Great Seats, Ltd. v. Great Seats, Inc.

                           THIS OPINION IS A
                        PRECEDENT OF THE TTAB

                                                Mailed:
                                                June 8, 2007



          UNITED STATES PATENT AND TRADEMARK OFFICE
                            _____

                 Trademark Trial and Appeal Board
                               _____

                        Great Seats, Ltd.
                                v.
                        Great Seats, Inc.
                              _____

                    Cancellation No. 92032524
                              _____

Irving M. Weiner of Weiner & Burt, P.C. for Great Seats,
Ltd.

P. Jay Hines of Baker & Hostetler LLP for Great Seats, Inc.
                            _____

Before Seeherman, Grendel and Holtzman, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

INTRODUCTION

     Great Seats, Inc., respondent herein,1 is the record

owner of 

Registration No. 2339519,

 which is of the mark

depicted below


1
     As will be discussed more thoroughly infra, there have been
two corporate entities named “Great Seats, Inc.” One “Great
Seats, Inc.” corporation, formed on March 12, 1997, was the
applicant which, on April 21, 1997, filed the application which
matured into the registration involved in this proceeding. This
corporation ceased to exist on October 7, 1999. (See infra at n.
5.) In this decision, we will refer to this corporation as
Cancellation No. 92032524




for services recited in the registration as “ticket agency

services for concerts, theatrical performances, and sporting

events,” in Class 35.2      The registration includes a claim of

acquired distinctiveness under Trademark Act Section 2(f),

15 U.S.C. §1052

(f), as well as a disclaimer of INC. apart

from the mark as shown.       The registration matured from an

application filed on April 21, 1997, which was based on use

in commerce under Trademark Act Section 1(a), 15 U.S.C.



“applicant” or as “GS-1” or as “the ’660 corporation.” The
other “Great Seats, Inc.” is a corporation which was originally
formed in 1990 as Wholesale Tickets, Inc. (“WTI”) and which,
through mesne name changes, became “Great Seats, Inc.” on July 7,
1997, after the application filing date. This corporation
prosecuted the application after the ’660 corporation ceased to
exist on October 7, 1999. It received the registration at issue
in this proceeding on April 11, 2000, and has litigated this
proceeding as respondent. In this decision, we shall refer to
this second corporation as “respondent” or as “GS-2” or as “the
’410 corporation.”
     Respondent, the ’410 corporation, is currently the record
owner of the involved registration by virtue of a nunc pro tunc
assignment from the applicant ’660 corporation, dated November 4,
2004 (during the course of this proceeding) but assertedly
effective as of October 7, 1999. Petitioner has challenged the
validity of this assignment and the “standing” of the ’410
corporation to act as respondent herein. However, in view of our
finding (discussed infra) that the ’410 corporation is and has
been the owner of the involved mark at all times pertinent
herein, we deem the ’410 corporation to be the proper respondent
in this case, regardless of the validity of the nunc pro tunc
assignment. Further with respect to the nunc pro tunc
assignment, see infra at footnote 6.
2
  Issued on April 11, 2000.    Affidavits under Sections 8 and 15
filed.



                                  2
Cancellation No. 92032524


§1051(a), and in which March 1, 1997 was alleged to be the

date of first use of the mark anywhere and the date of first

use of the mark in commerce.

     On June 15, 2001, Great Seats, Ltd., petitioner herein,

filed a petition to cancel the involved registration.      In

its amended petition for cancellation, petitioner alleges as

grounds for cancellation that (1) the application from which

the registration matured is void ab initio under Trademark

Act Section 1 because it was not filed by the owner of the

mark, and that (2) the application which matured into the

registration is void ab initio due to fraud committed during

prosecution of the application, during maintenance of the

registration, and during litigation of this proceeding.3

     Respondent filed an answer to the amended petition to

cancel by which it denied the salient allegations thereof

and asserted various affirmative defenses, the only one of

which it has pursued at trial and in briefing being the

equitable defense of unclean hands.

     The evidence of record consists of:


3
     As noted supra at footnote 1, petitioner also alleges that
the respondent ’410 corporation lacks “standing” to defend this
cancellation proceeding. Even assuming the correctness of
petitioner’s novel theory that a respondent in a cancellation
proceeding must establish its “standing” to defend the case, we
find that respondent in fact has such standing given its
ownership, or claim of ownership, of the registered mark.
     Additionally, petitioner’s amended petition to cancel
includes a Section 2(d) ground for cancellation, but petitioner
has expressly withdrawn such claim. See petitioner’s reply brief
at pages 9-10. We shall give it no further consideration.



