Arredondo v. Arredondo , 460 F. App'x 59 ( 2012 )


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  •      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
    13       - - - - - - - - - - - - - - - - - - - -X
    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.
    31       - - - - - - - - - - - - - - - - - - - -X
    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
    25
    4
    

Document Info

Docket Number: 10-4930-cv

Citation Numbers: 460 F. App'x 59

Judges: Calabresi, Dennis, Guido, Jacobs, Pooler, Rosemary

Filed Date: 2/23/2012

Precedential Status: Non-Precedential

Modified Date: 8/5/2023