Ending a four-year battle before the Trademark Trial and Appeal Board (TTAB), Pryor Cashman client, Charlotte Olympia Holdings Limited - owner of the global women’s fashion brand, Charlotte Olympia - defeated a challenge brought by GMA Accessories, Inc., which sought to prevent the registration of the CHARLOTTE OLYMPIA trademark.

In 2011, Charlotte Olympia filed an application with the U.S. Patent and Trademark Office seeking to register the CHARLOTTE OLYMPIA mark for various types of goods including jewelry and shoes. In 2013, GMA Accessories opposed the registration under Section 2(d) of the Trademark Act, claiming the CHARLOTTE OLYMPIA mark would create a likelihood of confusion with its then-registered CHARLOTTE marks.

Charlotte Olympia’s Counterclaim: Cancellation Due to Abandonment

In response to the opposition, Charlotte Olympia asserted a counterclaim against GMA Accessories, contending that both of the registrations for the cited CHARLOTTE marks should be cancelled on the basis of abandonment. Specifically, Charlotte Olympia argued that GMA Accessories had failed to use the CHARLOTTE marks in connection with the relevant goods between 2011 and 2015, and lacked any intent to resume use.

Over the course of the lengthy proceeding, Pryor Cashman brought - and won - several key motions, including one to strike substantial amounts of evidence proffered by GMA Accessories, as well as a motion for sanctions, which was granted in large part against GMA.

TTAB’s Decision

In a decision dated June 15, 2017, TTAB ruled that Charlotte Olympia had “established, at a minimum, that a prima facie case of abandonment exist[ed] with respect to both of [GMA Accessories’] pleaded registrations.” TTAB further found that GMA’s failure to produce any evidence of, among other things, marketing or advertising plans, correspondence with sales agencies or publicity firms, or any promotional materials demonstrating use of the marks in the United States between 2011-2015 strongly supported a finding that the CHARLOTTE marks had been abandoned. 

Ultimately, because GMA Accessories was unable to meet its burden of rebutting the prima facie case of abandonment, TTAB granted Charlotte Olympia’s counterclaim and went on to cancel the registrations for GMA’s CHARLOTTE marks. Further, because GMA Accessories relied solely on the - now-cancelled - registrations as the basis of its likelihood of confusion claim, TTAB dismissed its opposition of the CHARLOTTE OLYMPIA mark’s registration.

To read the full TTAB decision, please click here.

The Pryor Cashman Team

Representing Charlotte Olympia in this matter from Pryor Cashman were Dyan Finguerra-DuCharme, Brad. D. Rose and Ryan Klarberg, all members of the firm's award-winning Trademark practice.

More About Pryor Cashman’s Trademark Practice

Pryor Cashman’s Trademark Practice manages large-scale trademark maintenance and enforcement programs for some of the world’s most recognizable brands and celebrities. The firm advises on all aspects of trademark law, from establishing vigilance programs to litigating disputes, and has won numerous cases which have become the gold standard for addressing conflicts between intellectual property rights and the First Amendment.

To learn more about our work in this area, please visit here.