                               3
Cancellation No. 92032524


(1) the file of respondent’s involved registration;

(2) the pleadings herein;

(3) petitioner’s December 21, 2005 notice of reliance on

various materials, including:


          (a) the July 15, 2004 discovery deposition of
          respondent’s principal Enrique Daniel Matta, and
          exhibits thereto (hereinafter “Matta Disc.
          Depo.”);

          (b) respondent’s Answers to petitioner’s
          Interrogatories and Requests for Admissions
          (hereinafter “Interrog. No. ___” and “Adm. No.
          ___”);

          (c) the file of petitioner’s application Serial
          No. 75733290;

          (d) respondent’s February 7, 2005 response to
          petitioner’s motion for summary judgment, and the
          seven exhibits thereto;4 and

          (e) various official records from the
          USPTO and from the State of Maryland;




4
  The Board denied petitioner’s motion for summary judgment in an
order dated July 15, 2005. We note that evidence submitted in
connection with a summary judgment motion is not of record as
trial evidence unless it is properly made of record at trial.
Normally, summary judgment evidence (and briefs) previously
submitted in the case would not be deemed to be “official
records” which may be submitted via notice of reliance. However,
in its trial brief in this case (at page 1), respondent has
stipulated that the evidence of record includes all of the
materials submitted via petitioner’s notice of reliance. In view
of this stipulation, we deem the summary judgment evidence to be
of record at trial. We add that the specific findings of fact
for which we cite this summary judgment evidence (see infra) are
supported by other evidence in the record as well.




                                4
Cancellation No. 92032524


     (4) respondent’s March 24, 2006 notice of reliance on

various official records and on certain of petitioner’s

answers to respondent’s interrogatories;

     (5) the May 1, 2006 testimony deposition of Enrique

Daniel Matta and exhibits thereto, taken by petitioner

during its rebuttal testimony period (hereinafter “Matta

Test. Depo.”); and

     (6) the May 1, 2006 testimony deposition of Steven H.

Oram (respondent’s corporate counsel) and exhibits thereto,

taken by petitioner during its rebuttal testimony period

(hereinafter “Oram Test. Depo.”).

     The case is fully briefed.   After careful consideration

of all of the evidence and arguments proffered by the

parties, we grant the petition to cancel on the ground that

the application which matured into the involved registration

was not filed by the owner of the mark and that it therefore

is void ab initio under Trademark Act Section 1(a), 

15 U.S.C. §1051

(a).   In view of this decision, we need not and

do not reach petitioner’s other pleaded claims.   Finally, we

reject respondent’s pleaded “unclean hands” affirmative

defense.



STANDING

     The record establishes that petitioner is the owner of

application Serial No. 75733290, filed June 21, 1999, by



                              5
Cancellation No. 92032524


which it seeks registration of the mark GREAT SEATS for

“arranging for ticket reservations for shows and other

entertainment events.”      The record also establishes that

petitioner’s application has been refused registration under

Trademark Act Section 2(d) based on respondent’s

Registration No. 2339519,

 the registration involved in this

cancellation proceeding, and that petitioner’s application

has been suspended pending the outcome of this proceeding.

(Petitioner’s notice of reliance, items 4-9; respondent’s

answers to paragraphs 2 and 3 of the amended petition for

cancellation).

     In view of these facts, we find that petitioner has

established its standing to petition to cancel respondent’s

involved registration.      See Cerveceria Modelo S.A. de C.V.

v. R.B. Marco & Sons, Inc., 

55 USPQ2d 1298

 (TTAB 2000);

Hartwell Co. v. Shane, 

17 USPQ2d 1569

 (TTAB 1990).



PETITIONER’S §1(a) NON-OWNERSHIP CLAIM

     The record establishes the following facts pertinent to

petitioner’s §1(a) non-ownership claim.

     In 1978, respondent’s principal Enrique Daniel Matta

(hereinafter Danny Matta or Matta) became involved (as an

individual) in the business of selling and brokering tickets

for entertainment events.      He eventually acquired the

nickname “Great Seats” due to his ability to obtain and sell



                                 6
Cancellation No. 92032524


“great seats” to entertainment events.    (Matta Disc. Depo.

at 293-95; Matta Test. Depo. at 29-34.)

     In 1990, Matta formed a Maryland corporation named

Wholesale Tickets, Inc. (hereinafter WTI), under which he

continued in the ticket brokerage business.    The State of

Maryland assigned ID No. D3048410 (hereinafter ’410) to this

corporation.    (Adm. Nos. 1 and 2.)   Danny Matta was named as

the president of the corporation, and it appears that in the

beginning he was also the sole shareholder of the

corporation.    (Matta Disc. Depo., Exh. 1.)   It is not clear

how long Matta remained the sole shareholder of the ’410

corporation; the record shows only that as of July 7, 2004

the shareholders included Matta and at least three others.

(Adm. No. 241.)

     In 1994, WTI changed its name to Premier Entertainment,

Inc. (hereinafter PE-1).    The renamed corporation retained

the ’410 Maryland ID number.    (Adm. No. 3; Exh. No. 3 to

respondent’s summary judgment response.)

     In 1995, PE-1 (the ’410 corporation) began using the

designation GREAT SEATS in its advertising, along with the

name Premier Entertainment.    (Interrog. No. 2; Oram Test.

Depo. 11-13.)    Use of the GREAT SEATS designation by this

corporation (the ’410 corporation) apparently has continued

to the present time.




