District Court Consent Order Settling Case Does Not Require Vacatur of TTAB Decision: TTAB | Practical Law

District Court Consent Order Settling Case Does Not Require Vacatur of TTAB Decision: TTAB | Practical Law

In The Board of Trustees of the University of Alabama v. William Pitts, Jr., an augmented panel of the Trademark Trial and Appeal Board (TTAB) denied the opposers' request to vacate an earlier TTAB decision dismissing their opposition to an application to register the HOUNDSTOOTH MAFIA trademark despite a district court's final consent order settling an action reviewing that earlier TTAB decision.

District Court Consent Order Settling Case Does Not Require Vacatur of TTAB Decision: TTAB

by Practical Law Intellectual Property & Technology
Published on 10 Jul 2015 • USA (National/Federal)
In The Board of Trustees of the University of Alabama v. William Pitts, Jr., an augmented panel of the Trademark Trial and Appeal Board (TTAB) denied the opposers' request to vacate an earlier TTAB decision dismissing their opposition to an application to register the HOUNDSTOOTH MAFIA trademark despite a district court's final consent order settling an action reviewing that earlier TTAB decision.
On June 23, 2015, an augmented panel of the Trademark Trial and Appeal Board (TTAB) issued a precedential opinion in Board of Trustees of the University of Alabama v. William Pitts, Jr., denying the Board of Trustees' and Paul W. Bryant, Jr.'s (Opposers) request to reopen, vacate and dismiss without prejudice the TTAB's earlier precedential decision dismissing, with prejudice, the Opposers' opposition to an application to register HOUNDSTOOTH MAFIA as a US trademark. In so holding, the TTAB expressly rejected the Opposers' argument that vacating the earlier decision was warranted by a district court's consent order settling the parties' trademark dispute during the course of the decision's judicial review (Opposition No. 091187103 (T.T.A.B. June 23, 2015)).
The TTAB cited the following record as relevant to its decision to deny opposers' motion:
  • In 2013, the TTAB issued a precedential decision dismissing the Opposers' motion to William Pitts Jr.'s and Christopher Blackburn's (Applicants) application to register the mark HOUNDSTOOTH MAFIA for shirts and hats.
  • In that opposition proceeding, Opposers alleged, among other claims, that the Applicants' mark would cause a likelihood of confusion with the University of Alabama's (University) use of a houndstooth pattern in connection with athletic services.
  • After a full trial, the TTAB dismissed the opposition on the grounds that Applicants' use of the formative, MAFIA, in context, did not disparage the Opposers' marks and Applicants' mark was not likely to cause confusion with any of Opposers' marks. In support of its finding of no likelihood of confusion, the TTAB noted that Opposers failed to show that:
    • their houndstooth pattern mark acquired distinctiveness;
    • Applicants' mark was similar to Opposers' marks;
    • there was any evidence that the houndstooth pattern mark functions as an indicator of source or sponsorship for the University's products; or
    • Applicants' mark closely resembled the identity or persona of legendary football coach Paul W. ("Bear") Bryant or the University.
  • In light of the foregoing, the TTAB dismissed with prejudice all of Opposers' claims.
  • Opposers then filed a civil action in the US District Court for the Northern District of Alabama seeking review of the TTAB's decision under Section 21(b) of the Lanham Act (15 U.S.C. 1071(b)).
  • While the civil action was pending, the parties voluntarily settled the case and consented to the entry of a Final Consent Judgment. Under the terms of the consent judgment Applicants assigned all rights in the HOUNDSTOOTH MAFIA mark and application to the University and stipulated with Opposers that:
    • contrary to the TTAB's findings, the houndstooth pattern is widely associated with and a well-known source identifier for the University;
    • Opposers (plaintiffs in the district court action) believe the TTAB's order was clearly erroneous in several material respects; and
    • the TTAB's order should be vacated.
  • The district court issued the Final Consent Judgment and ordered that:
    • the Clerk enter final judgment in favor of the plaintiffs/Opposers;
    • the TTAB's order be vacated; and
    • the "Register of Trademarks" allow the underlying application to proceed to registration once Applicants' assignment of the mark to the University is properly recorded.
  • Shortly after the district court issued the Final Consent Judgment, Opposers filed a request with the TTAB to reopen, vacate and dismiss without prejudice the 2013 TTAB decision, submitting a copy of the Final Consent Judgment with the request.
The TTAB decided to address this request in a precedential opinion, noting that the request raised important public interest and policy issues concerning the propriety of vacating a final TTAB decision based on the parties' entry into a voluntary settlement during the course of that decision's judicial review. The TTAB therefore exercised its discretion to try the merits of the request, which it unanimously denied based on the reasoning set out below.
The TTAB first reviewed, and rejected, the following potential bases for hearing the Opposers' request:
  • The US Supreme Court's ruling in US Bancorp Mortgage Co. v. Bonner Mall Partnership that, absent exceptional circumstances, mootness by reason of settlement does not justify vacatur of a judgment under review (513 U.S. 18, 29 (1994)). The TTAB concluded that the rule of US Bancorp did not directly apply because the TTAB is not an Article III appellate court.
  • FRCP 60(b), subsection 6 which authorizes the federal courts and TTAB to relieve a party from a final judgment, order or proceeding for any reason that justifies relief. This authority was also inapplicable because Opposers did not file their request under the FRCP.
  • Section 21(b) of the Lanham Act, under which the Opposers filed their district court challenge to the TTAB's decision and which empowered the district court, among other things, to authorize the TTAB to take any necessary action, on compliance with the requirements of law. The TTAB ruled that this statutory section similarly provided no authority for the Opposers' request, reasoning that:
    • Section 21(b) requires that the district court adjudicate the issues presented before directing the TTAB to take any action and the court's entry of a Final Consent Judgment settling the action did not satisfy this adjudication requirement;
    • the district court did not order the registration or cancellation of the Applicants' mark; and
    • the TTAB's vacatur of its precedential opinion was not a "necessary action" within the statute.
Because Opposers' request did not implicate Article III jurisdiction, invoke FRCP 60(b) or flow from the authority of Section 21(b), the TTAB considered the request under general equity principles. Balancing the equities, the TTAB concluded:
  • There are no exceptional circumstances, or any other equitable basis, that would be furthered by vacatur.
  • The Final Consent Judgment did not make a determination that the TTAB's 2013 decision was wrong in any respect, but rather, merely recited the opinion of the Plaintiffs/Opposers that the TTAB ruled erroneously.
  • The TTAB intended that its 2013 decision should serve as precedent to guide other trademark practitioners on the issues decided and the Final Consent Judgment pointed to no legal error in that decision.
  • There were no other aspects of the public interest that would be furthered by vacatur or outweigh the TTAB's 2013 decision.
The TTAB therefore denied the Opposers' request to reopen, vacate and dismiss its 2013 decision.
Despite the TTAB's ruling that the Opposers' request lacked basis in law and equity, it acknowledged that the district court's consent judgment did direct the USPTO to allow the Applicants' application for HOUNDSTOOTH MAFIA to proceed to registration. However, it concluded that vacatur and dismissal were not necessary to fulfill this mandate because, since the 2013 decision dismissed the Opposer's opposition registration, the Applicants' assignment of their rights and application in the mark was all that was needed for the application to proceed to registration.