TTAB Grants Employer’s Opposition Against Former Employee

In a precedential decision, the Trademark Trial and Appeal Board (Board) sustained the opposition by DowntownDC Business Improvement District (opposer) to the application by Roquois Y. Clarke (applicant) for the mark DISTRICT OF FASHION for fashion show exhibitions, based on a likelihood of confusion with the opposer’s common law rights in and an application for the DOWNTOWNDC DISTRICT OF FASHION mark. (See DowntownDC Business Improvement District v. Roquois Y. Clarke, 2024 USPQ2d 1778 (TTAB 2024) (precedential), issued October 8, 2024.

The applicant was an employee of the opposer. During her employment, the applicant promoted fashion shows under the DOWNTOWNDC DISTRICT OF FASHION brand. After the applicant’s position with the opposer was eliminated, the applicant sought registration of the mark DISTRICT OF FASHION for fashion show services in Class 35, and the opposer opposed the application.

The applicant argued that she created the mark outside of the scope of her employment, there was no assignment to the opposer of the mark, and any use by the opposer was by implied license and inured to the applicant’s benefit. The opposer, on the other hand, argued that it owned the mark because the applicant created it within the scope of her employment.

While the evidence reflected that the applicant had created the mark on her own and performed significant off-the-clock logistical work for the events marketed under the mark, this work was within the applicant’s general job duties, involved other employees of the opposer, and the opposer paid for all expenses related to such events.

The Board accordingly held that the mark was created and used within the scope of the applicant’s employment, creating a presumption that the use inured to the benefit of the opposer. The applicant was unable to rebut this presumption as there was no evidence that an implied license existed between the applicant and the opposer.

The Board held that the opposer was entitled to claim prior use of the mark and sustained the opposition based on a likelihood of confusion.

This decision is a reminder of the importance of having employees sign agreements regarding intellectual property ownership at the outset of their employment.

This article was originally published in the INTA Bulletin.