                               7
Cancellation No. 92032524


     On March 12, 1997, Matta formed a second Maryland

corporation, naming it “Great Seats, Inc.” (hereinafter GS-1

or the ’660 corporation).    This corporation was assigned ID

No. D4635660 (hereinafter ’660) by the State of Maryland.5

Danny Matta was named president and secretary/treasurer of

the new corporation, and Danny Matta and his wife Julia

Matta were issued all of the corporation’s stock, as tenants

by the entirety.   (Matta Disc. Depo. Exh. 23; Exh. Nos. 6

and 7 to respondent’s summary judgment response.)

     Explaining the circumstances surrounding the formation

of the new ’660 corporation, respondent’s corporate counsel,

Steven Oram, testified as follows (bracketed language is the

Board’s, inserted for clarity):


       In 1997 Danny [Matta] came to me and said, “I’d
       like to contemplate changing the name of ‘Premier’
       [the ’410 corporation] to “Great Seats, Inc.” And
       he said, “But I need to – we need to make sure
       that the – that the name works as a marketing
       device and that it’s a good vehicle.” And we
       decided that we would first form “Great Seats,
       Inc.” [the ‘660 corporation], which is what we
       did. And he began to see if the reputation that
       he had gotten in town for having the best or the
       greatest seats was helped by the – by the name
       “Great Seats.” And he – so that the company we
       formed in March of ’97 [the ’660 corporation] was
       used to reserve the name and to hold the corporate
       structure, undecided what we were going to do with
       it.

5
  This ’660 corporation forfeited its corporate charter by
operation of Maryland law on October 7, 1999, a fact which is not
pertinent to the issue before us, i.e., whether the ’660
corporation owned the service mark as of the April 21, 1997
application filing date.



                                8
Cancellation No. 92032524




(Oram Depo. at 9.)    The new ’660 corporation was “a shell

corporation in proper legal existence, formed and in good

standing under the laws in the state of Maryland.”     (Oram

Depo. at 16.)

     Before and after the formation of the ’660 corporation

on March 12, 1997, all use and advertising of the GREAT

SEATS mark in connection with ticket brokerage services

continued to be performed solely by the earlier ’410

corporation, and not by the newly-formed ’660 corporation.

(Adm. Nos. 29-30, 34, and 41.)     There is no evidence of any

transfer of rights in the GREAT SEATS designation from the

prior ’410 corporation to the new ’660 corporation upon the

latter’s formation, or at any time thereafter.    There is no

evidence that the ’410 corporation’s use of the mark was

controlled by the new ’660 corporation.

     On April 21, 1997, the application (Serial No.

75278703) which matured into respondent’s registration

involved herein was filed by Great Seats, Inc., the newly-

formed ’660 corporation which was the only corporation named

“Great Seats, Inc.” at that time.    The application

declaration was signed by Danny Matta, as president of

“Great Seats, Inc.”   In the application, the date of first

use of the mark and the date of first use of the mark in

commerce were alleged to be March 1, 1997, a date prior to



                               9
Cancellation No. 92032524


the March 12, 1997 formation of the applicant ’660

corporation.   This March 1, 1997 date of first use referred

to use by the ’410 corporation, not to use by the applicant

’660 corporation.   (Adm. Nos. 186-87.)

     On July 7, 1997, some two and one-half months after the

application filing date and nearly four months after the

formation of the applicant ’660 corporation on March 12,

1997, the corporate name of the applicant ’660 corporation

was changed from “Great Seats, Inc.” to “Premier

Entertainment, Inc.”   At the same time, the earlier ’410

corporation then known as “Premier Entertainment, Inc.”

changed its name to “Great Seats, Inc.”      Thus, the ’410

corporation and the ’660 corporation effectively switched

names on July 7, 1997.      (Adm. No. 27; Exhibit 4 to

respondent’s summary judgment response.)      After the name

changes (as before the name changes, and before the April

21, 1997 application filing date), all use and advertising

of the GREAT SEATS mark in connection with the ticket

brokerage services recited in the application were performed

by the ’410 corporation, and not by the applicant ’660

corporation.   (Adm. Nos. 29-30, 34, and 41.)

     Mr. Matta testified that, notwithstanding his signature

on the documents which effected the formation of the ’660

corporation on March 12, 1997, he was unaware, prior to this

cancellation proceeding, of the formation and existence of



                                 10
Cancellation No. 92032524


the ’660 corporation.       He maintains that, to his

understanding, he always has had only one ticket brokerage

company or business which, although it went through several

name changes, remained only one company or business.       (See,

e.g., Matta Disc. Depo. at 94-95, 133-34, 167, 171-72, 230-

31, and 264-69; Matta Test. Depo. at 31-33.)       According to

respondent, that company began in 1978 as an individual

proprietorship, was incorporated in 1990 under the name

Wholesale Tickets, Inc., changed its name in 1994 to Premier

Entertainment, Inc., and then in July 1997 (after the

application filing date) changed its name again to Great

Seats, Inc.   This in fact is the history of the ’410

corporation, as recounted above.       However, it does not take

into account the formation and existence of the ’660

corporation prior to the April 21, 1997 application filing

date, nor the fact that it was the ’660 corporation, and not

the ’410 corporation, which filed the application for

registration of the mark.

