Impacts and Implications of the PTO’s Unprecedented Appeal in Board of Trustees of the University of Alabama v. Houndstooth Mafia Enterprises, LLC
The University of Alabama and the son of the University’s famous former football coach Bear Bryant opposed an application to register a trademark comprising the words “The Houndstooth Mafia” filed by a group of University of Alabama football fans who had sold a few tee-shirts bearing that alleged trademark. After protracted proceedings, the Trademark Trial and Appeal Board (“the TTAB”) entered a judgment against the University and Coach Bryant’s son, ruling in a precedential opinion that neither one had acquired any enforceable trademark rights in the Houndstooth pattern or the word “Houndstooth”. Rather than either giving up or filing an appeal to the United States Court of Appeals for the Federal Circuit, the University and Coach Bryant’s son brought a 15 USC 1071(b) action for quasi de novo review of the board’s decision in the United States District Court for the District of Alabama. At that point, the football fans and their pro bono attorney gave up and entered into an agreement with the University and Coach Bryant’s son whereby they assigned their application to the University. However, they did more than that: they entered into an agreement that allowed the University to present to Judge Proctor a consent judgment that, among other things, ordered the TTAB to vacate its precedential opinion. The TTAB initially refused to vacate its precedential opinion. However, after Judge Proctor issued a scathing opinion asserting that, as Article I judges, they had to do whatever he, an Article III judge, told them to do, the TTAB vacated its opinion -- but the PTO then appealed from Judge Proctor’s Order. And there’s more! After having appealed, the PTO voluntarily dismissed its appeal. What’s going on here, and what’s likely to happen next?
In the LIVE Webcast, a panel of thought leaders assembled by The Knowledge Group will provide detailed analyses of the background of this fascinating case and the case itself, followed by their predictions of what is likely to happen when this issue arises again – as it surely will!
Chico Gholz, Senior Counsel
Oblon, McClelland, Maier & Neustadt, LLP
- The PTO argued below that this is “an issue of first impression” -- but it’s not. What’s different is that this time the PTO initially chose to appeal rather than to cave.
- The same or very similar issues have arisen multiple times from consent judgments entered in 35 USC 146 actions rather than in 15 USC 1071(b) actions, but the PTO never took the issue up.
- Why did the director at least initially defend the ATJs when her predecessors did not defend the APJs?
- B&B Hardware v. Hargis Industries insures that that this issue will continue to arise in 15 USC 1071(b) actions.
Alan S. Cooper, Of Counsel
Westerman, Hattori, Daniels & Adrian, LLP
- THE OPPOSED APPLICATION
- The opposed application to register the mark HOUNDSTOOTH MAFIA & Design shown below for shirts was filed by William Pitts Jr. and Christopher Blackburn based on a claim of first use on September 1, 2007:
- The prefix portion of mark HOUNDSTOOTH was disclaimed.
- Opposition was filed by the University of Alabama (UOA) and Paul Bryant Jr., the son of “Bear” Bryant, the famous Alabama football coach at Alabama from 1958 to 1982 based on claim of enforceable trademark rights in the houndstooth design on Bear Bryant’s fedora hat worn at games.
- Predicate: The design on Bear Bryant’s signature hat is instantly recognized symbol that identifies the UOA and Bear Bryant.
- While UOA obtained several Alabama state registrations, there was no federal registration of the houndstooth pattern as a design mark
- Grounds for Opposition
- Likelihood of confusion under § 2(d) of the Federal Trademark Act (FTA)
- Falsely suggests a connection under § 2(a) of the FTA
- Disparagement under § 2(a) of the FTA
- Decision on Merits: on July 23, 2015 the Trademark Trial and Appeal Board (TTAB) entered 75 page precedent decision dismissing opposition.
- Sec. 2(d) likelihood of confusion claim was rejected on following grounds:
- Opposers’ failed to introduce evidence sufficient to establish common law trademark rights in the Houndstooth Pattern design
- Rather, UOA’s use of Houndstooth Pattern was simply to commemorate Coach Bear Bryant rather that serve as indication of origin
- Thus, the opposers’ evidence did not get it in the “end zone” in terms of establishing any proprietary trademark rights in Houndstooth Pattern design
- Sec. 2(a) false suggestion of connection was rejected based on following determinations:
- No basis for concluding that HOUNDSTOOTH MAFIA & Design mark closely approximates UOA’s identity.
