United States Court of Appeals 

for the Federal Circuit ______________________ 

LUCA MCDERMOTT CATENA GIFT TRUST,

Appellant

v.

FRUCTUOSO-HOBBS SL,

Appellee

______________________ 

2023-1383

______________________ 

Appeal from the United States Patent and Trademark 

Office, Trademark Trial and Appeal Board in No. 

92079918.

-----------------------------------------------

LUCA MCDERMOTT CATENA GIFT TRUST,

Appellant

v.

HILLICK & HOBBS ESTATE, LLC,

Appellee

______________________ 

2023-1385

______________________ 

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2

Appeal from the United States Patent and Trademark 

Office, Trademark Trial and Appeal Board in No. 

92079919.

______________________ 

Decided: May 23, 2024

______________________ 

KIT KNUDSEN, Commins, Knudsen & Chou, P.C., Oakland, CA, argued for appellant. Also represented by DAVID 

HARALD COMMINS. 

 JUSTIN D. HEIN, Carle, Mackie, Power & Ross LLP, 

Santa Rosa, CA, argued for appellees. Also represented by 

JOHN BERNARD DAWSON, KRISTIN ANN MATTISKENICHOLLS. 

______________________ 

Before LOURIE, REYNA, and CHEN, Circuit Judges.

LOURIE, Circuit Judge. 

Luca McDermott Catena Gift Trust (“Appellant”) appeals from a consolidated decision of the U.S. Patent and 

Trademark Office Trademark Trial and Appeal Board (“the 

Board”) dismissing its petitions to cancel the registered 

marks ALVAREDOS-HOBBS and HILLICK AND HOBBS. 

Luca McDermott Catena Gift Trust v. Fructuoso-Hobbs SL, 

Nos. 92079918, 92079919 (T.T.A.B. Nov. 17, 2022), 

J.A. 1–11 (“Decision”). Because the Board correctly concluded that Appellant lacks a statutory right to seek cancellation of those marks under 15 U.S.C. § 1064, we affirm.

BACKGROUND

Appellant and two related family trusts—the Dante 

McDermott Catena Gift Trust and the Nicola McDermott 

Catena Gift Trust—are each limited partners of Californiabased Paul Hobbs Winery, L.P. (“Hobbs Winery”). Decision, J.A. 6. Collectively, the three family trusts own 21.6% 

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of the partnership. Id. Hobbs Winery, in turn, owns the 

registered trademark PAUL HOBBS in International 

Class 33 for “Wines.” Id.; see Registration No. 3,498,652. 

Paul Hobbs is the name of the winemaker and another partial owner of Hobbs Winery. See J.A. 13.

Paul Hobbs is also affiliated with Appellees FructuosoHobbs SL (“Fructuoso-Hobbs”) and Hillick & Hobbs Estate, 

LLC (“Hillick & Hobbs”). See J.A. 23. Fructuoso-Hobbs is 

a Spanish winery and owner of the registered mark 

ALVAREDOS-HOBBS, see Registration No. 6,229,243, 

while Hillick & Hobbs is a New York winery and owner of 

the registered mark HILLICK AND HOBBS, see Registration No. 6,390,072. Like Hobbs Winery’s mark, each of Appellees’ marks is registered in International Class 33 for 

“Alcoholic beverages except beers; wines.” Decision, J.A. 4.

Appellant, along with the two related family trusts, 

filed a consolidated petition to cancel each of Appellees’ 

marks under 15 U.S.C. § 1064 on the grounds of likelihood 

of confusion and fraud. See generally J.A. 12–39. The petition alleged that Appellees’ use of ALVAREDOS-HOBBS 

and HILLICK AND HOBBS in connection with wine was 

likely to cause confusion in the marketplace with Hobbs 

Winery’s use of PAUL HOBBS for the same goods. Decision, J.A. 4; see J.A. 15–17. The petition also alleged that

each Appellee committed fraud by causing its attorney, the 

same attorney of record for Hobbs Winery’s PAUL HOBBS 

mark, to aver in a declaration that Appellees’ marks would 

not be likely to cause confusion with another mark. 