     In a use-based application under Trademark Act Section

1(a), only the owner of the mark may file the application

for registration of the mark; if the entity filing the

application is not the owner of the mark as of the filing

date, the application is void ab initio.       See Trademark Act

Section 1(a), 

15 U.S.C. §1051

(a); Trademark Rule 2.71(d), 

37 C.F.R. §2.71

(d).   This statutory ownership requirement



                                  11
Cancellation No. 92032524


cannot be waived.     Huang v. Tzu Wei Chen Food Co., Ltd., 

849 F.2d 1458

, 

7 USPQ2d 1335

 (Fed. Cir. 1988).    Thus, the issue

before us is whether the ’660 corporation which filed the

application was the owner of the mark as of the application

filing date.    For the reasons discussed below, we find that

it was not; we find, rather, that the owner of the mark as

of the application filing date was the actual user of the

mark, i.e., the ’410 corporation.

     As of the April 21, 1997 application filing date, the

applicant ’660 corporation (which was formed on March 12,

1997) was not itself using and had not used the mark sought

to be registered.   All use of the mark prior to and as of

the filing date was use by the ’410 corporation, not the

’660 corporation.   Therefore, there was no use of the mark

by the applicant ’660 corporation upon which respondent can

rely as a basis for establishing that the ’660 corporation

was the owner of the mark and thus entitled to file the

application for registration of the mark.

     Respondent argues, however, that despite the ’660

corporation’s lack of use of the mark, the ’660 corporation

was the owner of the mark and the proper applicant for

registration.   Respondent appears to be basing this

contention on two theories, which are somewhat commingled in

respondent’s brief.    First, respondent contends that the

’410 corporation and the ’660 corporation were merely



                                12
Cancellation No. 92032524


earlier and later manifestations of the same single

continuing commercial enterprise, such that the ’410

corporation’s use of the mark prior to and as of the filing

date in fact constituted use by the ’660 corporation.

Second, respondent appears to be arguing that even if the

’660 corporation and the ’410 corporation were two separate

entities, they were “related companies” under Trademark Act

Section 5, with the ’410 corporation’s use of the mark prior

to the application filing date having been controlled by Mr.

Matta, and having inured to the benefit of the applicant

’660 corporation.   We shall address each of these theories

in turn.

     Respondent argues that the ’410 corporation and the

’660 corporation were merely earlier and later

manifestations of the same company, such that the

application filed by the ’660 corporation on April 21, 1997

in fact was filed by the owner of the mark.   According to

respondent, Matta formed the ’660 corporation on March 12,

1997 “out of a desire to change his corporate name to

correspond to how he was perceived by the public.”

(Respondent’s brief at 1.)   It was Matta’s “intention and

understanding” that the ’660 corporation would “take over

the business of” the earlier ’410 corporation.   (Id. at 6.)

The ’660 corporation was formed upon the recommendation of

Matta’s corporate attorneys, but “it was always Mr. Matta’s



                              13
Cancellation No. 92032524


intention and prerogative to operate only one company and to

conduct his day to day business through one company.”      (Id.

at 2.)   It was Mr. Matta’s understanding that the April 21,

1997 application for registration was to be filed by the

’410 corporation, but “due to some actions taken by his

corporate lawyers, he was actually signing the application

on behalf of [the ’660 corporation], a corporation he was

not aware even existed.”       (Id. at 7.)

     Essentially, respondent appears to be arguing that the

application in fact was filed by the actual owner of the

mark (the single commercial enterprise comprised of the

earlier ’410 corporation and the later ’660 corporation)

albeit in an incorrect name (i.e., in the name of the ’660

corporation rather than the ’410 corporation).       Citing Accu

Personnel Inc. v. Accustaff Inc., 

38 USPQ2d 1443

 (TTAB

1996), and Gaylord Bros. Inc. v. Strobel Products Co., Inc.,

140 USPQ 72

 (TTAB 1963), respondent contends that its mere

misidentification of the ’660 corporation as applicant in

the application was a curable defect which does not render

the application void.       We are not persuaded by this

argument.

