Luca McDermott Catena Gift Trust v. Fructuoso-Hobbs Sl

102 F.4th 1314

• Court: Court of Appeals for the Federal Circuit
• Decided: May 23, 2024
• Docket: 23-1383
• Status: Published

Opinion

Case: 23-1383 Document: 46 Page: 1 Filed: 05/23/2024

United States Court of Appeals for the Federal Circuit ______________________

LUCA MCDERMOTT CATENA GIFT TRUST, Appellant

v.

FRUCTUOSO-HOBBS SL, Appellee ______________________

2023-1383 ______________________

Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in No. 92079918.

-----------------------------------------------

HILLICK & HOBBS ESTATE, LLC, Appellee ______________________

2023-1385 ______________________ Case: 23-1383 Document: 46 Page: 2 Filed: 05/23/2024

Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in No. 92079919. ______________________

Decided: May 23, 2024 ______________________

KIT KNUDSEN, Commins, Knudsen & Chou, P.C., Oak- land, CA, argued for appellant. Also represented by DAVID HARALD COMMINS.

JUSTIN D. HEIN, Carle, Mackie, Power & Ross LLP, Santa Rosa, CA, argued for appellees. Also represented by JOHN BERNARD DAWSON, KRISTIN ANN MATTISKE- NICHOLLS. ______________________

Before LOURIE, REYNA, and CHEN, Circuit Judges. LOURIE, Circuit Judge. Luca McDermott Catena Gift Trust (“Appellant”) ap- peals from a consolidated decision of the U.S. Patent and Trademark Office Trademark Trial and Appeal Board (“the Board”) dismissing its petitions to cancel the registered marks ALVAREDOS-HOBBS and HILLICK AND HOBBS. Luca McDermott Catena Gift Trust v. Fructuoso-Hobbs SL, Nos. 92079918, 92079919 (T.T.A.B. Nov. 17, 2022), J.A. 1–11 (“Decision”). Because the Board correctly con- cluded that Appellant lacks a statutory right to seek can- cellation of those marks under 15 U.S.C. § 1064, we affirm. BACKGROUND Appellant and two related family trusts—the Dante McDermott Catena Gift Trust and the Nicola McDermott Catena Gift Trust—are each limited partners of California- based Paul Hobbs Winery, L.P. (“Hobbs Winery”). Deci- sion, J.A. 6. Collectively, the three family trusts own 21.6% Case: 23-1383 Document: 46 Page: 3 Filed: 05/23/2024

LUCA MCDERMOTT CATENA GIFT TRUST v. 3 FRUCTUOSO-HOBBS SL

of the partnership. Id. Hobbs Winery, in turn, owns the registered trademark PAUL HOBBS in International Class 33 for “Wines.” Id.; see Registration No. 3,498,652. Paul Hobbs is the name of the winemaker and another par- tial owner of Hobbs Winery. See J.A. 13. Paul Hobbs is also affiliated with Appellees Fructuoso- Hobbs SL (“Fructuoso-Hobbs”) and Hillick & Hobbs Estate, LLC (“Hillick & Hobbs”). See J.A. 23. Fructuoso-Hobbs is a Spanish winery and owner of the registered mark ALVAREDOS-HOBBS, see Registration No. 6,229,243, while Hillick & Hobbs is a New York winery and owner of the registered mark HILLICK AND HOBBS, see Registra- tion No. 6,390,072. Like Hobbs Winery’s mark, each of Ap- pellees’ marks is registered in International Class 33 for “Alcoholic beverages except beers; wines.” Decision, J.A. 4. Appellant, along with the two related family trusts, filed a consolidated petition to cancel each of Appellees’ marks under 15 U.S.C. § 1064 on the grounds of likelihood of confusion and fraud. See generally J.A. 12–39. The pe- tition alleged that Appellees’ use of ALVAREDOS-HOBBS and HILLICK AND HOBBS in connection with wine was likely to cause confusion in the marketplace with Hobbs Winery’s use of PAUL HOBBS for the same goods. Deci- sion, J.A. 4; see J.A. 15–17. The petition also alleged that each Appellee committed fraud by causing its attorney, the same attorney of record for Hobbs Winery’s PAUL HOBBS mark, to aver in a declaration that Appellees’ marks would not be likely to cause confusion with another mark. J.A. 18–19. In the family trusts’ view, that attorney “knew, or should have known,” that the Appellees’ marks were likely to confuse the public into believing that Hobbs Win- ery made or authorized Appellees’ use and registration of the HOBBS portion of their trademarks. Id. at 19. Appellees each moved to dismiss the petition, arguing that the family trusts were not entitled by statute to cancel the challenged marks because they were not the owners of Case: 23-1383 Document: 46 Page: 4 Filed: 05/23/2024

