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).