IP Law Daily, TRADEMARK—TTAB: Opposition to PYNK mark sustained, applicant not sole owner of mark, (Jul 19, 2017)

By Linda O’Brien, J.D., LL.M.

Opposition to a media company’s application to register the trademark PYNK and design for a women’s fashion and lifestyle magazine was sustained by the Trademark Trial and Appeal Board, finding that the applicant was not the exclusive owner of the logo mark at the time of filing of the application (Pynk Branded, LLC v. BleuLife Media & Entertainment, Inc., July 14, 2017, Wellington, T.).

BleuLife Media & Entertainment, Inc. ("Applicant") sought to register a described mark for a "general feature magazine in the field of women’s fashion and lifestyle, the foregoing to exclude the subject of careers and career women" in International Class 16. The color pink is claimed as a feature of the mark and the mark is described as "consisting of letters PYNK spelled out in black block letters with a splash of pink paint across it."

Pynk Branded, LLC ("Opposer") opposed the application on the grounds that Applicant was not the owner of the PYNK logo mark at the time of filing the application.

In 2010 or 2011, Latresa Moore and Devon Johnson, principals of Pynk Branded, LLC and BleuLife Media & Entertainment, Inc., respectively, became business partners. Johnson asked Moore to start a new magazine—a women’s version of his "Bleu" magazine. Moore commissioned the creation of the PYNK logo, and a magazine operated by Moore was created in 2011 with the PYNK logo mark appearing at the top of the cover page. By 2013, the relationship between Moore and Johnson ended. Moore incorporated Pynk Branded, LLC in September 2013 and BleuLife filed the subject application in December 2013.

Opposer currently operates an Instagram webpage advertising a "PYNK Magazine," and a "THINK PYNK" webpage containing information on entertainment, travel, and beauty. Applicant operates a PYNK Magazine website, with the PYNK logo mark placed at the top of the page, featuring information on entertainment, fashion, and celebrity lifestyle, as well as a website called "Pynkmag.com."

Ownership. The Board determined that the Opposer demonstrated that the Applicant was not the sole owner of the PYNK logo mark at the time of filing of the involved application. An application filed by one who is not the owner of the mark sought to be registered is void ab initio. Opposer had the burden of establishing that the Applicant was not the owner of the PYNK logo mark at the time of filing of the application in December 2013, the Board explained.

Opposer, or Moore, had at least a partial interest in the PYNK logo mark in December 2013. Moore testified that she and Johnson decided to partner to create the magazine; she has operated the PYNK name, logo, and brand for magazine advertising since 2010; Johnson made no contribution to the creation of the logo; and Johnson acknowledged her interest in the mark in email correspondence.

Moore did not establish her claim that the parties had an "understanding that each entity would walk away from the business with their separate Intellectual properties and assets." Thus, it was not possible to delineate what particular intellectual properties and assets remained and with whom. However, at a minimum, the Opposer showed that Moore had at least some ownership rights in the mark due to her operation of the magazine, the Board concluded.

The case is Opposition No. 91220320.

Attorneys: Norman Keith White (Keith White PLLC) for Pynk Branded, LLC. Kuscha Hatami (HP Law Group) BleuLife Media & Entertainment, Inc.

Companies: Pynk Branded, LLC; BleuLife Media & Entertainment, Inc.

Cases: Trademark USPTO