Second Circuit: If you want a court to order the USPTO, ask in your pleadings, not after you win

In a recent decision, the Second Circuit affirmed a district court's decision in a trademark case not to enter an order pursuant to 15 U.S.C. § 1119§ 1119 permits a court to enter an order regarding registrability and cancellation of marks at the USPTO.  The prevailing defendant asked the district court to order the USPTO to dismiss a related cancellation proceeding.  The party had not requested an order under § 1119 in its counterclaims, but instead sought it by way of a Rule 59(e) motion to amend the final judgment in the case.  The district court denied the motion, concluding the defendant could simply raise the issue as a matter of issue preclusion.

The Second Circuit affirmed.  The court held there was no abuse of discretion in denying the Rule 59(e) motion.  Further, the court noted § 1119 is permissive, such that the court was not required to grant such relief.

More detail of Empresa Cubana del Tabaco v. Culbro Corp. after the jump.

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Party defaulting before district court and enjoined cannot attack registration via cancellation

In a decision this week, the Federal Circuit held that a party against whom a default judgment was entered in a trademark infringement case before a district court cannot thereafter petition to cancel the registration at issue before the TTAB.  The TTAB held the claim barred by res judicata.  The court held that res judicata did not apply, because an invalidity counterclaim in the district court was not compulsory under Rule 13, and therefore the party now seeking cancellation was not required to assert the invalidity counterclaim before the district court.  However, the court held that the cancellation would be an impermissible collateral attack on the previous judgment, and affirmed the TTAB's decision on that basis.

Judge Newman, concurring in the judgment, would have affirmed on the same grounds as the TTAB, namely that because the issue of the registration's validity was decided before the district court, res judicata applied to prevent relitigation of the issue.

More detail of Nasalok Coating Corp. v. Nylok Corp. after the jump.

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Fourth Circuit: Subpoena to foreign corporation valid even though no U.S. business contacts

The Fourth Circuit last week addressed a district court's ability to issue subpoenas to foreign witnesses in USPTO administrative proceedings. The court held that a district court may issue a Rule 30(b)(6) subpoena to a foreign corporation who is party to an opposition, even if the party has no officers, directors or managing agents who reside within the jurisdiction.  The decision generated a lengthy dissent that argued that this holding greatly extended the reach of the district court in such interference proceedings and was not supported by the applicable statute and USPTO procedures.

More detail of Rosenruist-Gestao E Servicios LDA v. Virgin Enters., Ltd. after the jump.

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Ninth Circuit: DJ dismissal reversed; concurrent TTAB proceedings, Rule 408 don't warrant dismissal

On Monday, the Ninth Circuit addressed the issue of a federal court's subject matter jurisdiction over a trademark declaratory relief action when an infringement action has not been brought and proceedings related to the trademark are pending at the Trademark Trial and Appeal Board (TTAB).  The district court dismissed the case as not presenting a sufficient case or controversy to support jurisdiction, and also noted that the case should be dismissed under the doctrine of "primary jurisdiction" given the concurrent proceedings at the TTAB.

The court held (1) that a defendant had shown a real controversy in order to establish subject matter jurisdiction, (2) that related proceedings at the TTAB could not be the basis for denying jurisdiction under the doctrine of primary jurisdiction, and (3) that the district court abused its discretion when it declined jurisdiction under 28 U.S.C. § 2201.  In doing so, the court rejected the declaratory judgment defendant's contention that any proof of a "case or controversy" was privileged under Rule 408 for purposes of establishing jurisdiction, as the settlement letters were not offered for one of the enumerated reasons in the Rule.  The court also remanded the case back to a different judge.  

More detail of Rhoades v. Avon Prods., Inc. after the jump.     

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Revised TTAB rules published, some take effect August 31, others November 1

As noted last week, the revised TTAB rules were published in today's Federal Register.  The final rules are somewhat different than those proposed last January.  Some of the new rules include:

  • Opposers/Petitioners will serve copies of the notice of opposition or cancellation petition on the opposing party directly, rather than having the TTAB send out the papers [Revised 37 C.F.R. § 2.105]
  • Adoption of mandatory disclosure requirements, similar to those in Federal Rule 26(a)(1) [Revised 37 C.F.R. § 2.120(a)]
  • Requirement for a discovery conference, that may include participation by a TTAB attorney upon request of a party [Revised 37 C.F.R. § 2.120(b)]
  • Discovery requests may not be sent out by a party until that party has made its initial disclosures [Revised 37 C.F.R. § 2.120(c)]
  • Entry of the TTAB standard protective order in all cases, unless the parties agree to a different order, or one party moves for entry of a different order and it is granted [New 37 C.F.R. § 2.116(g)]

Notably absent from the revised rules was the initially-proposed reduction in the number of interrogatories from 75 to 25.