J.A. 18–19. In the family trusts’ view, that attorney “knew, 

or should have known,” that the Appellees’ marks were 

likely to confuse the public into believing that Hobbs Winery made or authorized Appellees’ use and registration of 

the HOBBS portion of their trademarks. Id. at 19.

Appellees each moved to dismiss the petition, arguing 

that the family trusts were not entitled by statute to cancel 

the challenged marks because they were not the owners of 

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the allegedly infringed PAUL HOBBS mark. See id. at

54–55, 70–71. They also argued that the petition had failed 

to adequately allege both that the challenged marks were 

confusingly similar to the PAUL HOBBS mark and that 

Appellees had committed fraud. Id. at 62–65, 78–81.

In a consolidated decision, the Board granted the motions to dismiss. It concluded that, because the family 

trusts were mere minority owners of Hobbs Winery who did 

not use or otherwise possess rights in the PAUL HOBBS 

mark that could be asserted without approval from Hobbs 

Winery, they lacked a statutory entitlement to bring the 

cancellation action. Decision, J.A. 6 (citing Miller v. B & H 

Foods, Inc., 209 U.S.P.Q. 357, 360 (T.T.A.B. 1981)). The

Board further concluded that the family trusts had failed 

to adequately plead likelihood of confusion and fraud. Id. 

at 7–10. As for likelihood of confusion, the Board held that 

the family trusts could not show that they had a “proprietary interest” in the PAUL HOBBS mark, which the Board 

deemed a necessary element to such a claim. Id. at 7–8 

(citing Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 

1317, 1320 (CCPA 1981) (explaining that, in an opposition 

proceeding, a petitioner must show it has “proprietary 

rights in the term [it] relies upon to demonstrate likelihood 

of confusion as to source, whether by ownership of a registration, prior use of a technical ‘trademark,’ prior use in 

advertising, prior use as a trade name, or whatever other 

type of use may have developed a trade identity”)).1 The 

Board also concluded that the family trusts had failed to 

allege fraud because “[n]otwithstanding that the marks at 

issue are used on identical goods, i.e., wines, the marks are 

1 The statutory requirements to cancel registration 

of a mark under § 1064 are substantively equivalent to 

those required to oppose registration under § 1063. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1306 n.2 (Fed. Cir. 

2020). 

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not substantially identical.” Id. at 10. The Board denied 

the family trusts leave to file amended cancellation petitions, concluding that any amendment would be futile because there was “no path to a legally sufficient allegation 

of entitlement to a cause of action” given the family trusts’ 

mere minority ownership of Hobbs Winery. Id. at 11.

Appellant, but not the Dante McDermott Catena Gift 

Trust or Nicola McDermott Catena Gift Trust, appeals. 

DISCUSSION

I 

We begin our discussion with a point of clarity regarding the parties to this appeal, as it will impact the framing, 

though not the outcome, of our analysis. As alluded to 

above, this court has treated this case, since its inception, 

as having a singular appellant: Luca McDermott Catena 

Gift Trust. However, the Opening and Reply Briefs consistently imply that all three family trusts that petitioned 

for cancellation have appealed from the Board’s decision. 

See Appellant’s Br. at 5 (“Petitioners appealed . . . .” (emphasis added)); Reply Br. at 5 (“Petitioners’ Article III 

standing firmly rests on their allegations that . . . .” (emphases added)). But, as Appellees recognized in their responsive briefing, “[i]t appears only one of the Petitioners, 

the Luca McDermott Catena Gift Trust, is appealing the 

Board’s ruling.” Appellees’ Br. at 2 n.2. For the following 

reasons, we agree with Appellees that there is only one appellant in this case. 

Upon the Board’s consolidated decision, two Notices of 

Appeal were filed, one in each of Cancellation 

No. 92079918 (against Fructuoso-Hobbs) and Cancellation 

No. 92079919 (against Hillick & Hobbs). The body of each 

of those filings stated: “Notice is hereby given that Luca 

McDermott Catena Gift Trust, Opposer in the abovenamed cancellation proceeding, hereby appeals[.]” See Certified List, No. 23-1383, ECF No. 10, at 21–22, 25–26. The 

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caption of each notice, however, included the names of all 

three family trusts (identified collectively as the “McDermott Catena Family Trusts”), and the signature blocks 

identified the signing attorney as “attorney for Appellants.” 

