102 Nature of Board Proceedings
102.01 Jurisdiction of Board
The Trademark Trial and Appeal Board is an administrative tribunal of the United States Patent and Trademark Office. The Board is empowered to determine only the right to register. [ Note 1.] The Board’s determination of registrability does not require in every instance a decision on every pleaded claim, and the Board uses its discretion to decide only those claims necessary to enter judgment and dispose of the case. [ Note 2.]
The Board is not authorized to determine the right to use, nor may it decide broader questions of infringement or unfair competition. [ Note 3.]
The Board, being an administrative tribunal, has no authority to declare any portion of the Act of 1946, or any other act of Congress, unconstitutional. [ Note 4.] But this does not mean that parties who want to raise challenges to an act of Congress or other Constitutional claims should not include them in their pleadings. Like other claims, Constitutional claims should be raised before the Board to consider in the first instance to avoid waiving them. [ Note 5.] Where a party raises a constitutional claim, the Board may address the claim or issues raised by the claim, including any factual or statutory premises underlying the claim. [ Note 6.]
NOTES:
1. Trademark Act § 17, 15 U.S.C. § 1067, Trademark Act § 18, 15 U.S.C. § 1068, Trademark Act § 20, 15 U.S.C. § 1070, Trademark Act § 24, 15 U.S.C. § 1092. See Conolty v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302, 1309 (TTAB 2014); Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080, 1082-83 (TTAB 2014).
2. Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171 (TTAB 2013).
3. FirstHealth of the Carolinas Inc. v. CareFirst of Md. Inc., 479 F.3d 825, 81 USPQ2d 1919, 1921 (Fed. Cir. 2007) (quoting TBMP); Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car Inc., 300 F.3d 1333, 66 USPQ2d 1811, 1819-20 (Fed. Cir. 2003) (no jurisdiction to decide issues arising under state dilution laws), aff’g 62 USPQ2d 1857, 1858 (TTAB 2002); Person’s Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1481 (Fed. Cir. 1990) (Board cannot adjudicate unfair competition issues); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591 (TTAB 2011) (no authority to determine the right to use, or the broader questions of infringement, unfair competition, damages or injunctive relief); McDermott v. San Francisco Women’s Motorcycle Contingent, 81 USPQ2d 1212, 1216 (TTAB 2006) ("[T]he Board’s jurisdiction is limited to determining whether trademark registrations should issue or whether registrations should be maintained; it does not have authority to determine whether a party has engaged in criminal or civil wrongdoings."), aff’d unpub’d, 240 F. App’x 865 (Fed. Cir. July 11, 2007), cert. denied,, 552 U.S. 1109 (2008); Carano v. Vina Concha Y Toro S.A., 67 USPQ2d 1149, 1151-52 (TTAB 2003) (no jurisdiction to determine copyright infringement; opposer’s claim that applicant neither owns nor is entitled to use mark was not separable from opposer’s copyright claim); Ross v. Analytical Technology Inc., 51 USPQ2d 1269, 1270 n.2 (TTAB 1999) (no jurisdiction over unfair competition claims); Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1771 n.5 (TTAB 1994) (no jurisdiction over claims of trademark infringement and unfair competition), aff’d mem., 108 F.3d 1392 (Fed. Cir. 1997); Kelly Services Inc. v. Greene’s Temps. Inc., 25 USPQ2d 1460, 1464 (TTAB 1992) (not empowered to render declaratory judgment); Andersen Corp. v. Therm-O-Shield International, Inc., 226 USPQ 431, 432 n.5 (TTAB 1985) (may not entertain any claim based on Trademark Act § 43(a)); Electronic Water Conditioners, Inc. v. Turbomag Corp., 221 USPQ 162, 163-64 (TTAB 1984) (unfair competition and Trademark Act § 43(a) claims are outside the Board’s jurisdiction); Hershey Foods Corp. v. Cerreta, 195 USPQ 246, 252 (TTAB 1977) (determination of whether opposer is guilty of unfair business practices is not within the province of the Board); Yasutomo & Co. v. Commercial Ball Pen Co., 184 USPQ 60, 61 (TTAB 1974) (no jurisdiction to address anti-trust issues); American-International Travel Service, Inc. v. AITS, Inc., 174 USPQ 175, 179 (TTAB 1972) (no jurisdiction to determine whether opposer violated criminal statute).