Several of the new rules, including the rules relating to service of notices of opposition and petitions to cancel and entry of the standard TTAB protective order, take effect the end of this month.

To read the full notice, click here.

The TTABlog provides additional commentary here.

Update (8/21):  The TTAB has posted a chart summarizing the revisions on its website here.

Revised TTAB rules coming soon

The TTABlog reports that the revised TTAB rules initially proposed in a notice of proposed rulemaking on January 17, 2006 are likely to be published in the Federal Register in the next week.  The summary of the rules as initially proposed is as follows:

The United States Patent and Trademark Office (Office) proposes to amend its rules to require plaintiffs in Trademark Trial and Appeal Board (Board) inter partes proceedings to serve on defendants their complaints or claims; to utilize in Board inter partes proceedings a modified form of the disclosure practices included in the Federal Rules of Civil Procedure; and to delete the option of making submissions to the Board in CD–ROM form. In addition, certain amendments clarify rules, conform the rules to current practice, and correct typographical errors or deviations from standard terminology.

If the rules as implemented are the same as those proposed, parties to TTAB proceedings will notice several major differences, including:

  • An initial disclosure requirement
  • Reduction in the number of interrogatories from 75 to 25
  • The standard TTAB protective order entered in every case by default
  • Specific timing for disclosure of expert witnesses and reports

Representatives from the AIPLA, ABA IP section, IPO, and INTA met with the USPTO regarding the proposed rules last July, listing some of the concerns raised by the rules, so the substance of the rules may have changed since initially published for comment back in January.  We'll be watching and post a link to the revised rules when they are available.

To read the full text of the initially-proposed rules, click here

Federal Circuit affirms requirement to amend listing of goods to exclude goods in another class

In the first of two Federal Circuit rulings today, the court affirmed that the USPTO was within its authority when it refused to allow an applicant to rely on the international classification to clarify ambiguities in the listing of goods for a trademark. In affirming the TTAB, the court emphasized the deference due to the USPTO when determining the sufficiency of description of goods and services in a trademark application.

More on In re Omega SA after the jump.

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Federal Circuit affirms dismissal of opposition proceeding for lack of standing

In another nonprecediential ruling today, the Federal Circuit affirmed the TTAB's dismissal of an opposition filed against registration of the Dykes on Bikes mark.

There are two requirements to have standing to file an opposition with the TTAB.  The would-be opposer must have "both a real interest in the proceedings and a reasonable basis for a belief that he would be damaged by its registration."  Here, the parties did not dispute that the opposer, Michael McDermott, had a "real interest," what was lacking was reasonable belief he would be damaged by the registration.

In this case, there were two relevant ways to show the necessary belief of damage.  First, the opposer could show "he possesses a trait or characteristic that is clearly and directly implicated in the proposed mark," or second, that "others also share the same belief of harm from the proposed mark," "demonstrated through surveys, petitions, or affidavits from public interest groups."

McDermott did not meet either test.  Specifically, the court agreed with the TTAB "that the registration of the proposed mark would have no 'implications' for a man," and that "McDermott's opposition papers contain no allegations that his belief is shared by others and no reference to supporting evidence demonstrating such a shared belief."

As a result, the dismissal of the opposition for lack of standing was affirmed.

To read the full decision in McDermott v. San Francisco Women's Motorcycle Contingent, click here.

Coverage of earlier decisions regarding the Dykes on Bikes mark can be found at the TTABlog here (reporting on the TTAB's order dismissing McDermott's opposition for lack of standing), here (withdrawing § 2(a) disparagement refusal), and here (explaining the basis of, and predicting the withdrawal of, the § 2(a) refusal). 

Federal Circuit: less distinctive portions of a mark still considered in likelihood of confusion

In a case decided today, the Federal Circuit reversed the Trademark Trial and Appeal Board's denial of an opposition to registration of a trademark.  Specifically, the court rejected the Board's finding that there was no likelihood of confusion because the Board improperly considered an element present in both marks a "weak component" of the competing marks and that other components of the marks adequately distinguish them, instead of comparing the marks as a whole.  

More details of China Healthways Institute, Inc. v. Wang after the jump.

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"Aspirina" descriptive of analgesic goods; denial of registration affirmed

In a decision today, the Federal Circuit affirmed a decision by the TTAB that the term "ASPIRINA" is descriptive of analgesics, and therefore not subject to trademark protection in the United States absent a showing of secondary meaning.  While the evidence of record was conflicting as to whether ASPIRINA was descriptive, given the deferential standard of review, the panel majority affirmed the decision to deny registration to Bayer.

Judge Newman dissented, and would have given more weight to the fact that ASPIRINA is a registered mark in 34 foreign countries, and the fact that the applicant was policing use of the term online.

More details of In re Bayer Aktiengesellschaft after the jump.

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