the allegedly infringed PAUL HOBBS mark. See id. at 54–55, 70–71. They also argued that the petition had failed to adequately allege both that the challenged marks were confusingly similar to the PAUL HOBBS mark and that Appellees had committed fraud. Id. at 62–65, 78–81. In a consolidated decision, the Board granted the mo- tions to dismiss. It concluded that, because the family trusts were mere minority owners of Hobbs Winery who did not use or otherwise possess rights in the PAUL HOBBS mark that could be asserted without approval from Hobbs Winery, they lacked a statutory entitlement to bring the cancellation action. Decision, J.A. 6 (citing Miller v. B & H Foods, Inc., 209 U.S.P.Q. 357, 360 (T.T.A.B. 1981)). The Board further concluded that the family trusts had failed to adequately plead likelihood of confusion and fraud. Id. at 7–10. As for likelihood of confusion, the Board held that the family trusts could not show that they had a “proprie- tary interest” in the PAUL HOBBS mark, which the Board deemed a necessary element to such a claim. Id. at 7–8 (citing Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 1320 (CCPA 1981) (explaining that, in an opposition proceeding, a petitioner must show it has “proprietary rights in the term [it] relies upon to demonstrate likelihood of confusion as to source, whether by ownership of a regis- tration, prior use of a technical ‘trademark,’ prior use in advertising, prior use as a trade name, or whatever other type of use may have developed a trade identity”)). 1 The Board also concluded that the family trusts had failed to allege fraud because “[n]otwithstanding that the marks at issue are used on identical goods, i.e., wines, the marks are

1 The statutory requirements to cancel registration of a mark under § 1064 are substantively equivalent to those required to oppose registration under § 1063. Corca- more, LLC v. SFM, LLC, 978 F.3d 1298, 1306 n.2 (Fed. Cir. 2020). Case: 23-1383 Document: 46 Page: 5 Filed: 05/23/2024

LUCA MCDERMOTT CATENA GIFT TRUST v. 5 FRUCTUOSO-HOBBS SL

not substantially identical.” Id. at 10. The Board denied the family trusts leave to file amended cancellation peti- tions, concluding that any amendment would be futile be- cause there was “no path to a legally sufficient allegation of entitlement to a cause of action” given the family trusts’ mere minority ownership of Hobbs Winery. Id. at 11. Appellant, but not the Dante McDermott Catena Gift Trust or Nicola McDermott Catena Gift Trust, appeals. DISCUSSION I We begin our discussion with a point of clarity regard- ing the parties to this appeal, as it will impact the framing, though not the outcome, of our analysis. As alluded to above, this court has treated this case, since its inception, as having a singular appellant: Luca McDermott Catena Gift Trust. However, the Opening and Reply Briefs con- sistently imply that all three family trusts that petitioned for cancellation have appealed from the Board’s decision. See Appellant’s Br. at 5 (“Petitioners appealed . . . .” (em- phasis added)); Reply Br. at 5 (“Petitioners’ Article III standing firmly rests on their allegations that . . . .” (em- phases added)). But, as Appellees recognized in their re- sponsive briefing, “[i]t appears only one of the Petitioners, the Luca McDermott Catena Gift Trust, is appealing the Board’s ruling.” Appellees’ Br. at 2 n.2. For the following reasons, we agree with Appellees that there is only one ap- pellant in this case. Upon the Board’s consolidated decision, two Notices of Appeal were filed, one in each of Cancellation No. 92079918 (against Fructuoso-Hobbs) and Cancellation No. 92079919 (against Hillick & Hobbs). The body of each of those filings stated: “Notice is hereby given that Luca McDermott Catena Gift Trust, Opposer in the above- named cancellation proceeding, hereby appeals[.]” See Cer- tified List, No. 23-1383, ECF No. 10, at 21–22, 25–26. The Case: 23-1383 Document: 46 Page: 6 Filed: 05/23/2024