- No basis for concluding that HOUNDSTOOTH MAFIA & Design mark closely approximates the identity or persona of Coach Bear Bryant.
- Sec. 2(a) disparagement was rejected based on following determinations:
- Consumers do not associate the houndstooth pattern with UOA or Coach Bear Bryant
- Inclusion of suffix MAFIA would not result in UOA or Coach Bear Bryant being associated with organized crime because there is more plausible meaning of MAFIA in this context, namely, a tightly knit group of trusted associates.
- SEC. 21(b) APPEAL AND SETTLEMENT
- On September 29, 2013, the UOA and Bryant filed a de novo appeal under § 21(b) of the FTA in the U.S. District Court for the Northern District of Alabama seeking dismissal of TTAB’s decision dismissing opposition.
- Parties reached a settlement which resulted in the May 15, 2014 assignment of the mark HOUNDSTOOTH MAFIA & Design and the opposed application to the UOA.
- Pursuant to the settlement, the District Court entered a Final Consent Judgment on May 27, 2014 which provided that:
- Based on the assignment of Defendants’ trademark rights to the Plaintiffs, the application should proceed to registration as owned by UOA once the assignment is recorded in the U.S. Patent and Trademark Office (USPTO)
- TTAB is directed to vacate its decision dismissing the opposition
- One probable reason that the settlement required the TTAB’s decision to be vacated is that the UOA and Bryant have a pending cancellation proceeding against Registration No. 3,993,520 of the following Elephant Design mark (which incorporates a houndstooth design), for various articles of apparel, that likely would be adversely impacted by the TTAB’s decision if it remained in force:
- EFFORTS TO ENFORCE FINAL CONSENT JUDGMENT
- UOA and Bryant filed Request to Reopen, Vacate and Dismiss Opposition Without Prejudice with the TTAB
- Request was based on District Court’s Final Consent Judgment which required the requested action.
- Request noted that the Assignment of the opposed application to the UOA had been recorded with the USPTO.
- TTAB entered a precedent decision denying the Opposers’ Request to Reopen, Vacate and Dismiss Opposition Without Prejudice.
- Decision was rendered by an augmented panel of five TTAB Judgments because of the importance and frequency of post-decision requests to vacate as a result of a settlement.
- TTAB first focused on actions that a District Court is authorized to take in a § 21(b) de novo appeal in the present context, namely:
- An adjudication of the applicant’s entitlement to registration, and
- Authorizing USPTO to take necessary action in compliance with legal requirements.
- TTAB concluded that Final Consent Judgment was flawed in part because it did not involve an adjudication based on record evidence.
- Although the Final Consent Judgment directed the TTAB to allow the opposed application to proceed to registration because the opposition had been mooted by the assignment to the UOA, the TTAB found that such action is not a directive that requires the TTAB decision to be vacated.
- The TTAB reasoned that vacating its precedential opinion is not a “necessary action” within the meaning of § 21(b) because the assignment -- that which would allow the issuance of a registration to the UOA -- could be processed without vacating the opinion.
- Finally, because the Final Consent Judgment does not reflect any determination by the District Court that the dismissal of the opposition was wrong in any respect, the TTAB denied the Opposers’ Request to Reopen, Vacate and Dismiss the opposition.
- Plaintiff’s Motion in the District Court Seeking to Enforce Final Consent Judgment
- Following TTAB’s denial of their Request to Reopen, Vacate and Dismiss the opposition, the Plaintiffs filed a motion in the District Court based on the All Writs Act, 28 USC § 1651, requesting the District Court to issue an Order specifically directing the TTAB to vacate its decision.
- The All Writs Act authorizes all Article III courts to issue all writs necessary in aid of their jurisdiction and consistent with principles of law.
- At this stage, the USPTO filed a motion seeking leave to intervene.