Id. (emphasis added).

Pursuant to Federal Rule of Appellate Procedure 

3(b)(1), when two or more parties are entitled to appeal

from a decision, a joint notice of appeal is permitted, allowing the parties to proceed as a single appellant. The joint

notice of appeal must “specify the . . . parties taking the appeal by naming each one in the caption or body of the notice.” Fed. R. App. P. 3(c)(1)(A). Upon receipt of a notice of 

appeal, the clerk of court is obligated, under Federal Rule 

of Appellate Procedure 12(a), to docket the appeal and

“identify the appellant.” Fed. R. App. P. 12(a). Our court 

implements that requirement, in part, via Federal Circuit 

Rule 12(b), which provides that the clerk of court “must 

provide the parties with the official caption for the case at 

the time of docketing.” Once that caption is provided, 

“[a]ny objection to the official caption must be made 

promptly.” Fed. Cir. R. 12(b).

Upon receipt of each of the Notices of Appeal, the clerk 

of this court docketed two appeals and provided a caption 

for each that listed Luca McDermott Catena Gift Trust as 

the singular appellant. See Notice of Docketing, 

No. 23-1383, ECF No. 1 at 4; Notice of Docketing, 

No. 23-1385, ECF No. 1 at 4. Luca McDermott Catena Gift 

Trust was again listed as the singular appellant in the 

modified caption that was assigned when those two appeals 

were consolidated. See Order, No. 23-1383, ECF No. 8. No 

objection to those captions, prompt or otherwise, was made 

by either party.

Although the provisions of Federal Rules of Appellate 

Procedure are to be liberally construed, see Torres v. Oakland Scavenger Co., 487 U.S. 312, 316 (1988) (citing Foman 

v. Davis, 371 U.S. 178 (1962)), such that the Notices of 

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Appeal filed in this case could be read as joint notices from 

all three family trusts, Appellant was on notice at least as 

early as the filing of Appellees’ Response Brief that it appeared as if only the Luca McDermott Catena Gift Trust 

had appealed. Accordingly, despite any ambiguity in the 

Notices of Appeal, the window to modify the official caption 

or clarify the scope of the appeal has closed. We therefore 

proceed to the legal issues presented in this case as they

pertain to the singular appellant—Luca McDermott Catena Gift Trust—which, as we have mentioned, affects only 

the framing, and not the outcome, of our analysis. 

II 

Before we can determine whether or not Appellant has 

a statutory right of action to cancel the registrations of Appellees’ marks, “[w]e have an obligation to assure ourselves 

of [Appellant’s] standing under Article III” of the Constitution. DaimlerChrysler Corp. v. Cuno, 547 U.S. 332, 340 

(2006) (internal quotation marks and citation omitted). 

“[A]lthough Article III standing is not necessarily a requirement to appear before an administrative agency, once 

a party seeks review in a federal court, ‘the constitutional 

requirement that it have standing kicks in.’” Consumer 

Watchdog v. Wis. Alumni Rsch. Found., 753 F.3d 1258, 

1261 (Fed. Cir. 2014) (quoting Sierra Club v. EPA, 292 F.3d 

895, 899 (D.C. Cir. 2002)); see generally Phigenix, Inc. v. 

Immunogen, Inc., 845 F.3d 1168 (Fed. Cir. 2017). As the 

party seeking judicial review of the Board’s decision, Appellant has the burden to establish that it has constitutional standing. Phigenix, 845 F.3d at 1171.

To establish constitutional standing, Appellant “must 

show (i) that [it] suffered an injury in fact that is concrete, 

particularized, and actual or imminent; (ii) that the injury 

was likely caused by [Appellees]; and (iii) that the injury 

would likely be redressed by judicial relief.” TransUnion 

LLC v. Ramirez, 594 U.S. 413, 423 (2021) (citing Lujan v. 

