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USPTO Not Backing Down From TM Fight With Alabama Judge

The U.S. Patent and Trademark Office has found itself in hot water: fighting back against a federal judge who ordered the Trademark Trial and Appeal Board to erase one of its precedent-setting opinions.

An Alabama federal judge approved a private settlement last year between the University of Alabama and a small T-shirt company that required the TTAB to vacate a ruling it handed down against the university. The board refused this summer, arguing the judge couldn’t overturn a ruling without reviewing it.

The TTAB is fighting back, saying such an outcome would allow parties to improperly use private settlements to wipe out valuable administrative case law simply because they don’t like it.

“It’s an interesting situation that I’ve never seen happen before,” said John L. Welch, a trademark attorney with Wolf Greenfield & Sacks PC and an expert in TTAB proceedings.

The case centers on a trademark application filed by a ‘Bama fan, for a logo with a houndstooth pattern bearing the words “Houndstooth Mafia” to be used on T-shirts and hats. The logo was inspired by the signature houndstooth fedora worn by the late, great Alabama football coach Paul “Bear” Bryant during games.

The school filed an opposition at the TTAB to block the registration on the grounds that the houndstooth pattern itself had come to be closely associated with the school such that it owned common law trademark rights to the design.

A panel of TTAB judges strongly disagreed. In a 78-page precedential opinion dismissing Alabama’s case, the board said that even though the houndstooth design was associated with Bryant and the university, consumers don’t see it as the kind of distinctive source designator that Alabama could protect under trademark law.

Even though the two sides quickly settled their dispute when the “Houndstooth Mafia” mark was assigned to Alabama, Alabama still believed that the TTAB’s decision, was “clearly erroneous in a number of material respects” and “should be vacated.”

The TTAB refused to vacate its ruling. The TTAB said Judge Proctor could only overturn the decision with some kind of judgment that the board had made real legal errors. Indeed, Judge Proctor said he had expressly intended to overrule the board’s decision. “The court got it wrong. It wasn’t even in the same ballpark,” Proctor said of the board’s ruling.

Though the judge’s mind appears made up, government attorneys moved to intervene in the case, likely to appeal the decision if he sticks to his guns. And if briefs filed in recent weeks are any indication, they plan to strongly defend the TTAB’s right to keep its ruling.

Most importantly, the government briefs point out that neither party ever ordered the record from TTAB be sent to Judge Proctor for review, meaning he couldn’t possibly have fully reviewed the board’s decision.

Experts say the government has reason to fight: Precedential opinions are hugely important to the wider trademark community and policy goals of the agency, and the TTAB should only be forced to toss them if a judge rules on appeal that they’re legally incorrect — not because two parties say they don’t like them.

“I don’t see how a court can allow two parties to just throw out a decision,” Welch said. “It’s kind of crazy to let two parties decide that, on behalf of everyone in the country, ‘We don’t like that decision, so we’ll give you some money and we’ll wipe it off the books.’”

For more information, see Law360.

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