On February 23, 2016, the US District Court for the Northern District of Alabama in Board of Trustees of the University of Alabama v. Houndstooth Mafia Enterprises granted the Board of Trustees of the University of Alabama's and Paul Bryant, Jr.'s (Plaintiffs) July 23, 2015 motion to enforce its judgment to vacate a US Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB) decision that the TTAB had refused to set aside ( (N.D. Ala. Feb. 23, 2016)).

In 2013, the TTAB dismissed with prejudice the Plaintiffs' opposition against a trademark application filed by the Defendants, Houndstooth Mafia Enterprises, LLC, and others (Defendants). The Plaintiffs did not appeal the TTAB ruling directly to the US Court of Appeals for the Federal Circuit, electing instead to file a civil action challenging the board’s ruling in the District Court for the Northern District of Alabama (see 15 USC § 1071(b)(1)).

While that appeal was pending, the parties settled the case on the condition that the TTAB dismissal be vacated. As trademark owners who utilize the TTAB in enforcing their marks, the Plaintiffs insisted on this condition because they were concerned about the precedential effect of an unfavorable TTAB decision. The district court approved the settlement and entered a consent judgment on May 27, 2014, vacating the TTAB's decision.

The TTAB took no action on this judgment until June 2015, when it issued an opinion denying the district court's authority to force it to vacate the decision. For more information on that opinion, see Legal Update, District Court Consent Order Settling Case Does Not Require Vacatur of TTAB Decision: TTAB.

In response to the Plaintiffs' July 2015 motion to enforce the 2014 consent judgment, the District Court ordered the vacatur of the TTAB’s precedential decision within 14 days, ruling that:

The court also found that the USPTO misapplied the US Supreme Court's decision in US Bancorp Mortgage Co. v. Bonner Mall Partnership (US Bancorp) and mischaracterized the facts of that case when it denied the court's power to vacate the TTAB decision (513 U.S. 18 (1994)). In US Bancorp, only one party sought to vacate a lower court decision.

Instead, the court applied Major League Baseball Properties, Inc. v. Pacific Trading Cards, Inc. (MLB Properties), where the settlement involved the parties' joint request for vacatur of a lower court's order so the parties could settle their dispute (150 F.3d 149 (2nd Cir. 1998)). Like the parties in MLB Properties, both the Plaintiff and the Defendant wanted to settle but could not with the earlier decision still in place. Accordingly, they met the "exceptional circumstances" US Bancorp required to justify vacatur of the earlier decision.

The court also denied as untimely the USPTO's motion to intervene, filed 15 months after the court's final judgment.