     Where there exists as of the application filing date

but a single continuing commercial enterprise which is the

owner of the mark, and it is that entity which files the

application, the application is deemed to have been filed by



                                  14
Cancellation No. 92032524


the owner of the mark even if the applicant, that single

commercial enterprise, is misidentified in the application

as to its name or entity designation (such as corporation,

partnership, etc.).   If the named applicant is merely an

earlier or later manifestation of the same single continuing

commercial enterprise which is the owner of the mark, a

mistake in the manner in which that single entity is

identified in the application is not fatal to the

application but instead is a curable defect.   See Accu

Personnel Inc. v. Accustaff Inc., supra (applicant

corporation, formed by merger of four separate companies

which did not survive the merger, was proper “person” to

file the application even if corporation technically did not

yet exist on application filing date; the four companies and

the corporation constituted earlier and later manifestations

of the same single commercial enterprise which was the owner

of the mark but which was merely misidentified in the

application).   See also Gaylord Bros. Inc. v. Strobel

Products Co., Inc., supra (for purposes of establishing

Section 2(d) priority, defendant corporation which had been

formed by an individual who formerly did business under the

mark as a sole proprietorship was entitled to rely on the

proprietorship’s earlier use of the mark; the proprietorship

and the corporation constituted a single enterprise, where

the proprietorship had “ceased doing business” under the



                              15
Cancellation No. 92032524


mark upon the formation of the corporation, and the business

formerly operated as a proprietorship “was taken over and

continued by” the corporation).

     In Accu Personnel, the Board explained as follows:


       This is not a case where two separate commercial
       enterprises are in existence on the application
       filing date, and the application is filed by the
       wrong one. Rather, there has been only one
       commercial enterprise in existence throughout the
       life of this application. The Florida corporation
       named as applicant, although not in existence on
       the filing date, is merely a later manifestation
       of the same, single commercial enterprise which
       filed the application. It is not a separate
       commercial enterprise, but rather the same
       enterprise, albeit in corporate form. The four
       regional companies were transformed into the
       corporation; they did not survive the merger as
       entities separate and apart from the corporation.


Accu Personnel, supra, 38 USPQ2d at 1445.

     Although the actual legal issues involved in Accu

Personnel (the “personhood” of a yet-to-be formed

corporation) and in Gaylord (Section 2(d) priority) are

different from the Section 1(a) ownership issue involved in

the present case, we deem the Board’s discussion in both

cases of the “single enterprise” theory to be instructive.

Indeed, it is the Board’s discussion of that theory for

which respondent cites both cases in its brief in this case.

However, we find that even aside from the differences in the

actual legal issues involved in Accu Personnel and Gaylord

vis-à-vis the present case, both of those cases are readily



                             16
Cancellation No. 92032524


distinguishable from our case on their facts with respect to

the “single enterprise” issue.

     Specifically, we find that this case in fact is a case

such as that contemplated by the Board in the above-quoted

language from Accu Personnel, i.e., it is “a case where two

separate commercial enterprises are in existence on the

application filing date, and the application is filed by the

wrong one.”   In Accu Personnel, the four companies which

merged after the filing date of the application to form the

applicant corporation did not survive the merger as separate

entities, so the four companies and the corporation were

merely earlier and later manifestations of the same, single

commercial entity.   Likewise in Gaylord, because the earlier

proprietorship had ceased to exist or function upon

formation of the corporation, the proprietorship and the

corporation were deemed to constitute a single, continuing

entity.

     In our case, however, the ’410 corporation and the

applicant ’660 corporation were not merely earlier and later

manifestations of the same, single commercial enterprise.

The earlier ’410 corporation clearly did not cease to exist

upon formation of the ’660 corporation, but rather continued

in business and continued to use the mark.   There is no

evidence of any transfer of rights and goodwill in the mark

from the earlier ’410 corporation to the applicant ’660



                              17
Cancellation No. 92032524


corporation upon the latter’s formation.   As of the

application filing date, the ’410 corporation and the ’660

corporation constituted two separate legal entities, and the

application was filed by the wrong one.

     This case thus is more similar to those reported cases

in which the application was found to be void ab initio

because two entities were in existence as of the application

filing date, and the application was filed by the wrong one.

See, e.g., Huang v. Tzu Wei Chen Food Co. 

Ltd., supra

(application filed by individual void where owner of mark

was corporation with which individual was affiliated); In re

Tong Yang Cement Corp., 

19 USPQ2d 1689

 (TTAB

1991)(application filed by corporation void where owner of

mark was joint venture of which applicant corporation was

member); and American Forests v. Sanders, 

54 USPQ2d 1860

(TTAB 1999)(intent-to-use application filed by individual

void where the actual entity possessing the bona fide

intention to use the mark was a partnership comprised of the

individual and her husband).

     The present case is particularly similar on its facts

to Daltronics, Inc. v. H.L. Dalis, Inc., 

158 USPQ 475

 (TTAB

1968).   In Daltronics, like in the Gaylord case relied on by

respondent herein and discussed above, the issue was

priority.   The opposer, Daltronics, Inc., attempted to rely

for priority purposes on the earlier use of a similar mark



                               18
Cancellation No. 92032524


by another, earlier-formed corporation, Deltronics Inc.,

which opposer argued was a predecessor in interest to the

later-formed Daltronics, Inc.    The same individual was the

president and sole stockholder of both corporations, and he

treated both companies as his alter egos.    However, there

was no evidence that any transfer of assets or goodwill from

the earlier corporation, Deltronics Inc., to the later-

formed corporation, Daltronics, Inc., had occurred upon the

latter’s formation.   The Board held that the earlier

corporation, Deltronics Inc., was not a predecessor in

interest to the opposer, Daltronics, Inc., and that

Daltronics, Inc. therefore was not entitled to rely on the

earlier use of the mark by Deltronics Inc.    The Board

explained as follows:


       However, these two companies had different legal
       existences, and when opposer was organized there
       was no transfer of any good will or rights in the
       mark or name. Opposer’s president conceded that
       there was no transfer of assets; that he
       intentionally formed a new and different
       corporation to make a “clean start” rather than
       change the name which he knew he could do; and
       that he knowingly created a new and, in substance,
       a distinctly different legal entity. Although he
       treated these companies as his alter egos, we
       cannot conclude on the record before us that the
       use of “DELTRONICS” by the first corporation
       inured to the benefit of opposer.