caption of each notice, however, included the names of all three family trusts (identified collectively as the “McDer- mott Catena Family Trusts”), and the signature blocks identified the signing attorney as “attorney for Appellants.” Id. (emphasis added). Pursuant to Federal Rule of Appellate Procedure 3(b)(1), when two or more parties are entitled to appeal from a decision, a joint notice of appeal is permitted, allow- ing the parties to proceed as a single appellant. The joint notice of appeal must “specify the . . . parties taking the ap- peal by naming each one in the caption or body of the no- tice.” Fed. R. App. P. 3(c)(1)(A). Upon receipt of a notice of appeal, the clerk of court is obligated, under Federal Rule of Appellate Procedure 12(a), to docket the appeal and “identify the appellant.” Fed. R. App. P. 12(a). Our court implements that requirement, in part, via Federal Circuit Rule 12(b), which provides that the clerk of court “must provide the parties with the official caption for the case at the time of docketing.” Once that caption is provided, “[a]ny objection to the official caption must be made promptly.” Fed. Cir. R. 12(b). Upon receipt of each of the Notices of Appeal, the clerk of this court docketed two appeals and provided a caption for each that listed Luca McDermott Catena Gift Trust as the singular appellant. See Notice of Docketing, No. 23-1383, ECF No. 1 at 4; Notice of Docketing, No. 23-1385, ECF No. 1 at 4. Luca McDermott Catena Gift Trust was again listed as the singular appellant in the modified caption that was assigned when those two appeals were consolidated. See Order, No. 23-1383, ECF No. 8. No objection to those captions, prompt or otherwise, was made by either party. Although the provisions of Federal Rules of Appellate Procedure are to be liberally construed, see Torres v. Oak- land Scavenger Co., 487 U.S. 312, 316 (1988) (citing Foman v. Davis, 371 U.S. 178 (1962)), such that the Notices of Case: 23-1383 Document: 46 Page: 7 Filed: 05/23/2024

LUCA MCDERMOTT CATENA GIFT TRUST v. 7 FRUCTUOSO-HOBBS SL

Appeal filed in this case could be read as joint notices from all three family trusts, Appellant was on notice at least as early as the filing of Appellees’ Response Brief that it ap- peared as if only the Luca McDermott Catena Gift Trust had appealed. Accordingly, despite any ambiguity in the Notices of Appeal, the window to modify the official caption or clarify the scope of the appeal has closed. We therefore proceed to the legal issues presented in this case as they pertain to the singular appellant—Luca McDermott Ca- tena Gift Trust—which, as we have mentioned, affects only the framing, and not the outcome, of our analysis. II Before we can determine whether or not Appellant has a statutory right of action to cancel the registrations of Ap- pellees’ marks, “[w]e have an obligation to assure ourselves of [Appellant’s] standing under Article III” of the Constitu- tion. DaimlerChrysler Corp. v. Cuno, 547 U.S. 332, 340 (2006) (internal quotation marks and citation omitted). “[A]lthough Article III standing is not necessarily a re- quirement to appear before an administrative agency, once a party seeks review in a federal court, ‘the constitutional requirement that it have standing kicks in.’” Consumer Watchdog v. Wis. Alumni Rsch. Found., 753 F.3d 1258, 1261 (Fed. Cir. 2014) (quoting Sierra Club v. EPA, 292 F.3d 895, 899 (D.C. Cir. 2002)); see generally Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168 (Fed. Cir. 2017). As the party seeking judicial review of the Board’s decision, Ap- pellant has the burden to establish that it has constitu- tional standing. Phigenix, 845 F.3d at 1171. To establish constitutional standing, Appellant “must show (i) that [it] suffered an injury in fact that is concrete, particularized, and actual or imminent; (ii) that the injury was likely caused by [Appellees]; and (iii) that the injury would likely be redressed by judicial relief.” TransUnion LLC v. Ramirez, 594 U.S. 413, 423 (2021) (citing Lujan v. Defs. of Wildlife, 504 U.S. 555, 560–61 (1992)). Appellant Case: 23-1383 Document: 46 Page: 8 Filed: 05/23/2024

