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Estate of Coll-Monge v. Inner Peace Movement

The D.C. Circuit affirmed in part, reversed in part, and remanded a decision of the district court granting summary judgment of noninfringement to the appellees in this trademark suit. The appellants, a deceased's estate and two for-profit corporations owned by the testator, sued the appellees, two nonprofit corporations that the deceased founded, for infringement of five trademarks. The district court found that the appellees were the sole users of the marks from the beginning and the sole owners of the marks and that the deceased registered the marks on their behalf, and that the "related companies" doctrine was inapplicable to nonprofit corporations. The court held that the district court erred in its related companies analysis and that there remained disputed issues of fact regarding both the doctrine's applicability in the case and the capacity in which the deceased registered the marks. The court upheld the district court's assessment against the estate of the cost of mailing "remedial notices" pursuant to a temporary restraining order issued before entering summary judgment.

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Argued April 11, 2008

Before: HENDERSON, TATEL and KAVANAUGH, Circuit Judges.

The appellants, the Estate of Coll-Monge and two for-profit corporations owned by testator Francisco Coll, (collectively the Estate), brought this action for trademark infringement and related claims against two non-profit corporations that Coll founded-Inner Peace Movement, Inc. (IPM) and Peace Community Church (PCC) (jointly the Non-Profits). The Estate alleged that it is the sole registered owner of five marks Coll registered with the United States Patent and Trademark Office (USPTO). The Non-Profits-which use the marks-countered that they are the sole owners and that, when Coll registered the marks, he did so in his representative capacity on their behalf. The district court granted summary judgment to the Non-Profits on the trademark claims, concluding that on the undisputed facts they, as the sole users of the marks from the beginning, are also the sole owners and that Coll registered the marks on their behalf. In reaching its decision, the court held the “related companies” doctrine-under which registration of a mark used by a related company inures to the benefit of the owner- inapplicable to a non-profit corporation. We conclude that the district court erred in its “related companies” holding and that there remain disputed issues of fact regarding both the doctrine’s applicability here and the capacity in which Coll registered the marks with the USPTO. Accordingly, we reverse the district court’s summary judgment on the Estate’s trademark claims and affirm the denial of the Estates’s partial summary judgment motion. On the other hand, we affirm the district court’s assessment against the Estate of the cost of mailing “remedial notices” pursuant to a temporary restraining order it issued before entering summary judgment.

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