Micky A. Gutier v. Hugo Boss Trade Mark Management Gmbh & Co. Kg

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
MICKY A. GUTIER,
Appellant,
v.
HUGO BOSS TRADE MARK MANAGEMENT GMBH
& CO. KG,
Appellee.
______________________
2013-1481
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Cancellation
No. 92052550.
______________________
Decided: January 8, 2014
______________________
MICKY A. G UTIER, of Phoenix, Arizona, pro se.
ANDREW L. D EUTSCH , DLA Piper, LLP, of New York,
New York, for appellee. With him on the brief was AIRINA
L. RODRIGUES .
______________________
Before L OURIE, D YK, and WALLACH , Circuit Judges.

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GUTIER v. HUGO BOSS TRADE MARK MGMT 2
D YK, Circuit Judge.
Micky A. Gutier appeals from the decision of the
Trademark Trial and Appeal Board (“the Board”) cancel-
ling two marks registered to him. The Board’s decision
was based on the judgment of the United States Court for
the District of Arizona, ordering cancellation of the marks
under 15 U.S.C. § 1119. We affirm.
BACKGROUND
Before the challenged cancellations, Micky A. Gutier
(“Gutier”) owned federal registrations for two marks: XY
COSMETICS, Registration No. 2,909,091, registered on
December 7, 2004, and XY SKIN CARE, Registration No.
2,921,574, registered on January 25, 2005. In August
2008, Gutier and Alberto Gutier III, the sole members of
XY Skin Care & Cosmetics, LLC (“plaintiffs”), sued Hugo
Boss USA, Inc. and Hugo Boss Retail, Inc. (“defendants”)
for infringement of Gutier’s registered marks relating to
sales of products labeled “XY Hugo and XX Hugo.” JA78.
The defendants then filed counterclaims seeking cancella-
tion of Gutier’s marks and moved for summary judgment.
On June 11, 2010, Hugo Boss Trade Mark Manage-
ment GmbH & Co. KG (“Hugo Boss”) filed petitions before
the Board, seeking cancellation of Gutier’s registrations.
The Board consolidated the proceedings, and suspended
them pending final disposition of the infringement law-
suit. On February 25, 2011, the district court determined
that the plaintiffs had no “valid, protectable rights” in the
marks because they “did not engage in bona fide commer-
cial use.” JA85. The court also found that the defendants,
who had used the marks continuously in commerce, had
priority. The court granted summary judgment for de-
fendants, declaring Gutier’s trademarks invalid and not
infringed, and ordered cancellation of the federal registra-
tions for XY SKIN CARE and XY COSMETICS under 15
U.S.C. § 1119.

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GUTIER v. HUGO BOSS TRADE MARK MGMT 3
After the district court judgment on February 25,
2011, the plaintiffs and defendants participated in a
mediation conference and entered into a Mediation Con-
ference Memorandum (the “Memorandum”). Under the
Memorandum, the plaintiffs and defendants agreed to
“mutually release all claims, known or unknown” against
each other and “stipulate to . . . a Final Judgment in the
Litigation in favor of Hugo Boss consistent with the Order
dated February 25, 2011 granting summary judgment in
favor of Hugo Boss.” JA94. Apparently no other final
judgment was entered, and the parties treated the Febru-
ary 25 judgment as the final judgment of the district
court. The plaintiffs also “waive[d] any right of appeal
from the Final Judgment and any right to seek relief from
the Final Judgment that might exist in the absence of
th[e] Memorandum.” JA96. The Memorandum also pro-
vided that “[s]ubject to the terms of the Final Judgment,
Hugo Boss agrees that Plaintiffs may use their marks (XY
COSMETICS and XY SKINCARE).” JA95.
Thereafter, the Board received a certified copy of the
district court’s judgment and the Memorandum. Based on
the district court’s judgment and pursuant to 15 U.S.C.
§ 1119, the Board dismissed the cancellation petitions as
moot and ordered the registrations for Gutier’s marks
cancelled. Those cancellations issued on May 9, 2012.
Gutier appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(B).
D ISCUSSION
Section 37 of the Lanham Act provides that
[i]n any action involving a registered mark the
court may determine the right to registration, or-
der the cancelation of registrations, in whole or in
part . . . and otherwise rectify the register with re-
spect to the registrations of any party to the ac-
tion. Decrees and orders shall be certified by the