has alleged that, as an owner of Hobbs Winery, it has suf- fered (or will suffer) monetary harm as a result of the reg- istration of Appellees’ marks. See Appellant’s Reply Br. at 6. In its view, Appellees’ use of their marks diminishes the value of Hobbs Winery’s PAUL HOBBS mark, which in turn diminishes the value of Appellant’s ownership inter- est in Hobbs Winery. Appellees disagree, arguing that Ap- pellant’s alleged ownership interest in Hobbs Winery is insufficiently “direct” to satisfy the injury-in-fact element for constitutional standing. A. Injury-in-Fact We have little trouble concluding that Appellant’s al- leged injury—the diminishment in value of its investment in Hobbs Winery—satisfies the injury-in-fact requirement for constitutional standing. Such a monetary injury is un- doubtedly “concrete.” Indeed, the Supreme Court has long recognized that “traditional tangible harms,” such as mon- etary harms, “readily qualify as concrete injuries under Ar- ticle III.” TransUnion LLC, 594 U.S. at 425; see Spokeo, Inc. v. Robins, 578 U.S. 330, 340 (2016). To be sure, we observe that the amount of Appellant’s individual ownership interest in Hobbs Winery is un- known. Appellant’s allegations of ownership of Hobbs Win- ery refer only to the collective 21.6% ownership of the original three petitioners. See Appellant’s Reply Br. at 5 (“Petitioners’ Article III standing firmly rests on their alle- gations that . . . they have a substantial stake (21.6%) in [Hobbs Winery.]”). But we see no allegations of what por- tion, if any, of that ownership is attributable to Appellant. That is notable because, as the only party to appeal from the Board’s decision, Appellant must establish that it has individually suffered an injury-in-fact, which on its theory of Article III standing, would require it to have a non-zero ownership interest in Hobbs Winery. Although unknown, we are nevertheless satisfied from the pleadings that Ap- pellant has made that showing. See Appellant’s Br. at 3 Case: 23-1383 Document: 46 Page: 9 Filed: 05/23/2024

LUCA MCDERMOTT CATENA GIFT TRUST v. 9 FRUCTUOSO-HOBBS SL

(“The Catena family has been a substantial owner of [Hobbs Winery] for decades, and more recently transferred that singular interest to their children, who hold it through the three McDermott-Catena Family Trusts.”). Accord- ingly, Appellant has alleged a concrete monetary harm. See Czyzewski v. Jevic Holding Corp., 580 U.S. 451, 464 (2017) (“For standing purposes, a loss of even a small amount of money is ordinarily an ‘injury.’” (citing McGowan v. Maryland, 366 U.S. 420, 430–31 (1961))). Moreover, the alleged injury is particularized because it “affect[s] the plaintiff in a personal and individual way.” Lujan, 504 U.S. at 560 n.1; see Pub. Citizen, Inc. v. Nat’l Highway Traffic Safety Admin., 489 F.3d 1279, 1292–93 (D.C. Cir. 2007) (collecting cases). The diminishment in value of an ownership interest in Hobbs Winery is not an undifferentiated or generalized grievance suffered by the public at large, but rather one personal to Appellant and any other partner or owner of Hobbs Winery. See Spokeo, Inc., 578 U.S. at 339–40; United States v. Richardson, 418 U.S. 166, 176–77 (1974). Finally, the alleged injury is actual or imminent. It is not merely “conjectural or hypothetical,” Lujan, 504 U.S. at 560 (internal quotation marks and citation omitted), be- cause it is based on Appellant’s allegations that the regis- trations of Appellees’ marks actually harm the value of its ownership interest. Appellant’s Reply Br. at 5. That is not the type of injury we have previously found to be hypothet- ical. See Brooklyn Brewery Corp. v. Brooklyn Brew Shop, 17 F.4th 129, 139 (Fed. Cir. 2021) (concluding that a “pos- sible injury” based on the use of a challenged mark in con- nection with sanitizing preparations was hypothetical where the appellant had no plan or interest in expanding its business to encompass sanitizing preparations). Appellant has therefore adequately established an in- jury-in-fact. To the extent that Appellees contend owners or shareholders of an organization cannot satisfy the Case: 23-1383 Document: 46 Page: 10 Filed: 05/23/2024

