Los Angeles Intellectual Property Trademark Attorney Blog
A trademark cancellation proceeding – which is similar to a lawsuit – was filed at the Trademark Trial and Appeal Board (TTAB) by John Lennon’s widow, Yoko Ono, against Lennon Murphy, the registrant of the “Lennon” trademark. Murphy, a musician, filed an “intent to use” trademark application with the United States Patent and Trademark Office (USPTO) for the trademark “LENNON” on April 11, 2001. The trademark application was published on October 29, 2002 and was registered on January 21, 2003.
Ono alleges that she is the owner of two registered trademarks for “John Lennon” (although she fails to disclose that they are for a design – John’s signature pictured to the left – and not a word mark) for use with “paper products, tote bags and address books” and “eyewear and eyewear accessories.” Murphy’s registration, on the other hand, is for the use of the “Lennon” trademark on musical sound recordings and entertainment services by a musical group.
Ono alleges that the use of the “Lennon” trademark will dilute, either by blurring or tarnishment, the power of her John Lennon trademarks. Ono further alleges that Murphy committed fraud on the USPTO in her application by not disclosing that “Lennon” was her first name and that Murphy lied to the USPTO when she stated that she began using the trademark in 1997, at the age of 15. Click To Read Ono’s Filing.
PRACTICE NOTE: It seems that Ono may run into a laches issue because she waited over five years from the date of publication to file the cancellation proceeding. See Turner v. Hops Grill & Bar, Inc., 52 U.S.P.Q.2d 1310 (T.T.A.B. 1999) (finding laches in cancellation proceeding with five-year delay between publication for opposition and filing of petition to cancel); National Cable Television Association Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 1580, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991) (holding that laches defense is applicable to TTAB proceedings and the time begins to run from the date of publication of the trademark for opposition). According to Murphy’s website, her manager – who ironically is the son of Ono’s attorney – approached Ono in 2000 to clear the use of the “Lennon” trademark and received her blessing. An undue delay in asserting your rights may prevent recovery under the equitable defense of laches.