The dispute between the University of Alabama, Paul Bryant Jr., and Houndstooth Mafia stems from the latter’s unlicensed use of a houndstooth pattern and other ‘marks’ that relate to the University and former legendary coach Bear Bryant.
Prior to the September 2013 federal complaint, Alabama & Bryant Jr. (the heir) had previously attempted to oppose Houndstooth Mafia’s trademark registration of the mark shown below. However, in a precedential opinion the TTAB sided with the Mafia – finding that the opposers’ failed to show (a) “acquired distinctiveness in their alleged Houndstooth Pattern”; (b) likely confusion as to source or sponsorship; or (c) that the mark is disparaging. As such, the TTAB dismissed with prejudice.
After losing at the board, the named plaintiffs filed the aforementioned trademark infringement and unfair competition lawsuit.
The parties eventually settled and, as part of the consent decree, the district court ordered vacatur of the TTAB decsion. However, the TTAB refused take any action to vacate its prior decision, writing: “The Final Consent Judgment points to no legal error in our prior decision, and we have not been alerted to any aspect of the public interest that would be furthered by vacatur and would outweigh our initial determination of the precedential value of the prior decision.”
Back in the district court, Alabama then asked for and received a new order from the district court judge — this time expressly ordering the USPTO to vacate its prior determination. The court wrote: “In June 2015, the TTAB essentially (and inexplicably) treated the court’s Order as a request, and issued a decision refusing to comply with this court’s Order.”
The court’s February 23, 2016 order was quite specific:
Within fourteen (14) days of this order, the USPTO Trademark Trial and Appeal Board is ENJOINED TO AND SHALL VACATE its July 23, 2013 Opinion on Opposition No. 91187103, and otherwise take any further action necessary to effectuate this Order and the Court’s May 27, 2014 Final Consent Judgment, including permitting the HOUNDSTOOTH MAFIA & Design Application (Serial No. 77/342,852) to be registered on the Principal Register with the University as its owner.
The USPTO has complied with the order. In a March 3 order, the TTAB issued an order vacating its prior decision and ordering that the HOUNDSTOOTH MAFIA mark be registered (and that its ownership be changed to Univ of Alabama). An April 5, 2016 the mark was registered.
Meanwhile . . . The USPTO has filed its notice of appeal with the 11th Circuit court of appeals its brief will be due May 3, 2016. The agency is likely to challenge the district court’s power to order vacatur under U.S. Bancorp Mortgage Co. v. Bonner Mall Partnership, 513 U.S. 18 (1994).
The notion that a court can force an administrative agency’s law court to vacate its actual legal findings and the entire proceedings in order to help paper over what is nothing more than a private, business-related agreement of parties can’t be correct.
I predict an 11Cir bench slap back at the good judge Proctor.
Mellow, “Administrative Agency.”
Acting like a court.
Not like a jury.
I assume you would not even agree that the “agency” will be subject to collateral estoppel when they are acting like a court.
An agency is above court reversal if it is acting as a sovereign pursuant to a public right. I do not believe that you are proposing that the trademark rights of private individuals are public rights? Because that is exactly what you are proposing with your comment here.
“trademark rights of private individuals are public rights?”
That IS one of the positions offered up (analogizing to the Texas license plate case).
“An agency is above court reversal if it is acting as a sovereign pursuant to a public right. I do not believe that you are proposing that the trademark rights of private individuals are public rights? Because that is exactly what you are proposing with your comment here.”
Sorry Mr. Heller, but that is not exactly what I’m saying.
The agency received no “court reversal”. Certainly it was not “reversed” by the court on its factual/legal findings.
Instead, what the agency received was an order by fiat amounting to, “Hey, you must do what we tell you to, because, well, we like the parties and we agreed we’d help them ‘Make it like it never even happened’. ”
(with apologies to ServePro for borrowing their tagline)
Mellow, understood. However, this was a court appeal of the T.T.A.B. decision albeit settled. The appealing court has jurisdiction to vacate the T.T.A.B. decision. Typically courts do not do so if these parties settle the case. See,U.S. Bancorp Mortgage Co. v. Bonner Mall Partnership, 513 U.S. 18 (1994). link to law.cornell.edu
Yes, to put it another way, how did the Alabama D.C. ever even get jurisdiction over the PTO in this case? This is neither an APA suit against the PTO or an appeal from the PTO. The D.C. could have ordered either of the two parties to the suit to do something, but this was a direct order to the PTO.
“After the TTAB’s ruling, in September 2013, Plaintiffs filed this action appealing that decision. While this action was pending in this court, Plaintiffs and Defendants reached a settlement of the matter.”
Memorandum, at page 1.
So on appeal from TTAB proceeding in Ala. District court.
Talk about forum shopping (even though U of ‘Bama, duh, is located in ‘Bama).*
* Is it really forum shopping then?
I’m checking pacer to see if they actually appealed TTAB decision or the court is just mistaken about the nature of the suit (i.e., U of ‘Bama only filed an infringement suit).
In their complaint the U of ‘Bama invoked 15 USC ss 1071 and 1119 – appeal of TTAB decision adverse to party with right to appeal to CAFC & District courts power over the register of trademarks.