constitutional requirement of an injury-in-fact based on in- juries suffered by the organization itself, the Supreme Court has held the opposite. See Collins v. Yellen, 141 S. Ct 1761, 1779 (2021) (concluding that “pocketbook injur[ies]” suffered by shareholders of Fannie Mae and Freddie Mac when their interests were transferred to Treasury were “prototypical form[s] of injury in fact.”). B. Causation Appellees’ challenge to the “directness” of Appellant’s injury is more appropriately considered in connection with the second element of Article III standing—causation. To satisfy that requirement, Appellant must show that its purported injury, i.e., the diminishment in value of its own- ership interest in Hobbs Winery, is “fairly traceable” to Ap- pellees’ (allegedly unlawful) registration of their marks. Dep’t of Educ. v. Brown, 600 U.S. 551, 564 (2023). We con- clude that it is. Only “a causal connection between the injury and the conduct complained of” is required. Lujan, 504 U.S. at 560. Accordingly, the inquiry is specific to the alleged injury and the alleged unlawful conduct. Here, that requirement is satisfied. The allegedly unlawful registrations of Appel- lees’ marks cause a diminishment of value in Appellant’s Hobbs Winery ownership interest. The mere fact that an- other party, Hobbs Winery, actually owns the trademark (and may suffer a more “direct” injury than Appellant) does not mean that Appellant’s injury is not fairly traceable to the challenged trademark registrations. See Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 134 n.6 (2014) (“Proximate causation is not a requirement of Article III standing, which requires only that the plaintiff’s injury be fairly traceable to the defendant’s conduct.”). C. Redressability Finally, there can be no doubt that Appellant’s injury would be redressed by a favorable decision. If Appellant Case: 23-1383 Document: 46 Page: 11 Filed: 05/23/2024

LUCA MCDERMOTT CATENA GIFT TRUST v. 11 FRUCTUOSO-HOBBS SL

succeeded in its challenge, this court has the power to en- force the cancellation of Appellees’ marks. Such cancella- tions would eliminate the complained-of injury to Appellant’s ownership interest in Hobbs Winery. See Vt. Agency of Nat. Res. v. U.S. ex rel. Stevens, 529 U.S. 765, 771 (2000) (to demonstrate redressability, Appellant must show a “substantial likelihood that the requested relief will remedy the alleged injury in fact” (internal quotation marks and citation omitted)). We are therefore satisfied that Appellant has met its burden as to Article III standing in this case and can there- fore proceed to the merits. 2 III This case requires us to resolve whether Appellant falls within the class of plaintiffs who Congress has authorized to seek cancellation of Appellees’ trademark registrations under 15 U.S.C. § 1064. The Board concluded that it did not, and, on de novo review, we agree. See Corcamore, 978 F.3d at 1303 (providing that whether or not a party is

2 We observe that this case raises a separate ques- tion whether Appellant has third-party standing to chal- lenge Appellees’ marks based only on its ownership interest in Hobbs Winery, the actual owner of the allegedly infringed PAUL HOBBS mark. See, e.g., Kowalski v. Tes- mer, 543 U.S. 125 (2004) (explaining the additional show- ings required of a party seeking to assert the legal rights of another). Appellees, however, have not challenged the pro- priety of Appellant’s appeal on that basis, so any such ar- gument is waived. Brooklyn Brewery, 17 F.4th at 140 (citing June Med. Servs. L. L. C. v. Russo, 591 U.S. 299, 316–17 (2020) (explaining that because third-party stand- ing is a prudential limit on federal jurisdiction separate from Article III, it can be forfeited or waived)). Case: 23-1383 Document: 46 Page: 12 Filed: 05/23/2024

