IP Law Daily, TRADEMARK—TTAB: AT&T Mobility had standing to oppose registration of trade name used by subsidiary, (Feb 18, 2020)

By George Basharis, J.D.

AT&T Mobility could proceed with an opposition to registration of CINGULAR and CINGULAR WIRELESS, on false connection grounds, because the term CINGULAR was used in an AT&T subsidiary’s trade name.

Because New Cingular Wireless, an AT&T Mobility subsidiary, held many of the FCC wireless licenses, spectrum leases, and contracts that AT&T used in its wireless communications business, AT&T had standing to oppose registration of marks containing the term CINGULAR, the Trademark Trial and Appeal Board has decided in an opinion designated as precedential. AT&T’s corporate relationship with New Cingular established that AT&T had a real interest in pursuing its claim that Applicant Dormitus Brand’s use of the marks falsely suggested a connection with AT&T (AT&T Mobility LLC v. Thomann, February 10, 2020, Wolfson, F.).

The applicant sought registration of the standard character mark CINGULAR and the composite mark CINGULAR WIRELESS for cell phone carrying cases, chargers, and other accessories. AT&T Mobility opposed registration in part under Section 2(a) of the Trademark Act. AT&T was initially formed in 2000 under the name Cingular Wireless LLC, and in 2001, it began offering cell phone goods and services under the name "Cingular." Cingular Wireless purchased AT&T Wireless in 2004. In 2007, Cingular Wireless changed its name to AT&T Mobility. Applicant argued that AT&T Mobility did not have standing to oppose registration because it abandoned the CINGULAR marks after it changed its name to AT&T. AT&T asserted that its standing was based on its persona as the original Cingular Wireless and in the use of the term CINGULAR by its subsidiary, New Cingular Wireless PCS, LLC, in its trade name.

The Board noted that to have standing a party opposing registration must have a real interest in the proceeding and a reasonable belief that it will suffer an injury from registration. To establish standing, AT&T was required to show that New Cingular uses the term CINGULAR and that AT&T benefitted from New Cingular’s use of the term based on its corporate relationship with New Cingular.

AT&T established that New Cingular held thousands of active FCC wireless licenses, numerous wireless spectrum leases, and hundreds of active antenna structure registrations that are used in AT&T’s wireless business. New Cingular also earned billions in net income each year and incurred significant marketing expenses. In other words, New Cingular conducts significant wireless communications business under its trade name. The Board rejected the applicant’s contention that AT&T should be denied standing because New Cingular’s use of its trade name was limited to "dense legal contracts and FCC tower leases and licenses." The CINGULAR name is known to the relevant public, and the applicant’s use of the marks would falsely suggest a connection between AT&T and the applicant, the Board said.

Turning to the issue of damages, the Board observed that damage to a wholly owned subsidiary may reasonably lead to financial injury to the parent corporation. AT&T established the necessary corporate relationship to New Cingular by showing that it owned a majority interest in a subsidiary that owned a 100 percent interest in New Cingular. Therefore, AT&T had a real interest in the outcome of the registration proceeding and a reasonable basis for its belief of financial injury if the applicant prevailed.

This case is Opposition No. 91218108.

Attorneys: Jeffrey M. Becker (Haynes and Boone, LLP) for AT&T Mobility LLC. Joseph C. Gioconda (Gioconda Law Group PLLC) for Mark Thomann and Dormitus Brands LLC.

Companies: AT&T Mobility LLC; Dormitus Brands LLC

Cases: Trademark USPTO