"World Trade Center" Trademark Denial Appealed

A non-profit organization that owns the trademark "World Trade Center" is appealing a US Patent and Trademark Office (USPTO) ruling that it can't register the mark for selling clothing.

According to The Record of Bergen County, New Jersey, the Port Authority of New York and New Jersey sold the "World Trade Center" name to the non-profit in 1986 -- for $10.

The non-profit, The World Trade Centers Association, was run by a former Port Authority executive for 24 years. The Association has earned millions of dollars in licensing revenue – including from the Port Authority itself.

The former executive, Guy Tozzoli, reportedly earned $626,000 as president of the Association in 2011 – for about an hour per week of work.

Sweetheart Deal?

World Trade Center BuildingThe New York Attorney General, Eric Schneiderman, launched an investigation in 2013 into how the Association got such a "sweetheart deal."

Recently, the Association reportedly requested free office space at the new One World Trade Center skyscraper (worth more than half a million dollars per year) in exchange for allowing the Port Authority to use the mark on merchandise.

The Association has registered trademarks in more than 100 countries. It charges $200,000 for the initial use of the WTC name on a building, plus $10,000 per year as a membership fee.

The Port Authority has paid the $10,000 fee for One World Trade Center, according to public records. The Association earned $6.9 million in licensing revenue in 2011.

The Association enforces its trademarks via litigation. In August, it sued World Trade Illinois, of Oarkbrook, Illinois, for using its mark without paying a licensing fee.

WTC Booties?

The Association also owns registered trademarks for the terms "World Trade Center" and "WTC" in various fields of use.

For example, one US WTC mark owned by the Association is for:

Apparel for dancers, namely, t-shirts, sweatshirts, pants, leggings, shorts and jackets; aprons, baseball caps and hats, bath slippers, bathing suits, bathrobes, beach shoes, beachwear, bed jackets, belts, bikinis, body stockings, bomber jackets, booties, boxer briefs …

However, the USPTO has issued a series of rulings over the past two years that the Association can't use the World Trade Center or WTC names for selling apparel and other consumer items.

The Trademark Office's latest decision, in April, was based on the position that the Association's marks are incapable of functioning as trademarks for apparel since customers identify the World Trade Center with the tragedy of 9/11 – not with any particular manufacturer of clothing.

The USPTO examiner also wrote that giving the Association a monopoly on clothing with the WTC logo would be unfair to the surviving family members of those killed in the attacks:

The practical import of permitting the applied-for mark to proceed to registration is that each family member, friend and member of the public at large seeking to produce goods like those attached hereto, which have become commonplace in efforts remember the events of 9/11/01 and associated tragic loss of life, will be prohibited from doing so due to applicant's exclusive rights to the wording in connection with those goods.

As noted above, the Association appealed the decision.

Questions?

If you have questions about trademark law, it's a good idea to consult a trademark attorney in your area.

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