Damages Claims Not Barred by Prior TTAB Cancellation Proceedings

By on December 10, 2021
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Author: Violaine Brunet

The “Ebonys” is a 70s soul group, which helped create the “Philadelphia Sound,” incorporating elements of soul, funk, disco. The group was founded in 1968 by David Beasley (“Beasley”) and other members. William Howard joined the band in the 1990s, but departed after a few years.

In 2012, Howard registered “THE EBONYS,” as a federal trademark registration with the PTO (the “ ‘469 mark”), which prompted Beasley to ask the Trademark Trial and Appeal Board (the “TTAB”) to cancel the registration (the “ ‘469 mark”). However, the TTAB dismissed Beasley’s 2013 and 2017 petitions.

Unsatisfied with the outcomes of the TTAB proceedings, Beasley sued for trademark infringement in federal court in 2019. The District Court granted Howard’s motion to dismiss Beasley’s Complaint on the grounds of claim preclusion. The District Court reasoned that claim preclusion barred Beasley from asserting the claim because it turned on “facts and legal theories [that] were all actually litigated in” the 2017 petition, and Beasley could have raised any priority of use arguments in his 2013 petition. The trial judge further concluded that claim preclusion applied even though Beasley sought a damages remedy that he did not pursue at the TTAB.

Beasley then appealed the trial court’s decision to the Third Circuit Court of Appeals. The central issue of this appeal was whether Beasley’s prior losses in cancellation proceedings before the TTAB precluded Beasley’s Section 43(a) claim (pertaining to damages for trademark infringement) before the District Court. The Court of Appeals held that they do not. Specifically, the appellate court stated that “a limit to claim preclusion applies to cases, like this one, where a plaintiff seeks damages or an injunction in a section 43(a) infringement action after pursuing a cancellation claim before the TTAB.”

The Appeals Court held that the TTAB is “not a general-purpose tribunal for trademark disputes. Instead, it has limited jurisdiction ‘to determine only the right to register’ a trademark and cannot ‘decide broader questions of infringement or unfair competition.’ ” (citations omitted) (emphasis added) “[T]he TTAB’s jurisdiction is narrow,” while the “statutory provision [Section 43(a) infringement action] under which Beasley sues is broad.” (emphasis added).

The Court wrote that “[b]ecause the TTAB has no jurisdiction to consider whether an infringer’s use of a mark damages a petitioner seeking cancellation, and in turn cannot award any remedy beyond cancellation for the injuries a petitioner has suffered. . . a Section 43(a) claim is not one that could have been brought in a TTAB cancellation proceeding.” (emphasis added).

This decision from the Third Circuit provides some comfort and reassurance to litigants that they can bring their claims before the TTAB without fear of waiving their rights to bring any future trademark infringement actions in federal courts, including actions that seek monetary and injunctive relief, which are not available in the TTAB.

On a related note, this Third Circuit decision joined the rulings of the Ninth and Second Circuit, which held that that preclusion is tightly limited to only those issues actually decided on the merits in the TTAB and for which the TTAB has jurisdiction to decide.

About the author: Violaine Brunet is an associate in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. Her practice focuses on litigation matters involving copyright, trademarks, and patents. Ms. Brunet also has experience in international law from her work in the Superior Court of Quebec in Quebec City, Canada. Ms. Brunet’s biography can be found here.

Filed under Trademark Infringement, Trademark Trial and Appeal Board, TTAB

TTAB Considers Internet Archive Evidence in Opposition Proceeding

By on February 24, 2021
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Author: Gregory Brescia

In Spiritline Cruises LLC v. Tour Mgmt. Serv’s, Inc., Oppo. No. 91224000, the TTAB held that use of the Internet Archive tool, known as the “Wayback Machine,” for evidentiary purposes was permitted. In making this determination, the Board addressed hearsay and authentication issues, and held: (1) the evidence fell within the business record hearsay exception; and (2) the affidavit submitted by Spiritline served as an appropriate means to authenticate the Wayback Machine printouts.

Background

Spiritline Cruises LLC (“Spirtline”) opposed the registration of the mark “CHARLESTON HARBOR TOURS,” owned by Tour Management Services, Inc. (“TMS”) for travel tours and boat charter related services. In its Notice of Opposition, Spiritline claimed that the “CHARLESTON HARBOR TOURS” mark is incapable of registration because it is geographically descriptive and has been used in its descriptive manner by many parties, in addition to Spritline, in the marketplace. In response, TMS claimed it made substantially exclusive use of the “CHARLESTON HARBOR TOURS” mark for at least five years prior to filing its application for registration and that the evidence submitted by Spiritline were largely recent uses in order to attempt to block registration of TMS’s application.

To support its claims, Spiritline submitted various printouts utilizing the Wayback Machine to illustrate third-party use of the “CHARLESTON HARBOR TOURS” mark between 2004 and 2015. The purpose of introducing this evidence was to discount TMS’s claim of substantial exclusive use of the “CHARLESTON HARBOR TOURS” mark. The evidence submitted by Spiritline was further accompanied by an affidavit instructing the Board of what the printouts were, how they were acquired, and the relevant dates associated therewith. The specificity provided by Spiritline’s affiant regarding the Internet crawling and archiving process was heavily regarded by the Board and served as a means to obviate authentication issues. Not surprisingly, TMS objected to the introduction of the Wayback Machine evidence claiming it was hearsay; however, the Board overruled and held that the evidence and supporting affidavit qualified under the business record exception. The Board further held that the evidence was properly authenticated and a proper foundation was laid via an affidavit to support the intended evidentiary use. As a result, the Board allowed numerous Internet printouts in to evidence to illustrate not only what they showed on their face, but to establish that TMS did not exercise substantially exclusive control over the “CHARLESTON HARBOR TOURS” mark. In fact, the evidence made it clear that the “CHARLESTON HARBOR TOURS” mark was frequently used on a number of third-party websites without challenge. Ultimately, after review and consideration of the various arguments and evidence submitted throughout the duration of the proceeding, the Board held TMS’s application for “CHARLESTON HARBOR TOURS” should be refused from registration.

The use of the Wayback Machine in this case is important because it provides specific instructions for properly authenticating and admitting such evidence in a TTAB action. As seen in this matter, the Wayback Machine evidence played a paramount role in establishing third party use of the “CHARLESTON HARBOR TOURS” mark. This tool can likewise be used to provide support on issues related to priority of use, abandonment, no bona fide use of the mark at the time of filing an in-use application, fraud, and issues related to a mark becoming generic. This TTAB ruling is instructive on avoiding potential hearsay and authentication related issues when using records from the Wayback Machine.

About the author: Gregory Brescia is a registered patent attorney and a Partner in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. His practice focuses on intellectual property prosecution and litigation. He also counsels clients on intellectual property enforcement and corporate transactions involving formation, compliance, and licensing. Mr. Brescia’s biography can be found here.

Filed under Trademark, Trademark Trial and Appeal Board, TTAB