- District Court granted the Plaintiffs’ motion to enforce the Final Consent Judgment and required TTAB to vacate its decision within fourteen days.
- TTAB is constrained by District Court’s order to vacate when the District Court is acting as an appellate court in the context of a § 21(b) appeal.
- TTAB’s rationale for ignoring Final Consent Judgment was flawed because it was based on a misapplication of the Supreme Court’s decision in U.S. Bancorp Mortgage Co. v. Donner Mall Partnership, 513 U.S. 18 (1994), which did not involve an agreement by the parties to vacate the decision below.
- District Court also denied the USPTO’s motion to intervene as untimely and because any right to intervene had been waived.
- TTAB Order Vacating Decision
- On March 3, 2016, the TTAB entered an Order vacating its decision in compliance with the District Court’s Order and remanded the opposed application to the Examining Attorney to issue the registration to the UOA in accordance with the assignment.
- But TTAB reserved the right of the USPTO to seek an appellate review of the District Court’s Order
- USPTO’s Appeal to the Eleventh Circuit
- On April 11, 2016, the USPTO filed an appeal with the Eleventh Circuit presenting the following issues:
- Whether the District Court erred in denying the USPTO’s motion to intervene in the § 21(b) action.
- Whether the District Court erred in enjoining the USPTO to vacate its precedential opinion based on a settlement agreement between private parties.
- On April 29, 2016, the USPTO filed an unopposed motion to voluntarily dismiss its appeal to the Eleventh Circuit, but no action has been taken yet as a result of that motion.
- On April 11, 2016, the USPTO filed an appeal with the Eleventh Circuit presenting the following issues:
- UOA and Bryant filed Request to Reopen, Vacate and Dismiss Opposition Without Prejudice with the TTAB
Philip G. Hampton, II, Senior Counsel
Haynes and Boone, LLP
- The district court decision was not a valid, final judgment
- The district court made no findings of fact contrary to TTAB’s findings
- The district court decision violated the Administrative Procedure Act
- The district court failed to follow the Supreme Court’s guidance in U.S. Bancorp Mortgage Co
- Vacatur is limited to judgments whose review is prevented by happenstance
- Mootness by reason of settlement does not justify vacatur
- The district court did not take into account the public interest (of TTAB precedential decision)
David Boundy, Partner
Cambridge Tech Law
The PTO (and TTAB/PTAB) is not an Article III court. For example:
- Rule making—agencies must follow rule-making procedure specified by the administrative law; unlike an Article III court, agencies cannot promulgate “rules” by merely pronouncing them into existence
- The binding effect of “precedential decisions” is somewhat different
- Procedures and scope for court/agency review are quite different than for court/court review of lower Article III courts.
Houndstooth Mafia highlights and illustrates some of the differences.
Administrative law presents a rich set of tools that are useful during intra-PTO proceedings before the TTAB and PTAB, and during judicial review, to advance a client’s interest. Because the PTO Solicitor’s Office has very little expertise in this area, administrative law can give a party a real advantage.
Who Should Attend:
- Trademark Lawyers
- Trademark Owners
- Trademark Litigators
- IP Counsel and Lawyers
- Legal Advisers
- In-house Counsel
- IP lawyers that practice before the PTAB and TTAB, and seek to exploit the tools of the Administrative Procedure Act
- Other related/interested Professionals and Organizations
Charles (Chico) L Gholz is a Senior Counsel in Oblon McClelland Maier & Neustadt LLP’s litigation and patent interferences practice groups, specializing in patent interferences. In addition to general patent litigation, he is particularly skilled at handling patent interferences under 35 USC § 135 before the Patent Trial and Appeal Board (“PTAB”) and court review of decisions by the PTAB. He handles both appeals to the Federal Circuit under 35 USC § 141 and civil actions in district courts under 35 USC § 146.
Mr. Gholz represents a wide variety of domestic and foreign clients across a range of technologies, including biotechnology, chemicals, electronics, computers, and lasers. He regularly appears before the PTAB, the Federal Circuit, and various district courts. He also counsels on patent validity and patentability, and he has appeared as an expert witness on patent issues.
