Luca McDermott Catena Gift Trust v. Fructuoso-Hobbs SL

Authored by: Jeremy J. Gustrowsky

A recent decision from the United States Court of Appeals for the Federal Circuit highlights the limits on who can challenge registered trademarks at the U.S. Patent and Trademark Office. In this case, a family trust that owned a minority stake in a California winery tried to cancel two trademarks—ALVAREDOS-HOBBS and HILLICK AND HOBBS—used by other wineries, arguing these marks were likely to confuse consumers with the PAUL HOBBS mark owned by their winery.

The trust claimed that the use of these similar marks would harm the value of its investment in the winery. While the court agreed that the trust could show a concrete financial injury—since a loss in the winery’s value would affect the trust’s investment—it held that this was not enough to give the trust the right to challenge the trademarks under federal law. The court explained that only those with a direct commercial interest in the allegedly infringed mark, such as the actual owner or someone using the mark in commerce, are entitled to bring such a challenge.

The court emphasized that simply being a minority owner in a business that owns a trademark does not provide the necessary “zone of interests” or direct connection required by the law. The harm claimed by the trust was considered too remote and merely derivative of any harm suffered by the winery itself. As a result, the trust’s challenge was dismissed, and the registrations for ALVAREDOS-HOBBS and HILLICK AND HOBBS remain in place.

This decision serves as a reminder that trademark cancellation proceedings are reserved for those with a direct stake in the mark at issue, not for investors or minority owners acting on behalf of a business. If you are considering challenging a trademark, it’s important to ensure you have a direct commercial interest or use of the mark in question.