Defs. of Wildlife, 504 U.S. 555, 560–61 (1992)). Appellant 

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has alleged that, as an owner of Hobbs Winery, it has suffered (or will suffer) monetary harm as a result of the registration of Appellees’ marks. See Appellant’s Reply Br. at 

6. In its view, Appellees’ use of their marks diminishes the 

value of Hobbs Winery’s PAUL HOBBS mark, which in 

turn diminishes the value of Appellant’s ownership interest in Hobbs Winery. Appellees disagree, arguing that Appellant’s alleged ownership interest in Hobbs Winery is 

insufficiently “direct” to satisfy the injury-in-fact element 

for constitutional standing.

A. Injury-in-Fact

We have little trouble concluding that Appellant’s alleged injury—the diminishment in value of its investment 

in Hobbs Winery—satisfies the injury-in-fact requirement 

for constitutional standing. Such a monetary injury is undoubtedly “concrete.” Indeed, the Supreme Court has long 

recognized that “traditional tangible harms,” such as monetary harms, “readily qualify as concrete injuries under Article III.” TransUnion LLC, 594 U.S. at 425; see Spokeo, 

Inc. v. Robins, 578 U.S. 330, 340 (2016).

To be sure, we observe that the amount of Appellant’s 

individual ownership interest in Hobbs Winery is unknown. Appellant’s allegations of ownership of Hobbs Winery refer only to the collective 21.6% ownership of the 

original three petitioners. See Appellant’s Reply Br. at 5 

(“Petitioners’ Article III standing firmly rests on their allegations that . . . they have a substantial stake (21.6%) in 

[Hobbs Winery.]”). But we see no allegations of what portion, if any, of that ownership is attributable to Appellant. 

That is notable because, as the only party to appeal from 

the Board’s decision, Appellant must establish that it has 

individually suffered an injury-in-fact, which on its theory 

of Article III standing, would require it to have a non-zero 

ownership interest in Hobbs Winery. Although unknown, 

we are nevertheless satisfied from the pleadings that Appellant has made that showing. See Appellant’s Br. at 3 

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(“The Catena family has been a substantial owner of 

[Hobbs Winery] for decades, and more recently transferred 

that singular interest to their children, who hold it through 

the three McDermott-Catena Family Trusts.”). Accordingly, Appellant has alleged a concrete monetary harm. 

See Czyzewski v. Jevic Holding Corp., 580 U.S. 451, 464 

(2017) (“For standing purposes, a loss of even a small 

amount of money is ordinarily an ‘injury.’” (citing 

McGowan v. Maryland, 366 U.S. 420, 430–31 (1961))).

Moreover, the alleged injury is particularized because 

it “affect[s] the plaintiff in a personal and individual way.” 

Lujan, 504 U.S. at 560 n.1; see Pub. Citizen, Inc. v. Nat’l 

Highway Traffic Safety Admin., 489 F.3d 1279, 1292–93 

(D.C. Cir. 2007) (collecting cases). The diminishment in 

value of an ownership interest in Hobbs Winery is not an 

undifferentiated or generalized grievance suffered by the 

public at large, but rather one personal to Appellant and 

any other partner or owner of Hobbs Winery. See Spokeo, 

Inc., 578 U.S. at 339–40; United States v. Richardson, 

418 U.S. 166, 176–77 (1974). 

Finally, the alleged injury is actual or imminent. It is 

not merely “conjectural or hypothetical,” Lujan, 504 U.S. at 

560 (internal quotation marks and citation omitted), because it is based on Appellant’s allegations that the registrations of Appellees’ marks actually harm the value of its 

ownership interest. Appellant’s Reply Br. at 5. That is not 

the type of injury we have previously found to be hypothetical. See Brooklyn Brewery Corp. v. Brooklyn Brew Shop, 

17 F.4th 129, 139 (Fed. Cir. 2021) (concluding that a “possible injury” based on the use of a challenged mark in connection with sanitizing preparations was hypothetical 

where the appellant had no plan or interest in expanding 

its business to encompass sanitizing preparations).