But see Loglan Institute Inc. v. Logical Language Group Inc., 962 F.2d 1038, 22 USPQ2d 1531, 1534 (Fed. Cir. 1992) (Board may have erred in stating that it lacked jurisdiction over equitable defenses which were based on allegations of trademark infringement and unfair competition); Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641, 647 (Fed. Cir. 1983) (regarding Board’s authority to consider an agreement, its construction, or its validity if necessary to decide the issues properly before it, including the issue of estoppel); Knickerbocker Toy Co. v. Faultless Starch Co., 467 F.2d 501, 175 USPQ 417, 423 (CCPA 1972) (Board is not precluded from passing on the validity of a copyright if it is necessary to do so in the course of the exercise of its statutory jurisdiction); Diaz v. Servicios De Franquicia Pardo’s S.A.C., 83 USPQ2d 1320, 1326 (TTAB 2007) (Board has jurisdiction over assertion of priority under Article 7 of the Pan American Convention because it pertains expressly to the registrability of marks and priority rights based on use); M-5 Steel Manufacturing Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1094-95 (TTAB 2001) (contractual estoppel considered); Boral Ltd. v. FMC Corp., 59 USPQ2d 1701, 1702 (TTAB 2000) (noting that by rule change effective August 5, 1999, the 1946 Act was amended to allow parties to bring dilution claims under Trademark Act § 43(c) in opposition and cancellation proceedings); British-American Tobacco Co. v. Philip Morris Inc., 55 USPQ2d 1585, 1589 (TTAB 2000) (a claim under Article 8 of the Pan American Convention is within the jurisdiction of the Board because it pertains expressly to the registrability of marks and provides for the cancellation of registrations).
See also The Scotch Whiskey Association v. United States Distilled Products Co., 13 USPQ2d 1711, 1715 (TTAB 1989), recon. denied, 17 USPQ2d 1240, 1243 (TTAB 1990) (Board cannot consider claims of unfair competition standing alone, but can consider such claims in determining the registrability of a mark, that is, in determining a separate, properly pleaded ground for opposition or cancellation), dismissed, 18 USPQ2d 1391, 1394 (TTAB 1991) (where petitioner did not plead a separate ground on which to base the petition to cancel, petitioner’s claims under Articles 10 and 10bis of the Paris Convention could not be considered), rev’d on other grounds, 952 F.2d 1317, 21 USPQ2d 1145 (Fed. Cir. 1991).
4. In re District of Columbia, 101 USPQ2d 1588, 1602 (TTAB 2012) (no authority to declare provisions of the Trademark Act unconstitutional), aff’d sub nom. In re City of Houston, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013); Blackhorse v. Pro-Football Inc., 98 USPQ2d 1633, 1638 (TTAB 2011) (same); Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1710 (TTAB 1999) (same), rev’d on other grounds, 284 F. Supp.2d 96, 68 USPQ2d 1225 (D.D.C. 2003); Hawaiian Host, Inc. v. Rowntree MacKintosh PLC, 225 USPQ 628, 630 (TTAB 1985) (no authority to declare Trademark Act § 44(e) unconstitutional); Electric Storage Battery Co. v. Mine Safety Appliances Co., 143 USPQ 163, 167 (TTAB 1964) (no authority to find Trademark Act § 23 unconstitutional).
5. Elgin v. Department of Treasury, 567 U.S. 1, 22-23 (2012) (noting that an agency could "apply its expertise" to the "many threshold questions that may accompany a constitutional claim," and that an agency’s "statutory interpretation could alleviate constitutional concerns"); In re DBC, 545 F.3d 1373, 1378-80 (Fed. Cir. 2008) (holding that a party forfeited an Appointments Clause challenge that it failed to present to the agency in the first instance).
6. In re ADCO Industries-Technologies L.P., 2020 USPQ2d 53786, at *9-11 (TTAB 2020) (addressing applicant’s argument that 15 U.S.C. §§ 1052(a) and (c) are unconstitutional because they violate the First Amendment to the United States Constitution).