entitled to bring a statutory cause of action is a legal ques- tion reviewed de novo). To answer that question, we apply the analytical framework set forth by the Supreme Court in Lexmark, which provides two requirements to establish an entitle- ment to a statutory cause of action. 572 U.S. at 129; see Corcamore, 978 F.3d at 1305 (holding that Lexmark con- trols the statutory cause of action analysis under § 1064). First, Appellant must show that its interests fall within the “zone of interests” that Congress intended to protect in en- acting the relevant statute. Lexmark, 572 U.S. at 129. Sec- ond, Appellant must show that its injuries are proximately caused by Appellees’ alleged violation of that statute. Id. at 132. In other words, Appellant must establish that its harm is not “too remote” from Appellees’ alleged unlawful conduct. Id. at 133. As we observed in Corcamore, the two-part analysis of Lexmark has “no meaningful, substantial difference” from the test that this court has traditionally applied in proceed- ings arising under § 1064. 978 F.3d at 1304. That test asks whether a trademark challenger has demonstrated “a real interest in cancelling the [registered trademarks at issue] and a reasonable belief that the [registered trademarks] are causing it damage.” Id. (alterations in original) (quot- ing Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 1274 (Fed. Cir. 2014)). Each of the zone-of- interests test and real-interests test serves the purpose of excluding only the claims of “mere intermeddlers or . . . meddlesome parties acting as self-appointed guardi- ans of the purity of the Register.” Id. at 1305 (alteration in original) (quoting Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 1325–26 (Fed. Cir. 1983)). A. Zone of Interests We begin with the zone-of-interests, or the “real inter- ests,” requirement. Where a petitioner’s grounds for can- cellation are rooted in its allegations that the challenged Case: 23-1383 Document: 46 Page: 13 Filed: 05/23/2024

LUCA MCDERMOTT CATENA GIFT TRUST v. 13 FRUCTUOSO-HOBBS SL

marks are confusingly similar to the allegedly infringed mark, we have held that the petitioner can satisfy that re- quirement if it has a “legitimate commercial interest” in the allegedly infringed mark. Empresa Cubana, 753 F.3d at 1275 (citing Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1029 (CCPA 1982)); Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 1374 (Fed. Cir. 2020); see Meenaxi Enter., Inc. v. Coca-Cola Co., 38 F.4th 1067, 1072 (Fed. Cir. 2022); Cunningham v. Laser Golf Corp., 222 F.3d 943, 945 (Fed. Cir. 2000) (“A belief in likely damage can be shown by establishing a direct com- mercial interest.”). It is undisputed here that Appellant neither uses nor possesses an individual ownership right in the allegedly in- fringed PAUL HOBBS mark. See Oral Arg. at 3:48–3:58, available at https://oralarguments.cafc.uscourts.gov/de- fault.aspx?fl=23-1383_04012024.mp3 (counsel for Appel- lant acknowledging that it does not use the mark). That is, Appellant does not personally own or conduct any business under the PAUL HOBBS mark that is or would be nega- tively impacted in sales or reputation if its allegations were proved. Indeed, Appellant admits that it seeks to cancel Appellees’ marks “on behalf of [Hobbs Winery]’s interests.” Appellant’s Br. at 6; id. at 17 (“This effort – on behalf of [Hobbs Winery] – is solely to police unauthorized third-par- ties’ uses of HOBBS[.]”); id. at 18 (“Petitioners are . . . pro- ceeding against third parties on [Hobbs Winery’s] behalf.”). Under those circumstances, in which Appellant’s only basis to challenge Appellees’ marks is its minority ownership in- terest in the owner of the allegedly infringed mark, and not its own commercial activity allegedly affected by Appellees’ marks, we conclude that it is not within the zone of inter- ests entitled to seek cancellation of those marks under § 1064. That conclusion is supported by the Supreme Court’s guidance that Congress’s intent in enacting the Lanham Act was to provide a cause of action to persons engaged in Case: 23-1383 Document: 46 Page: 14 Filed: 05/23/2024

