District court scolds TTAB, orders TM judgment to be vacated
A US court has ordered the Trademark Trial and Appeal Board (TTAB) to vacate a decision after the board refused to comply with a settlement that had been endorsed by the court.
The dispute in question, a trademark tussle between the University of Alabama’s American football team and a company called Houndstooth Mafia Enterprises, was settled in May 2014.
Under the terms of the settlement, both parties agreed that a previous decision from the TTAB, handed down in 2013, should be vacated and that Houndstooth Mafia would not use a trademark.
In its 2013 decision, the TTAB rejected the university’s opposition to Houndstooth Mafia’s trademark application for the term ‘Houndstooth Mafia’.
Houndstooth Mafia makes clothes that display the houndstooth design, a black and white pattern that originated in Scotland. The application was for a logo that had the words ‘Houndstooth Mafia’ emblazoned on the pattern.
But the university claimed it would infringe patterned trademarks it owns for its football team Alabama Crimson Tide. The team’s late coach Paul Bryant often wore clothes with a houndstooth pattern and the team is associated with the pattern, the university claimed.
The settlement was endorsed by the US District Court for the Northern District of Alabama in 2014 but a three-judge TTAB panel refused to comply with the order.
The TTAB, in a ruling handed down last year, said its precedential decision is not mooted on the basis of a settlement. Furthermore, the TTAB said that the court did not examine the facts of the case.
But in a ruling handed down on February 23, Judge David Proctor dismissed the TTAB’s arguments, stating that it is not a court and “lacks the authority” to ignore an order from a higher court.
Proctor said the TTAB’s questioning of the legal authority of the judgment was “strange” because court decisions are “not merely pieces of paper”.
“Disagreement with an appeallate court’s order (or its rationale) does not justify non-compliance,” he concluded.