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GUTIER v. HUGO BOSS TRADE MARK MGMT 4
court to the Director, who shall make appropriate
entry upon the records of the Patent and Trade-
mark Office, and shall be controlled thereby.
15 U.S.C. § 1119. That provision permits district courts to
“determine the right to registration of a trade mark of any
party to the action.” Massa v. Jiffy Prods. Co., 240 F.2d
702, 707 (9th Cir. 1957). The same section provides that
the certified district court orders will control the Patent
and Trademark Office (“PTO”). In re Wells Fargo & Co.,
231 U.S.P.Q. (BNA) 95, 104 (T.T.A.B. 1986) (“It is settled
law that where a court of competent jurisdic-
tion . . . determines the respective rights of the parties
before it to registration under the Trademark Act, that
determination is binding upon the Commissioner . . . .”).
Here, the district court ordered the cancellation of
Gutier’s marks for XY SKIN CARE and XY COSMETICS,
and the Commissioner of Trademarks complied with that
order by cancelling the registrations in accordance with
§ 1119.
Gutier argues that the Board erred in cancelling the
marks. First, he argues that the Board erred in cancelling
the registrations because he had filed for each mark a § 8
affidavit of use and a § 15 affidavit of incontestability
(attesting to continuous use in commerce for five consecu-
tive years from the date of registration, see Lanham Act
§§ 8, 15, 15 U.S.C. §§ 1058, 1065). The PTO does not
examine the merits of a § 15 affidavit, which is entered
into PTO records “without regard to its substantive
sufficiency” as long as it is received at the proper time and
lacks facial inconsistencies or omissions. 3 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Compe-
tition § 19:140 (4th ed. 2013) (citing TMEP § 1605 (8th ed.
Oct. 2013)). The PTO’s records indicate the acceptance
and acknowledgement of Gutier’s § 8 and § 15 affidavits.

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GUTIER v. HUGO BOSS TRADE MARK MGMT 5
The filing and receipt of these declarations did not
prevent the district court from ordering cancellation.
Lanham Act § 15 specifically conditions a mark’s incon-
testability on the fact that “there is no proceeding involv-
ing said rights pending in the United States Patent and
Trademark Office or in a court and not finally disposed
of.” 15 U.S.C. § 1065(2). That requirement could not have
been satisfied here because a proceeding involving the
rights to the registered marks was pending when Gutier
attempted to establish incontestability. The declarations
were submitted in 2010, while the infringement suit,
commenced in 2008, was pending, including defendants’
counterclaims for cancellation of Gutier’s marks. The
validity of the district court’s judgment is unaffected by
the filing of the declarations before the Board.
Next, Gutier argues that the cancellations contravene
the Memorandum’s terms. The Memorandum expressly
states that “Hugo Boss agrees that Plaintiffs may use
their marks (XY COSMETICS and XY SKINCARE),” JA
95, but this did not give Gutier the right to retain regis-
trations that the district court had already found invalid
and ordered cancelled. Gutier’s argument mistakenly
conflates the right to use a trademark with the right to
register a trademark. See, e.g., In re Fox, 702 F.3d 633,
639 (Fed. Cir. 2012) (applicant is not precluded from
making commercial use of unregistrable mark); 3 McCar-
thy, supra, § 19:3 (“‘A refusal by the PTO to register a
mark does not preclude the owner of the mark from his
right to use it.’”) (quoting Volkswagenwerk Aktiengesell-
schaft v. Wheeler, 814 F.2d 812, 819 (1st Cir. 1987)). The
Memorandum gave Gutier the right to continue using the
marks, but did nothing to undo the district court’s judg-
ment of cancellation. In fact, it confirmed that the district
court’s grant of summary judgment would be final, and
that the parties would not appeal or seek relief from that
judgment. The Memorandum cannot provide a basis for

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GUTIER v. HUGO BOSS TRADE MARK MGMT 6
overturning the court-ordered cancellations issued by the
Board in accordance with § 1119.
The other factual issues that Gutier raises on appeal
were presented to the Board, and are attempts to reliti-
gate the district court’s finding of trademark invalidity.
The Board did not address these issues, and they provide
no basis for overturning the Board’s decision.
AFFIRMED
COSTS
Costs to Appellee.

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