158 USPQ at 479, n.2.

     Although the issue in Daltronics (as in Gaylord, supra)

was priority, we deem the Board’s discussion of the “single


                                19
Cancellation No. 92032524


enterprise” issue to be relevant to the Section 1(a)

ownership issue involved in the present case.      As was the

case in Daltronics, in our case Mr. Matta could have merely

changed the name of the ’410 corporation from Premier

Entertainment, Inc. to Great Seats, Inc. prior to the

application filing date, leaving only the one corporation in

existence to be the owner of the mark and proper applicant.

No such name change occurred until July 7, 1997, well after

the application filing date.    Instead of merely changing the

name of the ‘410 corporation prior to the application filing

date, Mr. Matta formed the new ’660 corporation, an entity

separate and distinct from the earlier ’410 corporation.

There was no transfer of rights in the mark from the ’410

corporation to the new ’660 corporation prior to the

application filing date.6    It therefore was the ’410

corporation, not the ’660 corporation, that was the owner of

the mark as of the filing date.

     Even though Mr. Matta, like the individual principal in

Daltronics, may have treated both corporations as his alter


6
  As discussed above at footnote 1, there is of record a nunc pro
tunc assignment of the mark from the ’660 corporation to the ’410
corporation, said to be effective October 7, 1999. This
assignment, even assuming it is valid, does not aid respondent in
defending against petitioner’s Section 1(a) non-ownership claim.
The nunc pro tunc assignment is too late (with an effective date
after the April 21, 1997 application filing date). More
importantly, it transfers the mark in the wrong direction, i.e.,
from the ’660 corporation (which was not the owner of the mark on
the application filing date and thus had nothing to transfer) to
the ’410 corporation (the owner of the mark as of the application
filing date), rather than vice versa.


                               20
Cancellation No. 92032524


egos, the ’410 corporation’s use of the mark prior to the

filing date did not constitute use of the mark by the ’660

corporation, a separate and distinct legal entity.

Moreover, even though Mr. Matta may have always believed

that he had only one ticket brokerage company throughout,

i.e., the ’410 corporation which began in 1990 as Wholesale

Tickets, Inc., then changed its name to Premier

Entertainment, Inc., and then changed its name again (after

the application filing date) to Great Seats, Inc., the fact

remains that there were two separate corporations in legal

existence as of the application filing date, the ’410

corporation and the ’660 corporation.

     In view thereof, and because there was no transfer of

rights in the mark from the ’410 corporation to the

applicant ’660 corporation prior to the application filing

date, the owner of the mark and the proper applicant was the

’410 corporation, not the ’660 corporation.   Again, this is

not a case (such as Accu Personnel and Gaylord, upon which

respondent relies) where there existed only one legal entity

as of the filing date which was merely misidentified or

misnamed in the application, a curable defect.    Rather,

there were two legal entities in existence, and the

application was filed by the wrong one, a defect which

cannot be cured and which renders the application void ab

initio.



                             21
Cancellation No. 92032524


     For all of the reasons discussed above, we are not

persuaded by respondent’s contention that the applicant ’660

corporation and the separate ’410 corporation constituted a

single continuing commercial enterprise which was in fact

the owner of the mark as of the application filing date but

which was merely misidentified in the application.     As of

the application filing date, the owner of the mark and thus

the proper applicant for registration was the ’410

corporation, not the separate and distinct ’660 corporation.

These two separate entities were in existence on the filing

date, and the application simply was filed by the wrong one.

     Respondent’s second theory, discussed in its brief

somewhat in passing and presumably in the alternative to its

“single entity” theory, appears to based on the “related

company” provisions of Trademark Act Sections 5 and 45, 

15 U.S.C. §§1055

 and 1127.     Although respondent’s argument on

this point is far from clear, we presume that respondent is

contending that even if the ’410 corporation and the

applicant ’660 corporation were two separate entities as of

the April 21, 1997 application filing date, they nonetheless

were related companies, such that the ’410 corporation’s use

of the mark between the March 12, 1997 formation of the ’660

corporation and the April 21, 1997 application filing date

inured to the benefit of the applicant ’660 corporation,




                                22
Cancellation No. 92032524


thus entitling the ’660 corporation to file the application

as owner of the mark.       We are not persuaded.