commerce, not consumers, as well as our case law proscrib- ing “mere intermeddlers” from seeking cancellation of chal- lenged marks. See POM Wonderful LLC v. Coca-Cola Co., 573 U.S. 102, 107 (2014) (“Though in the end consumers also benefit from the Act’s proper enforcement, the cause of action is for competitors, not consumers.”); Corcamore, 978 F.3d at 1305; see also Oral Arg. at 25:29–25:34 (counsel for Appellant agreeing that a “commercial interest is re- quired, under Lexmark, to fall within the zone of interests” of § 1064). While Appellant, who, after all, owns up to 21.6% of Hobbs Winery, is not properly called an “inter- meddler,” it indeed lacks the direct commercial interest in the registration at issue that the trademark laws contem- plate as providing a basis for a cause of action. To be sure, Appellant is correct that an entitlement to cancel registration under § 1064 is not limited to those with a direct proprietary interest in a trademark. Australian Therapeutic, 965 F.3d at 1374 (“Our decision in Otto Roth does not require a party to establish proprietary rights in a mark in order to meet the statutory requirements to chal- lenge a mark.”). We have held, for example, that a peti- tioner whose trademark application has been denied based on a challenged mark has a right to seek cancellation of that mark. Id.; Empresa Cubana, 753 F.3d at 1274–75. In such a case, by filing a trademark application, the peti- tioner has attested to using a mark (or having an intent to use the mark) in commerce. See 15 U.S.C. § 1051(a)–(b). Those petitioners, then, have a commercial interest in op- posing or cancelling the registration of a mark that has pre- vented the registration of their own mark. Indeed, that was the case in Australian Therapeutic and Empresa Cubana, where, despite not owning a registered U.S. trade- mark, the petitioners were engaged in the sales and adver- tising of goods that were adversely affected by the challenged marks. See Australian Therapeutic, 965 F.3d at 1375–76; Empresa Cubana, 753 F.3d at 1271. Case: 23-1383 Document: 46 Page: 15 Filed: 05/23/2024

LUCA MCDERMOTT CATENA GIFT TRUST v. 15 FRUCTUOSO-HOBBS SL

We have also held, albeit pre-Lexmark, that a trade as- sociation, as “the watchdog for the industry,” may have a right to oppose a mark’s registration where its individual members each have a commercial interest in cancelling the accused mark. See Jewelers Vigilance Comm., Inc. v. Ul- lenberg Corp., 823 F.2d 490, 493 (Fed. Cir. 1987). That is, in Jewelers, we permitted an organization to oppose the registration of a mark on behalf of its individual members because it established, among other things, that those in- dividual members each had a commercial interest in the outcome of the proceeding. Id. at 494–95. That case is dis- tinguishable from the concerns raised here, where a single partner, with no commercial activity of its own, seeks to cancel marks based only on its minority interest in the trademark owner. Because Appellant has failed to allege any individual and legitimate commercial interest that is adversely af- fected by Appellees’ use of their registered trademarks, its claims do not fall within the zone of interests of § 1064. B. Proximate Causation Even if Appellant’s claims fell within the zone of inter- ests of § 1064, it cannot satisfy the proximate causation re- quirement. Acknowledging that the outer bounds of the proximate- cause requirement are “not easy to define,” the Supreme Court explained in Lexmark that a harm will be “too re- mote” from the alleged unlawful conduct if it “is purely de- rivative of misfortunes visited upon a third person by the defendant’s acts.” 572 U.S. at 133 (internal quotation marks and citation omitted). The Court explained that, “while a competitor who is forced out of business by a de- fendant’s [unlawful conduct] generally will be able to sue for its losses, the same is not true of the competitor’s land- lord, its electric company, and other commercial parties who suffer merely as a result of the competitor’s inability to meet its financial obligations.” Id. at 134 (cleaned up). Case: 23-1383 Document: 46 Page: 16 Filed: 05/23/2024

That is essentially the case here. The alleged dimin- ishment in value of Appellant’s ownership interest in Hobbs Winery due to Appellees’ use of their marks is suf- fered only as a consequence of an injury suffered by Hobbs Winery itself. That is, absent injury to Hobbs Winery’s PAUL HOBBS mark, there can be no injury to Appellant. Thus, because Appellant’s alleged injury is merely deriva- tive of any injury suffered by Hobbs Winery, it is too remote to provide Appellant with a cause of action under § 1064. CONCLUSION For the foregoing reasons, we hold that Appellant lacks entitlement to a statutory cause of action under § 1064. We have considered Appellant’s remaining arguments and find them unpersuasive. The Board’s dismissal of Appellant’s cancellation petition is affirmed. AFFIRMED