First published February 6, 2013.
The TTAB recently ruled, based on internal reasoning that is entirely justifiable, that if you can’t afford to litigate — as far as is necessary — against a larger, richer adversary, it probably doesn’t pay to litigate at all. The outcome, is, however, maybe a little troubling — but, on the other other hand, not so much, both on its own terms and because it seems to me to correct a substantive wrong in the first place. It’s like this:
As reported by John “Trademark Elite 1000” Welch in this TTABlog post, there was — let’s put aside the underlying substantive details for now, to add to the simulated drama I am attempting to create here — a certain TTAB decision, refusing an opposition by the opposer and allowing registration, that had been appealed, see? The opposer, ever oppositional, appealed that ruling to the U.S. Court of Appeals for the Federal Circuit.
[W]hile the appeal was pending, applicant AFP unilaterally withdrew its application to register. The CAFC then dismissed the appeal as moot and remanded the case to “allow the Board to consider a motion to vacate its decision in the first instance, in accordance with United States Bancorp Mortgage Company v. Bonner Mall Partnership, 513 U.S. 18, 29 (1994), and for any further proceedings deemed appropriate by the Board.” The Board concluded that U.S. Bancorp mandated that the Board’s decision be vacated. . .
AFP argued (without evidentiary support) that it was â€œforcedâ€ to withdraw its application due to the cost of litigation, but the Board found that to be irrelevant. AFP withdrew its application without [Opposer’s] permission, thereby mooting the appeal. Under those circumstances, U.S. Bancorp mandated that the Board’s decision be vacated.
Indeed, to decide otherwise would be manifestly unfair because applicantâ€™s unilateral abandonment of the subject application has frustrated opposerâ€™s statutory right to seek review of a decision it believes to be incorrect. In view thereof, the Boardâ€™s decision is vacated.
I hear it. And this last passage quoted by John really gets the point across. In for a penny, in for a pound, when it comes to litigation whose outcome could, one way or another, could have precedential value to one of the parties involved — which is often going to be the case in an opposition proceeding. Here the now-vacated decision would surely have, absent the vacatur (not “vacation”!), cast a shadow over any future prosecution of similar claims in opposition by the same mark holder. If there is, and indeed there is, a right to review of such a decision, you can’t just take the ball and go home when you’re winning.
Well and good. But, you know me:
Let’s say AFP had, in fact, provided evidence of its assertion that it couldn’t afford to maintain its appeal. We know how expensive that sort of thing can get. Do you really lose all the way after winning so big but just running out of gas?
Yeah, actually, I have no problem with that, and not just for the reason I am going to drop below, but because, yeah. This is TTAB litigation, but the principle applies to regular-old court stuff. If you win at trial, and I think the District Judge blew it, and file an appeal, you can’t just pull the plug on the process because you can’t afford to keep litigating. There’s a distinct chance, after all, that the District Judge did blow it. I certainly have a right to find out, whatever it costs. If you walk away from the process — in this case, withdrawing your application (that one that was unsuccessfully opposed at the TTAB level) — then you lose. I don’t even really understand what AFP thought it was going to accomplish by preventing vactur of the underlying decision, having already withdrawn the application that spurred it. Did AFP think it would have recourse to the decision after it saved up some money and could afford to restart the whole business again?
No, that is not going to happen.
Now, anyway, it’s all just as well, because the underlying decision was one that was very, very hard to understand. Which means that, with all due respect, your LIKELIHOOD OF CONFUSION® blogger thought it was wrong. It certainly was hard to understand. Back to John:
The TTAB has vacated its precedential decision in Rolex Watch U.S.A., Inc. v. AFP Imaging Corporation, 101 USPQ2d 1188 (TTAB 2011) [TTABlogged here]. In its December 2011 decision, the Board had dismissed Rolex’s dilution-by-blurring claim, concluding that Opposer had failed to prove that the applied-for mark ROLL-X for “x-ray tables for medical and dental use” would, despite an “actual association” between the marks, impair the distinctiveness of Opposer’s famous ROLEX mark.
Not to beat a dead horse, but if there’s anything to justify federal trademark dilution — any case — it was, it seems to me, to prevent someone from registering ROLL-X, the legal equivalent of the famous trademark ROLEX, for anything. Anything! (Follow the link to John’s original post about the case.)
So, all’s well that ends well.
I know, it seems that I don’t mind so much when the big guys win when they are parties I have formerly represented (such as Rolex and Vuitton — just saying). Well, maybe that’s why they were my clients! Or something.
But come on — ROLL-X?