I recently came across an interesting legal case involving joint ownership and trademark registration. Here is an overview of the case and its implications.
Yogi Bhajan was an Indian-born yoga and spiritual teacher who introduced his version of Kundalini yoga to the West in the late 1960s. When he died in 2004, he left behind his widow, Bibiji Inderjit Kaur Puri, along with the Yogi Bhajan Administrative Trust (YBAT). Puri and YBAT have been battling over ownership and control of Bhajan’s estate ever since.
The assets of the estate include YOGI TEA, a line of teas sold by a third party, the East West Tea Company. Puri and YBAT each have a 50% undivided ownership of the intellectual property rights for YOGI TEA.
What Brought About the Court Case?
The recent court battle arose when Puri — acting by herself — attempted to register the trademark YOGI for a line of bath and beauty products. YBAT opposed the attempt, won before the Trademark Trial and Appeal Board (TTAB) and won the case in the Federal Circuit Court of Appeals.
Why? The Trademark Trial and Appeal Board (TTAB) found that:
Ms. Puri had a pre-existing interest in the YOGI mark shared with opposer, YBAT, and therefore did not have a bona fide intent to use the mark in commerce solely in her individual capacity at the time she filed her application because, at such time, Ms. Puri was aware that both Opposer and [herself] each had an undivided and equal interest in the applied-for mark for the identified goods. Accordingly, we find that the involved application is void ab initio.
The Federal Circuit Court of Appeals found no error in the decision of the TTAB that was supported by substantial evidence. Puri v Yogi Bhajan Administrative Trust, Case # 2020-2152 (US Court of Appeals for the Fed. Cir., May 10, 2021)
Why Did the TTAB and the Federal Circuit Court Decide in YBAT’s Favor?
This decision is based on the legal rule that all owners of a trademark must give their consent if a use-based trademark application is filed. Since both Puri and YBAT are owners of the trademark, consent for a trademark application must be given by both.
This has implications for other types of intellectual property, as well, not just trademarks. Simply put, Joint owners of intellectual property should not act alone. Whether it is a trademark, copyright, patent, or trade secret, joint owners should agree when it comes to any action taken in regards to their intellectual property assets. Only a sole owner of intellectual property can act alone.
If you share intellectual property rights with another entity, this is vital to remember. Otherwise, you could find yourself on the wrong side of a legal decision, having spent a lot of time and money for nothing.