer to use the name during the years while he was an employee of opposer. All that opposer acquired under the employment contract which was executed by Anthony and opposer on December 30, 1970 was the exclusive right to Anthony's business services during the three- year period of the contract, beginning January 11, 1971; the right to sell off any existing inventory of clothes designed by Anthony (and hence presumably bearing the name "JOHN ANTHONY") for one year after the termination of the contract, or until such time as said inventory should be liquidated, whichever was lesser; and an anti-competitive agreement to the effect that if Anthony willfully breached the contract he would not, for a period of one year following receipt of written notice of such breach, design any garments competitive with the garments of opposer or use the name "JOHN ANTHONY" on any such competitive garments (Anthony and Levine did not in fact leave opposer until January of 1976, or two years after the expiration of this employment contract). That is, the most that opposer can be said to have acquired under this contract was the exclusive right to sell clothes designed by Anthony, and inferentially, the right to use the mark "JOHN ANTHONY" thereon, for the three- year term of the contract plus, under certain circumstances which did not materialize, for as much as one year thereafter. In view thereof, it is not surprising that in the agreement dated November 15, 1973, whereby ownership of opposer was transferred from Oppenheim to Manning, Oppenheim representated and warranted not that opposer was the owner of the mark "JOHN ANTHONY" but rather only that to the best of his knowledge, opposer had the right to sell ladies' clothing under that name. Both of these agreements are, in our opinion, consistent with applicant's claim that opposer's use of the mark "JOHN ANTHONY" was made pursuant to an oral license from Anthony, and inconsistent with opposer's claim to ownership of the mark in its own right.
It appears to us that this case is strikingly similar to the case of Susy Products, Inc. v. Greeman, supra. In that case, an artist named Knox who was known in the field by his *526 nom de plume, "LOWELL" (having made sketches and portraits over that signature and having had his work reproduced in national publications wherein he was referred to as "the noted artist Lowell"), formed a partnership for the purpose of manufacturing and selling miniature pictures painted by him under his nom de plume, "LOWELL", which partnership was thereafter incorporated. When Knox subsequently sold his stock and interests in the corporation, the corporation sought an injunction restraining Knox and his new associates from continuing to use the name "LOWELL" on products manufactured by them, claiming that when Knox sold his stock and interests in the plaintiff corporation he surrendered thereby his right to the use of the name "LOWELL". In dismissing the complaint, the Court stated:
"Upon the proof adduced, plaintiffs' claim to an exclusive right of the use of the name 'Lowell' on the future output of the artist Knox is untenable. The mere fact that, during his association with Susy Products and its successor, Susy Products, Inc., Knox permitted his nom de plume to be used, did not vest in either company the exclusive right to the use of the name under which he had been known. Plaintiffs have failed to establish any proprietary right to the use of the name. There is no proof of a writing or contract which tends to establish that Knox transferred or assigned to plaintiffs the exclusive right to the use of the name in question."
Similarly, in the absence of evidence showing that Anthony assigned or transferred his rights in the name "JOHN ANTHONY" to opposer, we are of the opinion that it was Anthony, not opposer, who owned this name and mark both during his tenure with opposer and thereafter. [FN6]
1
Seg. 6, item 3 (2007)