Appellant has therefore adequately established an injury-in-fact. To the extent that Appellees contend owners 

or shareholders of an organization cannot satisfy the 

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constitutional requirement of an injury-in-fact based on injuries suffered by the organization itself, the Supreme 

Court has held the opposite. See Collins v. Yellen, 141 S. Ct 

1761, 1779 (2021) (concluding that “pocketbook injur[ies]” 

suffered by shareholders of Fannie Mae and Freddie Mac 

when their interests were transferred to Treasury were 

“prototypical form[s] of injury in fact.”).

B. Causation

Appellees’ challenge to the “directness” of Appellant’s 

injury is more appropriately considered in connection with 

the second element of Article III standing—causation. To 

satisfy that requirement, Appellant must show that its 

purported injury, i.e., the diminishment in value of its ownership interest in Hobbs Winery, is “fairly traceable” to Appellees’ (allegedly unlawful) registration of their marks. 

Dep’t of Educ. v. Brown, 600 U.S. 551, 564 (2023). We conclude that it is. 

Only “a causal connection between the injury and the 

conduct complained of” is required. Lujan, 504 U.S. at 560. 

Accordingly, the inquiry is specific to the alleged injury and 

the alleged unlawful conduct. Here, that requirement is 

satisfied. The allegedly unlawful registrations of Appellees’ marks cause a diminishment of value in Appellant’s

Hobbs Winery ownership interest. The mere fact that another party, Hobbs Winery, actually owns the trademark 

(and may suffer a more “direct” injury than Appellant) does 

not mean that Appellant’s injury is not fairly traceable to 

the challenged trademark registrations. See Lexmark Int’l, 

Inc. v. Static Control Components, Inc., 572 U.S. 118, 134 

n.6 (2014) (“Proximate causation is not a requirement of 

Article III standing, which requires only that the plaintiff’s 

injury be fairly traceable to the defendant’s conduct.”). 

C. Redressability

Finally, there can be no doubt that Appellant’s injury 

would be redressed by a favorable decision. If Appellant 

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succeeded in its challenge, this court has the power to enforce the cancellation of Appellees’ marks. Such cancellations would eliminate the complained-of injury to 

Appellant’s ownership interest in Hobbs Winery. See Vt. 

Agency of Nat. Res. v. U.S. ex rel. Stevens, 529 U.S. 765, 771

(2000) (to demonstrate redressability, Appellant must 

show a “substantial likelihood that the requested relief will 

remedy the alleged injury in fact” (internal quotation 

marks and citation omitted)). 

We are therefore satisfied that Appellant has met its 

burden as to Article III standing in this case and can therefore proceed to the merits.2

III 

This case requires us to resolve whether Appellant falls 

within the class of plaintiffs who Congress has authorized 

to seek cancellation of Appellees’ trademark registrations 

under 15 U.S.C. § 1064. The Board concluded that it did

not, and, on de novo review, we agree. See Corcamore, 

978 F.3d at 1303 (providing that whether or not a party is 

2 We observe that this case raises a separate question whether Appellant has third-party standing to challenge Appellees’ marks based only on its ownership 

interest in Hobbs Winery, the actual owner of the allegedly 

infringed PAUL HOBBS mark. See, e.g., Kowalski v. Tesmer, 543 U.S. 125 (2004) (explaining the additional showings required of a party seeking to assert the legal rights of 

another). Appellees, however, have not challenged the propriety of Appellant’s appeal on that basis, so any such argument is waived. Brooklyn Brewery, 17 F.4th at 140 

(citing June Med. Servs. L. L. C. v. Russo, 591 U.S. 299, 

316–17 (2020) (explaining that because third-party standing is a prudential limit on federal jurisdiction separate 

from Article III, it can be forfeited or waived)).

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entitled to bring a statutory cause of action is a legal question reviewed de novo). 

To answer that question, we apply the analytical 

framework set forth by the Supreme Court in Lexmark,

which provides two requirements to establish an entitlement to a statutory cause of action. 572 U.S. at 129; see 

Corcamore, 978 F.3d at 1305 (holding that Lexmark controls the statutory cause of action analysis under § 1064). 

First, Appellant must show that its interests fall within the 

“zone of interests” that Congress intended to protect in enacting the relevant statute. Lexmark, 572 U.S. at 129. Second, Appellant must show that its injuries are proximately 

caused by Appellees’ alleged violation of that statute. Id.

at 132. In other words, Appellant must establish that its 

harm is not “too remote” from Appellees’ alleged unlawful 

conduct. Id. at 133.

