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The distributor of Casanova brand boxing gloves from Mexico hasn’t been an exclusive licensee long enough to to stop a California boxing supplier from registering Casanova trademarks, the Patent and Trademark Office’s trademark disputes tribunal ruled Sept. 8.
This ruling shows that overseas brand owners might be able to assert their trademark rights in the U.S., but they won’t necessarily be able to rely on their distributors or licensees to do it for them.
There is “no question” that Pro Boxing Supplies Inc.'s use of the Casanova brand name creates a likelihood of confusion with the brand owned by Deportes Casanova of Mexico City, which was worn by Sylvester Stallone in the first “Rocky” movie, the Trademark Trial and Appeal Board said ( Moreno v. Pro Boxing Supplies, Inc. , TTAB, No. 91214580, 9/8/17 ).
However, the exclusive licensing agreement gives Casa de Moreno LLC of New Jersey standing to defend Deportes Casanova’s trademarks only back to 2013, the date of the licensing agreement, the board said. As a licensee and not an owner of the trademark, Moreno doesn’t benefit from the fact that Deportes Casanova has been making boxing equipment in Mexico since the 1940s, the board said.
Deportes Casanova boxing gloves have been used by boxers in the U.S. for decades. Pro Boxing Supplies of Chatsworth, Calif., imported Mexican made Casanova gloves until 1990, the board said, but after losing its supplier, it started making its own gloves, labeled “Sports Casanova,” with a logo very similar to Deportes Casanova’s logo.
Pro Boxing got a U.S. trademark registration for “Casanova” in 2013 and applied for two more, one for a logo with “Sports Casanova” and one for a logo with “Deportes Casanova.” Moreno petitioned the TTAB to cancel the first registration and opposed the two others. The TTAB denied the cancellation and dismissed the oppositions based on the priority ruling, even after finding that Moreno had standing, as an exclusive licensee to file the actions.
Administrative Trademark Judge Cindy D. Greenbaum issued the board’s ruling, which was joined by Judges Marc A. Bergsman and Christopher Larkin.
The Spencer Law Office represented Moreno. The Rudd Law Firm represented Pro Boxing Supplies. Moreno didn’t immediately respond to a Bloomberg BNA request for comment.
To contact the reporter on this story: Anandashankar Mazumdar in Washington at AMazumdar@bna.com
To contact the editor responsible for this story: Mike Wilczek at firstname.lastname@example.org
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