So, the court properly has the jurisdiction to decide the merits. I’m not sure it has the power to order vacater of a decision. It probably is implied in:
sec 1071:
(b) Civil action; persons entitled to; jurisdiction of court; status of Director; procedure
(1) Whenever a person authorized by subsection (a) of this section to appeal to the United States Court of Appeals for the Federal Circuit is dissatisfied with the decision of the Director or Trademark Trial and Appeal Board, said person may, unless appeal has been taken to said United States Court of Appeals for the Federal Circuit, have remedy by a civil action if commenced within such time after such decision, not less than sixty days, as the Director appoints or as provided in subsection (a) of this section. The court may adjudge that an applicant is entitled to a registration upon the application involved, that a registration involved should be canceled, or such other matter as the issues in the proceeding require, as the facts in the case may appear. Such adjudication shall authorize the Director to take any necessary action, upon compliance with the requirements of law. However, no final judgment shall be entered in favor of an applicant under section 1051(b) of this title before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to section 1057(c) of this title.
and/or
1119:
In any action involving a registered mark the court may determine the right to registration, order the cancelation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action. Decrees and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Patent and Trademark Office, and shall be controlled thereby.
Not sure if this helps, but I found this that states that the power to decide the merits at the appeal level includes power of vacatur.
See link to law.cornell.edu
drop by, in U.S. Bancorp Mortgage Co. v. Bonner Mall Partnership, 513 U.S. 18 (1994) the Supreme Court decided that a court could not order vacatur of a decision the losing party had settled. But that case did not consider, I think, the consequences to the trademark owner in a case like this of a decision that the mark involved essentially had no secondary meaning.
It’s really important to read the full decision and understand the motivation here of UofA. The judge describes the vacatur of the decision as being a requirement for UofA specifically to avoid creating precedent before the TTAB that could negatively affect UofA in future actions.
In other words, in filing the opposition with the TTAB, UofA opened Pandora’s Box, looked inside, didn’t like what it saw, and tried to slam the box shut with an unspecified payoff to the Houndstooth Mafia guys. The agreement apparently includes assignment of all rights in the mark to UofA, which appears to solve the present issue – UofA’s opposition is dismissed, HM gets their trademark registration, HM assigns it to UofA, and everyone is happy. Case or controversy resolved, right?
No, UofA says, we want a vacatur order against the USPTO that would protect unspecified future potential interests against administrative precedent. And this is despite the fact that the rights involved in the present case (and assigned to UofA) already became vested because of the existence of the order creating that administrative precedent in the first place.
That is to say that the vacatur of the order is completely unnecessary to effect the court-ordered disposition of the trademark registration, and in fact contradicts it, to the point where the court has to order registration of the trademark over the opposition whose dismissal the court just vacated! And none of this was done with even a single finding of fact related to the merits of the opposition and the decision of the TTAB on that opposition, nor was the USPTO permitted to exercise its statutory right to intervene and defend its own interests.
So, sure, the obstinacy and foot-dragging of the USPTO is an easy target here, but the real question before the 11th Circuit will be whether the district court abused its discretion. Here’s hoping that forms a large part of the discussion here.
The USPTO has “interests?” What interests?
I believe the write-up here indicates this quote from the TTAB:
“The Final Consent Judgment points to no legal error in our prior decision, and we have not been alerted to any aspect of the public interest that would be furthered by vacatur and would outweigh our initial determination of the precedential value of the prior decision.”
Apparently, since the TTAB relinquished to the sterner second Order, they have decided that they do in fact have that “alert.”
Whether the substance of that “alert” is anything new or merely the judicial branch saying “Hey, our order was not a request, but was, you know, an order” – that, I have not bothered to delve into.
Maybe that richer substantive detail is there, maybe it’s not.
U of A is establishing a mark (spending $) – it thought it had secondary meaning, TTAB was adverse. U of A is still establishing secondary meaning for the mark (spending $) – and thinks the TTAB adverse decision is going to cause damage to those efforts. If you understand this aspect of the nature of a mark, the reasons for demanding TTAB vacate is perfectly clear, sound and reasonable. Further, there is even a duty to ‘police’ your mark to avoid loss of secondary meaning. Interesting case. Demonstrates another ‘PTO’ court with a myopic view of the law that it’s narrow charge is the ‘law of marks.’ Many admin courts (and procedures) exhibit this same myopic reasoning on many issues – you know, makes the job easier. FCC v. Nextwave comes to mind. U of A should thank the stars that it is not having the PTO appeal to the CAFC.
Further, there is even a duty to ‘police’ your mark to avoid loss of secondary meaning.
You hear this a lot, especially from trademark owners who are acting unreasonably, but it’s not true. “There is a duty” and “it is often a good idea” are not the same thing.
It must come as a shock to the PTO that they are not above the law.
Ned, you are most correct that the executive branch agency here is not above the law.
This does bring up a more extensive (and longer open question that I have often put to you):
Is there any single branch of the government above the law?
And the related question:
What does your state attorney oath actually state?
Can one get Alabama judges to order the PTO to issue patents to new owners?
If the mark is disparaging towards Christians, the RFRA would presumably come into play.
Then the real fun begins.
Why?
Why not just invoke Slants…?
😉
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