     Trademark Act Section 5, in pertinent part, provides

that “[w]here a registered mark or a mark sought to be

registered is or may be used legitimately by related

companies, such use shall inure to the benefit of the

registrant or applicant for registration, and such use shall

not affect the validity of such mark or of its registration,

provided such mark is not used in such manner as to deceive

the public.”   Trademark Act Section 45 in turn defines

“related company” as follows:       “The term ‘related company’

means any person whose use of a mark is controlled by the

owner of the mark with respect to the nature and quality of

the goods or services on or in connection with which the

mark is used.”

     Pursuant to these provisions, to establish that the

’410 corporation was a “related company” with respect to the

applicant ’660 corporation, respondent must show that as of

the April 21, 1997 application filing date, the applicant

’660 corporation (which was formed on March 12, 1997)

controlled the ’410 corporation’s use of the mark with

respect to the nature and quality of the services rendered

under the mark.   We find that no such showing has been made.

     To be clear, the issue is not whether the ’410

corporation was a related company of Mr. Matta as an



                                  23
Cancellation No. 92032524


individual, or whether an application filed by Mr. Matta

based on use by the ’410 corporation might have been a valid

application under the “related company” doctrine.7      Rather,

the issue is whether the ’410 corporation was a related

company with respect to the applicant ’660 corporation.       The

’660 corporation, not Mr. Matta as an individual, was the

applicant for registration of the mark.

     Danny Matta was the president of both the ’410

corporation and the ’660 corporation.     Although the record

is far from clear on this point, it also appears that Mr.

Matta was the controlling (although apparently not the sole)

shareholder of both corporations.     Finally, the record shows

that the two corporations shared the same premises.

However, it is settled that these points of commonality

between two corporations do not suffice to make the

corporations related companies under Trademark Act Section

5.   See Beech Aircraft Corp. v. Lightning Aircraft Co. Inc.,

1 USPQ2d 1290

 (TTAB 1986); In re Raven Marine, Inc., 

217 USPQ 68

 (TTAB 1983); and L. & C. Hardtmuth, Inc. v. Fabrique

Suisse de Crayons Caran D’Ache S.A., 

123 USPQ 546

 (TTAB

1959).

     There is no evidence of any license or other

arrangement between the ’410 corporation and the applicant


7
  We make no findings and reach no conclusions on the question of
whether Mr. Matta might have been a proper applicant for
registration of the mark on April 21, 1997.


                               24
Cancellation No. 92032524


’660 corporation by which the latter controlled the former’s

use of the mark with respect to the nature and quality of

the services rendered under the mark.     The mere fact that

Mr. Matta may have controlled both corporations does not

suffice to establish that the applicant ’660 corporation,

itself, controlled the ’410 corporation’s use of the mark.

On this record, we find that any such control by Mr. Matta

over the ’410 corporation’s use of the mark was exercised by

Mr. Matta either in his capacity as principal executive

officer of the ’410 corporation itself, or in his individual

capacity as owner of both corporations.     There is no

evidence that Mr. Matta’s control over the ’410 corporation

was exercised in his capacity as an officer of the applicant

’660 corporation.   See Raven Marine, Inc., supra;8 In re

Pharmacia Inc., 

2 USPQ2d 1883

 (TTAB 1987)(mere fact that two

sister corporations (one of which was the applicant for

registration and the other of which was the user of the

mark) are both controlled by a third corporation does not

make the two sister corporations related companies under

Section 5; no evidence that the applicant corporation itself

8
  “Applicant’s proofs, in the Board’s view, are no more than an
assertion that this principal stockholder/executive superintends
the use of the ‘THE RAVEN FLEET’ marks by Transocean as principal
executive officer of Transocean (which would be in the normal
course of duty for such a functionary) or in his personal
capacity as owner of both corporations rather than as an officer
of and through the applicant. At the very least, such proofs are
highly ambiguous as to the control and supervision actually
exercised by applicant, the corporate owner of the marks.” In re
Raven Marine Inc., supra, 217 USPQ at 70.


                               25
Cancellation No. 92032524


controlled the user corporation’s use of the mark); see also

The Greyhound Corp. et al. v. Armour Life Insurance Co., 

214 USPQ 473

 (TTAB 1982).

     Thus, to the extent that respondent is arguing that the

applicant ’660 corporation and the ’410 corporation were

related companies under Section 5, such that use of the mark

by the ’410 corporation between the March 12, 1997 formation

of the ’660 corporation and the April 21, 1997 application

filing date inured to the ’660 corporation’s benefit, we

find that such argument is not supported by the record.    The

record is devoid of evidence sufficient to establish that

the ’660 corporation, itself, controlled the ’410

corporation’s use of the mark with respect to the nature and

quality of the services rendered under the mark.

     One other case upon which respondent relies requires

discussion, i.e., In re Hand, 

231 USPQ 487

 (TTAB 1986).