As we observed in Corcamore, the two-part analysis of 

Lexmark has “no meaningful, substantial difference” from 

the test that this court has traditionally applied in proceedings arising under § 1064. 978 F.3d at 1304. That test asks 

whether a trademark challenger has demonstrated “a real 

interest in cancelling the [registered trademarks at issue] 

and a reasonable belief that the [registered trademarks] 

are causing it damage.” Id. (alterations in original) (quoting Empresa Cubana Del Tabaco v. Gen. Cigar Co., 

753 F.3d 1270, 1274 (Fed. Cir. 2014)). Each of the zone-ofinterests test and real-interests test serves the purpose of 

excluding only the claims of “mere intermeddlers

or . . . meddlesome parties acting as self-appointed guardians of the purity of the Register.” Id. at 1305 (alteration in 

original) (quoting Selva & Sons, Inc. v. Nina Footwear, Inc., 

705 F.2d 1316, 1325–26 (Fed. Cir. 1983)). 

A. Zone of Interests

We begin with the zone-of-interests, or the “real interests,” requirement. Where a petitioner’s grounds for cancellation are rooted in its allegations that the challenged 

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marks are confusingly similar to the allegedly infringed 

mark, we have held that the petitioner can satisfy that requirement if it has a “legitimate commercial interest” in 

the allegedly infringed mark. Empresa Cubana, 753 F.3d 

at 1275 (citing Lipton Indus., Inc. v. Ralston Purina Co., 

670 F.2d 1024, 1029 (CCPA 1982)); Australian Therapeutic 

Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 1374 

(Fed. Cir. 2020); see Meenaxi Enter., Inc. v. Coca-Cola Co., 

38 F.4th 1067, 1072 (Fed. Cir. 2022); Cunningham v. Laser 

Golf Corp., 222 F.3d 943, 945 (Fed. Cir. 2000) (“A belief in 

likely damage can be shown by establishing a direct commercial interest.”). 

It is undisputed here that Appellant neither uses nor 

possesses an individual ownership right in the allegedly infringed PAUL HOBBS mark. See Oral Arg. at 3:48–3:58, 

available at https://oralarguments.cafc.uscourts.gov/default.aspx?fl=23-1383_04012024.mp3 (counsel for Appellant acknowledging that it does not use the mark). That is, 

Appellant does not personally own or conduct any business 

under the PAUL HOBBS mark that is or would be negatively impacted in sales or reputation if its allegations were 

proved. Indeed, Appellant admits that it seeks to cancel 

Appellees’ marks “on behalf of [Hobbs Winery]’s interests.” 

Appellant’s Br. at 6; id. at 17 (“This effort – on behalf of 

[Hobbs Winery] – is solely to police unauthorized third-parties’ uses of HOBBS[.]”); id. at 18 (“Petitioners are . . . proceeding against third parties on [Hobbs Winery’s] behalf.”). 

Under those circumstances, in which Appellant’s only basis 

to challenge Appellees’ marks is its minority ownership interest in the owner of the allegedly infringed mark, and not 

its own commercial activity allegedly affected by Appellees’ 

marks, we conclude that it is not within the zone of interests entitled to seek cancellation of those marks under 

§ 1064. 

That conclusion is supported by the Supreme Court’s 

guidance that Congress’s intent in enacting the Lanham 

Act was to provide a cause of action to persons engaged in 

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commerce, not consumers, as well as our case law proscribing “mere intermeddlers” from seeking cancellation of challenged marks. See POM Wonderful LLC v. Coca-Cola Co., 

573 U.S. 102, 107 (2014) (“Though in the end consumers 

also benefit from the Act’s proper enforcement, the cause of 

action is for competitors, not consumers.”); Corcamore, 

978 F.3d at 1305; see also Oral Arg. at 25:29–25:34 (counsel 

for Appellant agreeing that a “commercial interest is required, under Lexmark, to fall within the zone of interests” 

of § 1064). While Appellant, who, after all, owns up to 

21.6% of Hobbs Winery, is not properly called an “intermeddler,” it indeed lacks the direct commercial interest in 

the registration at issue that the trademark laws contemplate as providing a basis for a cause of action.

