Author: Brian R. Westley
In a precedential decision that underscores the importance of maintaining a formal business structure when securing trademark rights, the Board found the mark FAIRWAY FOX void ab initio after determining that the applicant had no more than a joint interest in the mark.
Kristin Marie Conolty d/b/a Fairway Fox Golf v. Conolty O’Connor NYC LLC involved a dispute between former business partners over the mark FAIRWAY FOX for golf clothing. 2014 WL 3427346. In 2008, Kristin Marie Conolty and Kathryn O’Connor began preparations for their upscale, fashionable clothing line and in early 2009 O’Connor registered the domain name fairwayfoxgolf.com and that website identified both women as co-owners and designers of the company. Both women were also identified as “founders” in a 2010 revised draft of their business plan. In 2011, O’Connor formed applicant Conolty O’Connor NYC LLC, but listed O’Connor as the sole shareholder. The two women continued to work together in early 2012, filing the trademark application through LegalZoom and participating in the 2012 PGA Merchandise Show.
In May 2012, after a disagreement over who should own what percentage of the company, Conolty went off on her own, selling FAIRWAY FOX clothing on the etsy.com website while O’Connor continued to sell the clothing on the fairwayfoxgolf.com website. Despite the split, the FAIRWAY FOX mark was never assigned, transferred, or licensed—and there was no contract or other agreement addressing the assets of the defunct business venture.
In sustaining Conolty’s opposition against the registration of applicant’s mark, the Board noted that the function of a mark is to identify a single source of goods; therefore, recognizing more than one owner of a mark is “contrary to the basic definition of a mark as identifying and distinguishing a single seller’s goods or services.” Id. at *8. The Board stated that an application filed by a party who is not the owner of the mark is void. “Here, the record makes clear, and we accordingly find, that the involved application is void ab initio because applicant is not the sole owner of the mark.” The record evidence showed that Conolty and O’Connor were partners “who jointly controlled the quality of the FAIRWAY FOX products and who were both, together, perceived as the source of FAIRWAY FOX products.” Because O’Connor had only a joint interest in the mark, the company formed and controlled by O’Connor was not the proper owner.
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