Trademark Trial And Appeal Board: Trademark Licensee Cannot Establish Priority Based On Use By Licensor

Julie A. Moreno v. Pro Boxing Supplies, Opp. Nos. 91214580, 91214877, Canc. No. 92058878 (T.T.A.B. Sept. 8, 2017)

In a recent precedential case, the Trademark Trial and Appeal Board ("TTAB") found that use of a mark by a licensor does not inure to the benefit of a licensee for the purpose of establishing priority.

Deportes Casanova, a Mexican producer of boxing gloves and related equipment, claimed use of the mark CASANOVA in the United States since at least 1972. Notably, CASANOVA gloves were worn by Rocky Balboa in the first Rocky movie in 1976. However, Deportes Casanova never applied to register CASANOVA in the United States.

Pro Boxing Supplies ("Pro Boxing") started using the CASANOVA mark in approximately 1987, when it purchased CASANOVA boxing gloves made in Mexico through a vendor and sold the gloves in the United States. When, a few years later, the vendor could no longer acquire the gloves, Pro Boxing began to manufacture and sell CASANOVA gloves on