That case might be read to address both the “single entity”

theory and the “related company” theory asserted by

respondent herein.   Respondent cites Hand for the Board’s

statement therein (which itself was based on language in

Smith v. Coahoma Chemical Co. Inc., 

264 F.2d 916

, 

121 USPQ 215

 (CCPA 1959)) that “if facts were presented to show that

an individual ownership of a corporation was so complete

that the two legal entities ‘equitably constituted a single

entity,’ then sufficient control by the individual with use



                              26
Cancellation No. 92032524


by the corporation inuring to the individual’s benefit would

be found.”   In re Hand, supra, 231 USPQ at 488.      We find,

however, that this “equitably constituted a single entity”

language is dicta, and that it is inapposite to our case in

any event.

     Notwithstanding the Board’s passing reference to a

potential situation where an individual and a corporation

might be found to have “equitably constituted a single

entity,”9 the issue in Hand was a narrow one of ex parte

examination procedure involving an individual applicant’s

claim of ownership of the mark by virtue of use by a Section

5 “related company.”    The Board held that the examination

practice which allows or requires the examiner to accept

without further question the claim by a corporate applicant

that the mark is used by a wholly-owned related company must

also be applied in cases where the applicant is an

individual rather than a corporation.     The Board

specifically stated that it was not addressing the issue of

whether the individual applicant in fact was the owner of

the mark and thus the proper applicant for registration

under Section 1.   Rather, “[t]his decision only holds that,

9
  As to whether an applicant for registration who holds merely an
“equitable” right to the mark is eligible to file the application
as owner of the mark, see Smith International, Inc. v. Olin
Corp., 

209 USPQ 1033

 (TTAB 1981)(even though applicant might be
deemed to have “an equitable interest or right” in the mark by
virtue of a patent license agreement covering the goods,
applicant had no “legal interest or right of ownership” in the



                               27
Cancellation No. 92032524


in an ex parte prosecution context, the claim by applicant

of ownership of a mark through use by a wholly-owned related

company with no information present which is inconsistent

with said claim must be treated the same whether that

applicant is an individual, corporation or some other

entity.”    

Id., at n.2

.    That narrow examination issue is not

present in the inter partes case before us.

     Moreover, Hand is distinguishable because in our case

the applicant for registration was not Mr. Matta as an

individual, who may or may not have been eligible to claim

ownership of the mark under Section 5 due to his control

over the ’410 corporation.     Rather, the applicant for

registration was the ’660 corporation, a separate and

distinct legal entity which exercised no control over the

’410 corporation’s use of the mark.

     In summary, we find that the applicant ’660 corporation

and the ’410 corporation did not constitute a single entity

but rather were two distinct entities as of the application

filing date, and that the ’410 corporation’s use of the mark

therefore cannot be deemed to be use by the ’660 corporation

itself.    Cases like Accu Personnel, supra, cited by

respondent, therefore are distinguishable.      We also find

that the two corporations were not Section 5 related

companies due to the lack of control by the ’660 corporation


mark as of the application filing date, rendering the application


                                 28
Cancellation No. 92032524


over the ’410 corporation’s use of the mark, and that the

’410 corporation’s use therefore did not inure to the

benefit of the applicant ’660 corporation under Section 5.

We conclude that, under either theory posited by respondent,

the applicant ’660 corporation was not the owner of the mark

as of the application filing date, and that the application

it filed therefore is void ab initio under Section 1(a).



RESPONDENT’S UNCLEAN HANDS DEFENSE

        Respondent has asserted the affirmative equitable

defense of “unclean hands.”     This defense has to do with

what respondent deems to be petitioner’s alleged violations

of New York State statutes forbidding ticket scalping.

Respondent argues (brief at 22-23) that “[s]uch conduct is

directly related to Petitioner’s claim of priority of use in

this proceeding.     Because the claimed sales under the

alleged mark and the use of the claimed mark violates New

York law, Petitioner should not be permitted under the

doctrine of unclean hands to rely on unlawful use to

establish priority.”

        We need not and do not decide the merits of

respondent’s “unclean hands” defense.     Respondent itself

notes that the defense goes to the issue of petitioner’s

Section 2(d) priority claim.     As noted above (at footnote 3)


void.


                                29
Cancellation No. 92032524


petitioner has expressly withdrawn its Section 2(d) claim,

rendering the issue of priority moot in this case.10      In

view thereof, we give no consideration or effect to

respondent’s unclean hands affirmative defense.



CONCLUSION

     After careful consideration of all of the evidence of

record pertaining to petitioner’s Section 1(a) ownership

ground for cancellation, as well as the parties’ arguments

with respect thereto, we conclude that the application which

matured into the registration involved in this proceeding is

void ab initio because it was not filed by the owner of the

mark.   We therefore grant the petition to cancel on that

ground.   We do not reach petitioner’s pleaded fraud claim.

We reject respondent’s unclean hands affirmative defense.



     Decision:   The petition to cancel is granted.




10
  Also, as discussed supra, petitioner’s standing to petition to
cancel respondent’s registration is established by petitioner’s
ownership of an application which has been refused registration
based on respondent’s involved registration. Respondent’s
defense of unclean hands, even if it were to be established, does
not deprive petitioner of standing.



                               30