Arredondo v. Arredondo

10-4930-cv
Arredondo v. Arredondo
UNITED STATES COURT OF APPEALS
FOR THE SECOND CIRCUIT
SUMMARY ORDER
RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL EFFECT. CITATION TO A SUMMARY ORDER FILED
ON OR AFTER JANUARY 1, 2007, IS PERMITTED AND IS GOVERNED BY FEDERAL RULE OF APPELLATE
PROCEDURE 32.1 AND THIS COURT’S LOCAL RULE 32.1.1. WHEN CITING A SUMMARY ORDER IN A
DOCUMENT FILED WITH THIS COURT, A PARTY MUST CITE EITHER THE FEDERAL APPENDIX OR AN
ELECTRONIC DATABASE (WITH THE NOTATION “SUMMARY ORDER”). A PARTY CITING A SUMMARY ORDER MUST
SERVE A COPY OF IT ON ANY PARTY NOT REPRESENTED BY COUNSEL.
1 At a stated term of the United States Court of Appeals
2 for the Second Circuit, held at the Daniel Patrick Moynihan
3 United States Courthouse, 500 Pearl Street, in the City of
4 New York, on the 23rd day of February, two thousand twelve.
5
6 PRESENT:
7 DENNIS JACOBS,
8 Chief Judge,
9 GUIDO CALABRESI,
10 ROSEMARY S. POOLER,
11 Circuit Judges.
12
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14 CARLOS A. ARREDONDO, in his capacity as
15 Trustee of 2000 Trust for Grandchildren of
16 Carlos A. Arredondo & Mari V. Arredondo,
17 Gen. Partner of Arredondo Prop. LP,
18 Plaintiff-Appellant,
19
20 -v.- 10-4930-cv
21
22 CAESAR A. ARREDONDO, I/O as Trustee of
23 2000 Trust for Grandchildren of Caesar
24 A. Arredondo & Carolyn Abad Arredondo;
25 2000 TRUST FOR GRANDCHILDREN OF CAESAR
26 A. ARREDONDO & CAROLYN ABAD ARREDONDO,
27 in its capacity as Gen. Partner of
28 Arredondo Prop. LP; ARREDONDO & CO.,
29 LLC,
30 Defendants-Appellees.
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1
1
2 FOR PLAINTIFF-APPELLANT: Martin J. Elgison (Jason D.
3 Rosenberg, on the brief), Alston
4 & Bird LLP, Atlanta, GA.
5
6 FOR DEFENDANTS-APPELLEES: Craig A. Raabe (Jeffrey J.
7 White, on the brief), Robinson &
8 Cole LLP, Hartford, CT (David M.
9 Kelly, Finnegan, Henderson,
10 Farabow, Garrett & Dunner, LLP,
11 Washington, DC, on the brief).
12
13 Appeal from a judgment of the United States District
14 Court for the District of Connecticut (Droney, J.).
15
16 UPON DUE CONSIDERATION, IT IS HEREBY ORDERED, ADJUDGED,
17 AND DECREED that the judgment of the District Court is
18 AFFIRMED.
19
20 Plaintiff-Appellant, Carlos A. Arredondo (“Carlos”),
21 appeals the District Court’s judgment in favor of the
22 Defendants-Appellees, including his brother, Caesar A.
23 Arredondo (“Caesar”). After a bench trial, the District
24 Court decided that the entity partially owned by Carlos --
25 Arredondo Properties Limited Partnership (“APLP”) -- did not
26 own the trademark at issue. We assume the parties’
27 familiarity with the underlying facts, the procedural
28 history of the case, and the issues on appeal.
2
1 On an appeal from a bench trial, we review a district
2 court’s conclusions of law de novo and the findings of fact
3 for clear error. Mobil Shipping & Transp. Co. v. Wonsild
4 Liquid Carriers Ltd., 190 F.3d 64, 67 (2d Cir. 1999). A
5 district court’s factual “finding is clearly erroneous only
6 if ‘although there is evidence to support it, the reviewing
7 court on the entire evidence is left with the definite and
8 firm conviction that a mistake has been committed.’” Id. at
9 67-68 (quoting Anderson v. Bessemer City, 470 U.S. 564, 574
10 (1985)).
11 In 1999, Carlos sold his interests in Arredondo & Co.,
12 LLC (“A&Co”) for $100,000. That sale covered all “good
13 will” and “trademarks” owned at that time and in the future.
14 The agreement also released Caesar and A&Co “from any claim,
15 known or unknown, that [Carlos] may have against either or
16 both of them arising from his ownership of an interest in
17 [A&Co] or any actions relating to the operation of [A&Co]”
18 The record does not identify any other trademarks
19 besides the trademark at issue that could have been included
20 in the sale. Moreover, Carlos admitted in his testimony
21 that, at the time of the sale, he knew that the trademark at
22 issue here had been purchased by A&Co before Carlos sold his
23 interest in A&Co to Caesar. Accordingly, Carlos was aware
24 that he was selling his interest in the trademark.
3
1 Carlos argues that the trademark was owned by APLP.
2 This is incorrect. It has long been settled that “first
3 use” determines who owns a trademark. ITC Ltd. v.
4 Punchgini, Inc., 482 F.3d 135, 147 (2d Cir. 2007) (citing
5 Defiance Button Mach. Co. v. C & C Metal Prods. Corp., 759
6 F.2d 1053, 1059 (2d Cir. 1985)); accord Am. Express Co. v.
7 Goetz, 515 F.3d 156, 161 (2d Cir. 2008) (per curiam)
8 (quoting La Societe Anonyme des Parfums le Galion v. Jean
9 Patou, Inc., 495 F.2d 1265, 1271 (2d Cir. 1974)). APLP was
10 nothing more than a passive investor that (along with
11 several other entities owned, controlled, and operated by
12 Caesar and Carlos) invested (in some form or another) in the
13 storage business that used the trademark. APLP did not use
14 the trademark and was certainly not the first to use it.
15 Passive investment is insufficient to establish APLP’s
16 ownership of a trademark.
17
18 We have considered all of Plaintiff-Appellant’s
19 additional arguments and find them to be without merit.
20 Accordingly, the judgment of the District Court is AFFIRMED.
21
22 FOR THE COURT:
23 Catherine O’Hagan Wolfe, Clerk
24
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