102.02 Types of Board Proceedings
The Board has jurisdiction over four types of inter partes proceedings, namely, oppositions, cancellations, interferences, and concurrent use proceedings.
An opposition is a proceeding in which the plaintiff seeks to prevent the issuance of a registration, in whole or in part, of a mark on the Principal Register. "Any person who believes that he would be damaged by the registration of a mark" may file an opposition thereto, but the opposition may be filed only as a timely response to the publication of the mark, in the Official Gazette of the United States Patent and Trademark Office. [ Note 1.] See TBMP § 303 (Who May Oppose or Petition to Cancel).
A cancellation proceeding is a proceeding in which the plaintiff seeks to cancel an existing registration, in whole or in part, of a trademark on the Principal Register or the Supplemental Register. A petition for cancellation may only be filed after the issuance of the registration. A petition for cancellation may be filed by "any person who believes that he is or will be damaged by the registration" of the mark. [ Note 2.] See TBMP § 303 (Who May Oppose or Petition to Cancel).
An interference is a proceeding in which the Board determines which, if any, of the owners of conflicting applications (or of one or more applications and one or more registrations which are in conflict), is entitled to registration. [ Note 3.] The proceeding is declared by the Office only upon Petition to the Director showing extraordinary circumstances therefor, that is, that the party who filed the petition would be unduly prejudiced without an interference. [ Note 4.] See TBMP § 1002 (Declaration of Interference). Ordinarily, the availability of an opposition or cancellation proceeding is deemed to prevent any undue prejudice from the unavailability of an interference proceeding. [ Note 5.] An interference that has been declared by the Director is not instituted by the Board until after all of the marks that are to be involved in the proceeding have been published in the Official Gazette for opposition. See TBMP § 1003. For further information, see TBMP Chapter 1000 (Interferences).
A concurrent use proceeding is a proceeding in which the Board determines whether one or more applicants is entitled to a concurrent registration on the Principal Register, that is, a registration with conditions and limitations, fixed by the Board, as to the mode or place of use of the applicant’s mark or the goods and/or services on or in connection with which the mark is used (usually, a concurrent registration is restricted as to the territory which it covers). See TBMP § 1101.01. The proceeding may be initiated only through the filing of an application for registration as a lawful concurrent user, and is instituted by the Board only after each of the one or more involved applications has been published for opposition in the Official Gazette, and all oppositions thereto (if any) have been withdrawn or dismissed. See TBMP § 1102.01 and TBMP § 1105. For further information, see TBMP Chapter 1100 (Concurrent Use Proceedings).
The Board also has jurisdiction over ex parte appeals. Those are, appeals from an examining attorney’s final refusal to register a mark in an application and appeals after issuance of a final Office action in an expungement or reexamination proceeding. [ Note 6.] See TBMP Chapter 1200 (Ex Parte Appeals from Refusals of Applications) and TBMP Chapter 1300 (Ex Parte Appeals from Expungement and Reexamination of Registration Proceedings).
NOTES:
1. Trademark Act § 13, 15 U.S.C. § 1063, Trademark Act § 12(a), 15 U.S.C. § 1062 (a), Trademark Act § 18, 15 U.S.C. § 1068.
2. Trademark Act § 14, 15 U.S.C. § 1064, Trademark Act § 18, 15 U.S.C. § 1068, Trademark Act § 24, 15 U.S.C. § 1092.
3. Trademark Act § 16, 15 U.S.C. § 1066, Trademark Act § 18, 15 U.S.C. § 1068.
4. Trademark Act § 16, 15 U.S.C. § 1066; 37 C.F.R. § 2.146(a)(4).
5. Removal of Rules Governing Trademark Interferences, 82 Fed. Reg. 48469, 48470 (Oct. 18, 2017).
6. Trademark Act § 12(b), 15 U.S.C. § 1062(b), Trademark Act § 20, 15 U.S.C. § 1070; 37 C.F.R. § 2.141, 37 C.F.R. § 2.142.