To be sure, Appellant is correct that an entitlement to 

cancel registration under § 1064 is not limited to those with 

a direct proprietary interest in a trademark. Australian 

Therapeutic, 965 F.3d at 1374 (“Our decision in Otto Roth

does not require a party to establish proprietary rights in 

a mark in order to meet the statutory requirements to challenge a mark.”). We have held, for example, that a petitioner whose trademark application has been denied based 

on a challenged mark has a right to seek cancellation of 

that mark. Id.; Empresa Cubana, 753 F.3d at 1274–75. In 

such a case, by filing a trademark application, the petitioner has attested to using a mark (or having an intent to 

use the mark) in commerce. See 15 U.S.C. § 1051(a)–(b). 

Those petitioners, then, have a commercial interest in opposing or cancelling the registration of a mark that has prevented the registration of their own mark. Indeed, that 

was the case in Australian Therapeutic and Empresa 

Cubana, where, despite not owning a registered U.S. trademark, the petitioners were engaged in the sales and advertising of goods that were adversely affected by the 

challenged marks. See Australian Therapeutic, 965 F.3d at 

1375–76; Empresa Cubana, 753 F.3d at 1271.

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We have also held, albeit pre-Lexmark, that a trade association, as “the watchdog for the industry,” may have a 

right to oppose a mark’s registration where its individual 

members each have a commercial interest in cancelling the 

accused mark. See Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., 823 F.2d 490, 493 (Fed. Cir. 1987). That is, 

in Jewelers, we permitted an organization to oppose the 

registration of a mark on behalf of its individual members

because it established, among other things, that those individual members each had a commercial interest in the 

outcome of the proceeding. Id. at 494–95. That case is distinguishable from the concerns raised here, where a single

partner, with no commercial activity of its own, seeks to 

cancel marks based only on its minority interest in the 

trademark owner. 

Because Appellant has failed to allege any individual 

and legitimate commercial interest that is adversely affected by Appellees’ use of their registered trademarks, its 

claims do not fall within the zone of interests of § 1064.

B. Proximate Causation

Even if Appellant’s claims fell within the zone of interests of § 1064, it cannot satisfy the proximate causation requirement.

Acknowledging that the outer bounds of the proximatecause requirement are “not easy to define,” the Supreme 

Court explained in Lexmark that a harm will be “too remote” from the alleged unlawful conduct if it “is purely derivative of misfortunes visited upon a third person by the 

defendant’s acts.” 572 U.S. at 133 (internal quotation 

marks and citation omitted). The Court explained that,

“while a competitor who is forced out of business by a defendant’s [unlawful conduct] generally will be able to sue 

for its losses, the same is not true of the competitor’s landlord, its electric company, and other commercial parties 

who suffer merely as a result of the competitor’s inability 

to meet its financial obligations.” Id. at 134 (cleaned up).

Case: 23-1383 Document: 46 Page: 15 Filed: 05/23/2024
LUCA MCDERMOTT CATENA GIFT TRUST v.

FRUCTUOSO-HOBBS SL

16

That is essentially the case here. The alleged diminishment in value of Appellant’s ownership interest in 

Hobbs Winery due to Appellees’ use of their marks is suffered only as a consequence of an injury suffered by Hobbs 

Winery itself. That is, absent injury to Hobbs Winery’s 

PAUL HOBBS mark, there can be no injury to Appellant. 

Thus, because Appellant’s alleged injury is merely derivative of any injury suffered by Hobbs Winery, it is too remote 

to provide Appellant with a cause of action under § 1064. 

CONCLUSION

For the foregoing reasons, we hold that Appellant lacks 

entitlement to a statutory cause of action under § 1064. We 

have considered Appellant’s remaining arguments and find 

them unpersuasive. The Board’s dismissal of Appellant’s 

cancellation petition is affirmed.

AFFIRMED

Case: 23-1383 Document: 46 Page: 16 Filed: 05/23/2024