Prior to joining the firm, Mr. Gholz served as an assistant technical adviser to the Honorable Giles Sutherland Rich of the United States Court of Customs and Patent Appeals (1970 to 1972). A former lecturer in law at George Mason University School of Law, he has written and lectured widely on patent law. In addition, he has co-authored Court of Appeals for the Federal Circuit: Practice and Procedure, LexisNexis, and Patent Practice, Patent Resources Institute.
Mr. Gholz has been ranked in Chambers USA as one of the leading IP attorneys in the state of Virginia. He has been listed in the Biennial Guide to the World’s Leading Patent Law Experts (1997, 1999, 2001, 2003, 2005, 2007, 2009, and 2011) and in Best Lawyers in America (2011 and 2012).
Mr. Gholz clerked for Judge Giles Sutherland Rich of the then Court of Customs and Patent Appeals at the beginning of his legal career. He taught patent law at George Mason University Law School, and for many years has been a member of the Advisory Board of Bloomberg’s Patent, Trademark & Copyright Journal.
Charles (Chico) L Gholz is a Senior Counsel in Oblon McClelland Maier & Neustadt LLP’s litigation and patent interferences practice …
Alan Cooper has practiced many years exclusively in the area of trademark enforcement with particular emphasis on trademark infringement and dilution cases as well as contested proceedings before the Trademark Trial and Appeal Board and counterfeit matters working with U.S. Customs and Border Protection. He taught trademark law as an Adjunct Professor at Georgetown University Law School for twelve years, and has been a faculty member at numerous CLE programs directed to trademark law, and has written a number of articles on topics in the trademark field. He is one the co-authors of the treatise “A Legal Strategist’s Guide to Practice Before the Trademark Trial and Appeal Board” published by the American Bar Association and for many years has been a member of the Advisory Board of the BNA’s Patent, Trademark & Copyright Journal.
Alan Cooper has practiced many years exclusively in the area of trademark enforcement with particular emphasis on trademark infringement and …
David Boundy’s practice focuses at the intersection of administrative law and patent law. David led the teams that quashed the Patent Office’s 2007 continuations, claims, IDS, and appeal rules—he successfully urged the White House Office of Management and Budget to enforce the Paperwork Reduction Act. At Cambridge Technology Law in Cambridge, Mass., David consults on administrative law issues in IPRs, PGRs, and Article III appeals from PTO decisions, advises on IP as a business asset, and prosecutes patent applications. David has a degree in computer engineering from the University of Michigan, and earned his law degree at Columbia Law School. He has practiced at Fish & Richardson, Morgan & Finnegan, and Shearman & Sterling, and was Vice President for Intellectual Property at Cantor Fitzgerald, the NYC bond trading firm.
David Boundy’s practice focuses at the intersection of administrative law and patent law. David led the teams that quashed the …
Philip G. Hampton, II, senior counsel in the Intellectual Property Litigation department of Haynes and Boone, LLP, practices out of Washington, D.C, where he also serves as administrative head of the office. Mr. Hampton has practiced intellectual property law, focusing on patent and trademark prosecution, litigation and counseling, for more than 35 years. Mr. Hampton was the (Assistant) Commissioner for Trademarks at the USPTO from 1994 until 1998, testifying before Congress and representing the United States at various IP diplomatic conferences and international meetings.
Phil has been an expert witness in several trademark infringement actions, and also has served as a Special Master in patent infringement actions for the U.S. District Court for the District of Maryland. He earned his B.S. and M.S degrees in chemical engineering from MIT and his law degree from the University of Chicago School of Law.
Phil has been active in the IP bar, having served on the Board of Directors of American Intellectual Property Law Association, as president of the American Intellectual Property Law Education Foundation, as chair of the IP Section of the National Bar Association and as chair or vice-chair of several committees of the IP section of the American Bar Association. He is also a frequent speaker before bar associations and CLE programs on a wide range of IP topics. Mr. Hampton is admitted to practice in New York and the District of Columbia and before the U.S. Patent and Trademark Office.