102.03 General Description of Board Proceedings
An inter partes proceeding before the Board is similar to a civil action in a federal district court. There are pleadings (at least in an opposition or cancellation proceeding); a wide range of possible motions; conferencing; disclosures; discovery; trial; briefs; and, if requested, an oral hearing, followed by a decision on the case. [ Note 1.] However, because the Board is an administrative tribunal, its rules and procedures necessarily differ in some respects from those prevailing in the federal district courts. [ Note 2.] See also TBMP § 502.01 (Available Motions) and TBMP § 702 (Pretrial Disclosures; Manner of Trial; and Introduction of Evidence). The principal difference is that proceedings before the Board are conducted in writing, and the Board’s actions in a particular case are based upon the written record therein. For example, the Board does not preside at the taking of testimony. Rather, all testimony is taken out of the presence of the Board during the assigned testimony periods, and the written transcripts thereof, together with any exhibits thereto, are then filed with the Board. Indeed, a party to a proceeding before the Board need never come to the offices of the Board at all, unless the Board requests that the parties meet with the Board at its offices for a pretrial conference pursuant to 37 C.F.R. § 2.120(j), or unless the party wishes to argue its case at oral hearing (an oral hearing is held only if requested by a party to the proceeding). Parties may stipulate to expediting the proceeding in whole or in part utilizing Accelerated Case Resolution (ACR). See TBMP § 528.0 5 (a)(2), TBMP § 702.04, and TBMP § 705.
An ex parte appeal, being appellate in nature, is a much simpler and shorter procedure, involving only the filing of briefs by the applicant or registrant and an examining attorney, and, if requested by the applicant or registrant, an oral hearing. See TBMP Chapter 1200 (Ex Parte Appeals from Refusals of Applicantions) and TBMP Chapter 1300 (Ex Parte Appeals from Expungement and Reexamination of Registration Proceedings).
"The Trademark Trial and Appeal Board shall include the Director, Deputy Director of the United States Patent and Trademark Office, the Commissioner for Patents, the Commissioner for Trademarks, and [the] administrative trademark judges...." [ Note 3.] This Manual refers to these statutory members of the Board collectively as "judges."
Interlocutory motions, requests, conceded matters, and other matters not actually or potentially dispositive of a proceeding may be acted upon by a single Board judge, or by a single interlocutory attorney ("attorney") or paralegal to whom such authority has been delegated, and certain conceded and non-dispositive matters may be acted on automatically by ESTTA. [ Note 4.] Decisions on the merits of a case, and on complex or contested motions that are potentially dispositive of the case, are rendered by a panel of at least three Board judges. [ Note 5.] Stipulations or consented (or uncontested) motions to dispose of the proceeding in a certain manner may be decided per curiam by the Board. [ Note 6.] Institution orders, stipulated scheduling motions, issuance of notices of default, and other administrative matters may be acted upon by Board paralegals or may be administered through ESTTA. Motions disposed of by orders entitled ‘‘By the Trademark Trial and Appeal Board’’ have the same legal effect as orders by a panel of three Administrative Trademark Judges of the Board. [ Note 7.] The parties must enter their changes of address and representation using ESTTA. For further information regarding ESTTA, see TBMP § 110.
NOTES:
1. See B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988) (USPTO rules governing the procedures are designed to approximate the proceedings in a courtroom trial).
2. See B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S.138, 135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015); Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988); La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234, 235 (Comm’r 1976) ("The procedures followed by the Board are not like the procedures in a courtroom and the applicability of the Federal Rules of Civil Procedure must be judged in that light....").
3. Trademark Act § 17(b), 15 U.S.C. § 1067(b).
5. 37 C.F.R. § 2.129(a), 37 C.F.R. § 2.142(e)(1). See Fifth Generation Inc. v. Titomirov Vodka LLC, 2019 USPQ2d 418666, at *3 (TTAB 2019) (Board will not decide potentially dispositive motion by telephone; such motions must issue by panel or per curiam).
6. See Fifth Generation Inc. v. Titomirov Vodka LLC, 2019 USPQ2d 418666, at *3 (TTAB 2019) (potentially dispositive motions may issue per curiam).