Last year’s Supreme Court’s decision in B&B Hardware raised the stakes in opposition proceedings when it stated that TTAB rulings may have preclusive effects in subsequent federal district court litigation. As litigants and practitioners are still assessing the consequences of that landmark decision, an unexpected confrontation took place between the Board and the Federal District.
The quarrel happened only a few months after B&B Hardware, and stemmed from the TTAB’s refusal to uphold an order to vacate a previous decision of the Board, in response to a request submitted by the Board of Trustees of the University of Alabama (the “Alabama BOT”). The Alabama BOT’s request was filed pursuant to a final consent judgment entered by the Alabama District Court. The TTAB’s refusal to vacate its prior decision was not taken well.
Recently, Federal Judge R. David Proctor issued an Order requiring the U.S. Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board (“TTAB”) to vacate, within two weeks, its precedential opinion that granted Houndstooth Mafia Enterprises LLC the trademark “Houndstooth Mafia” over the opposition filed by the Board of Trustees of the University of Alabama (“University”) and Paul W. Bryant Jr., son of legendary football coach Paul W. Bryant, that claimed right to the houndstooth pattern. Memorandum Opinion, Board of Trustees of the University of Alabama, et al. v. Houndstooth Mafia Enterprises LLC et al., 7:13-cv-01736 (N.D. Ala. Feb. 23, 2016), ECF 34.
Back in 2013, the TTAB had denied an opposition filed by the Alabama BOT, and stated that no likelihood of confusion exists between the houndstooth pattern worn by its legendary football coach Paul Bryant and the HOUNDSTOOTH MAFIA trademark.
In response, the Alabama BOT filed a de novo lawsuit before the federal district court for the District of Northern Alabama under 15 U.S.C. § 1071(b)(1). During the appeal, the parties reached a court approved legal settlement that gave the University and Bryant ownership of the Houndstooth Mafia logo and called for the vacatur of the TTAB’s precedential 2013 decision. The parties submitted the court’s Final Consent Judgment to the TTAB, but the TTAB took no action for more than a year. The TTAB did not vacate its decision, nor ask the district court to reconsider its ruling, nor did the TTAB file an appeal to the Eleventh Circuit.
Finally, in June 2015, the TTAB, in a rare decision taken by an augmented panel, “treated the court’s Order merely as a request, and issued a decision refusing to comply.” Following the TTAB’s June 2015 decision, on July 23, 2015, the University and Bryant filed their motion in the federal district court for the district of Northern Alabama to enforce the court’s Final Consent Judgment. Following the court’s hearing on that motion, Michelle K. Lee (“Lee”), the Undersecretary for the Intellectual Property and Director of the USPTO and TTAB only then filed a motion to intervene.
In the Opinion, the Court held that the University and Bryant’s motion to enforce the Final Consent Judgment was due to be granted. The court reasoned that (1) the USPTO did not have the authority to ignore a reviewing court’s order: “an administrative body (like the TTAB) is similarly constrained by a district court’s decision made while that court is acting as an appellate court reviewing a decision of the TTAB;” and (2) the USPTO’s position that “its ‘precedential’ decision does not become moot based on the parties’ settlement” was wrong on the merits. Finally, the court held that Lee’s Motion to intervene was untimely, and that “any right to intervene in this long-closed action has been waived.”
The relationship between the federal courts and the TTAB is attempting to find a new equilibrium following B&B Hardware. Judge Proctor’s statement that the TTAB “misapprehend[ed] its position in relation to a district court’s appellate review pursuant to Section 1071(b)” appears to put a stop to any aggrandizement of the TTAB’s prerogatives.