Philip G. Hampton, II, senior counsel in the Intellectual Property Litigation department of Haynes and Boone, LLP, practices out of …
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About Oblon, McClelland, Maier & Neustadt, LLP
Oblon is headquartered within steps of the United States Patent and Trademark Office (USPTO), and has an affiliate office in Tokyo, Japan. Oblon is one of the largest law firms in the United States focused exclusively on intellectual property law.
For more than 45 years, Oblon has provided a full range of intellectual property services to companies based in Japan, France, Germany, Italy, the United States and other areas of the world. Many of the firm’s culturally aware attorneys speak several languages, including Japanese, French, German, Mandarin and Korean, to enable more efficient communication with the firm’s global clients. Oblon ’s team of 130+ attorneys, registered patent agents, and technical advisors include some of the country’s most respected practitioners of intellectual property law.
The Firm is consistently recognized as an industry leader, with annual accolades from reputable publications such as U.S. News & Best Lawyers (named “a Best Law Firm” for 2014), Corporate Counsel Magazine (named a “Go-to” law firm by the top 500 U.S. companies), and Intellectual Property Today (ranked #1 on the list of “Top Patent Firms”). The Firm has obtained more U.S. utility patents than any other firm in the world for over 25 consecutive years.
In addition to its renowned patent prosecution practice, the firm has a precedent-setting litigation practice, having litigated cases such as the Festo case before the U.S. Supreme Court. Oblon is also representing Mirowski Family Ventures, LLC in the Medtronic Inc. v. Boston Scientific Corp. et al. Supreme Court case, argued in November 2013. Intellectual Asset Magazine named nine Oblon partners “Top Patent Practitioners,” seven Oblon partners were named to the list of “The Best Lawyers in America” for 2014, and eleven Oblon partners were named “IP Stars” by Managing Intellectual Property Magazine.
Additionally, the Firm’s Post-Grant practice group continues to dominate in the inter partes review proceedings space that has emerged as a result of recent patent reform legislation called the America Invents Act (AIA). Currently Oblon is leading all other firms in terms of the number of such proceedings being handled and the number of different clients being represented.
In late 2012, several of the firm’s Post-Grant partners authored a treatise entitled “Post-Grant Proceedings Before the Patent Trial & Appeal Board,” which is a comprehensive overview of all aspects of post-grant patent practice and in early 2013, the treatise was published by the Practicing Law Institute (PLI). The treatise’s first update, also authored by Oblon partners, is being now in the final stages of being published by PLI.
Oblon is headquartered in an expansive building located adjacent to the USPTO in Alexandria, Virginia, and operates an affiliate office in Japan to serve its large international client base. The firm’s approximately 500 professionals, including nearly 100 attorneys, provide clients across the world a full range of intellectual property law services.
About Westerman, Hattori, Daniels & Adrian, LLP
Westerman Hattori Daniels & Adrian LLP, a Washington, DC-based law firm, offers specialized expertise and experience in all areas of intellectual property law, including prosecution, counseling, and litigation. The Westerman firm has an in-depth understanding of the business and technical underpinnings of the industries we serve. Our trademark practice offers a full range of trademark and brand protection services including clearance, prosecution, transactional matters, enforcement, and litigation in the U.S. District Courts, before the Trademark Trial and Appeal Board and before various domain name dispute tribunals.
About Cambridge Tech Law
Cambridge Technology Law is an intellectual property boutique across the street from MIT in Cambridge Massachusetts. The firm’s lawyers combine the practical business sensibility of expereicned in-house counsel with the legal sophistication of the most prominent national intellectual property and general practice law firms. Our clients appreciate our practical, “get the deal done” business approach to law.
About Haynes and Boone, LLP
Haynes and Boone, LLP is a full service law firm with a national presence and an international reach. With more than 575 lawyers located in Texas, New York, California, Chicago, Denver, Washington, D.C., Shanghai and Mexico City, we are trusted advisors, zealous advocates and creative strategists. We have a client-first philosophy, defining our success as providing exceptional value and practical business-minded solutions to our clients and innovative contributions to their businesses.