Arredondo v. Arredondo

460 F. App'x 59

• Court: Court of Appeals for the Second Circuit
• Decided: February 23, 2012
• Docket: 10-4930-cv
• Status: Unpublished

Opinion

SUMMARY ORDER

Plaintiff-Appellant, Carlos A. Arredondo (“Carlos”), appeals the District Court’s judgment in favor of the Defendants-Ap-pellees, including his brother, Caesar A. Arredondo (“Caesar”). After a bench trial, the District Court decided that the entity partially owned by Carlos — Arre-dondo Properties Limited Partnership (“APLP”) — did not own the trademark at issue. We assume the parties’ familiarity with the underlying facts, the procedural history of the case, and the issues on appeal.

On an appeal from a bench trial, we review a district court’s conclusions of law de novo and the findings of fact for clear error. Mobil Shipping & Transp. Co. v. Wonsild Liquid Carriers Ltd., 190 F.3d 64, 67 (2d Cir.1999). A district court’s factual “finding is clearly erroneous only if ‘although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed.’ ” Id. at 67-68 (quoting Anderson v. Bessemer City, 470 U.S. 564, 574, 105 S.Ct. 1504, 84 L.Ed.2d 518 (1985)).

In 1999, Carlos sold his interests in Ar-redondo & Co., LLC (“A & Co”) for $100,000. That sale covered all “good will” and “trademarks” owned at that time and in the future. The agreement also re leased Caesar and A & Co “from any claim, known or unknown, that [Carlos] may have against either or both of them arising from his ownership of an interest in [A & Co] or any actions relating to the operation of [A & Co]”

The record does not identify any other trademarks besides the trademark at issue that could have been included in the sale. Moreover, Carlos admitted in his testimony that, at the time of the sale, he knew that the trademark at issue here had been purchased by A & Co before Carlos sold his interest in A & Co to Caesar. Accordingly, Carlos was aware that he was selling his interest in the trademark.

Carlos argues that the trademark was owned by APLP. This is incorrect. It has long been settled that “first use” determines who owns a trademark. ITC Ltd. v. Punchgini, Inc., 482 F.3d 135, 147 (2d Cir.2007) (citing Defiance Button Mach. Co. v. C & C Metal Prods. Corp., 759 F.2d 1053, 1059 (2d Cir.1985)); accord Am. Express Co. v. Goetz, 515 F.3d 156, 161 (2d Cir.2008) (per curiam) (quoting La Societe Anonyme des Parfums le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1271 (2d Cir.1974)). APLP was nothing more than a passive investor that (along with several other entities owned, controlled, and operated by Caesar and Carlos) invested (in some form or another) in the storage business that used the trademark. APLP did not use the trademark and was certainly not the first to use it. Passive investment is insufficient to establish APLP’s ownership of a trademark.

We have considered all of Plaintiff-Appellant’s additional arguments and find them to be without merit. Accordingly, the judgment of the District Court is AFFIRMED.