291185607
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
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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
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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
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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]
Seg. 6, item 3 (2007)
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