Central Garden & Pet Company has had its Zilla trademark for pet treats cancelled.
In a battle that calls to mind the monster Godzilla fighting the Japanese military through the streets of Tokyo, there were plenty of attacks happening here.
First, Central attacked Doskocil Manufacturing Company, Inc.’s application for Petzilla. Doskocil then countered by seeking cancellation of Central’s two Zilla registrations. Ultimately Central, the initial attacker, found itself having to defend itself against Doskocil’s counter claims and it turned out to be a losing battle.
Doskocil, who had already registered a trademark on Dogzilla, argued that that one of the Zilla marks for terrariums was likely to cause confusion with its own previously registered Dogzilla mark, and that the other Zilla mark for pet treats was improperly assigned before it was registered violating trademark law. The Trademark Trials and Appeals Board found it unnecessary to rule on the claim of confusion, but addressed the issue of the improper transfer.
The application for the Zilla mark for use on pet treats was actually filed by All-Glass Aquarium Co. a subsidiary of a subsidiary of Central. All-Glass filed an intent-to-use application, but before they actually filed an allegation of use of the Zilla mark, they assigned the mark to Central. The board agreed with Doskocil that the assignment was improper and invalidated the registration.
Assignment of a trademark after the intent-to-use application, but before filing the allegation of use can only be made to a successor of the business. The board was not persuaded by Central’s argument that all the subsidiaries were closely related so no confusion arose in the use of Zilla mark. The board reasoned that the corporate structure was such that each subsidiary counts as its own “person,” and Central and its subsidiaries could not claim to be one entity just when it best suited their needs. Because they were not a single entity and because Central was not a successor, the transfer was invalid under the law. The board then went on to say that the only proper remedy was to have the registration cancelled and ordered it done.
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