     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
