TTAB Vacates Precedential Decision By Court Order….PTAB Decisions Next?

in 2013 the Trademark Trial & Appeal Board (TTAB) issued  a precedential decision in a trademark opposition between the Board of Trustees of the University of Alabama et al v. William Pitts, Jr. & Christopher Blackburn. In the decision, the TTAB dismissed the opposition of the University against a mark for a logo with a houndstooth pattern with the words “Houndstooth Mafia” for use on T-shirts and hats. (The logo was seemingly inspired by the houndstooth fedora worn by the late Alabama football coach Paul “Bear” Bryant).  The opposition was dismissed as the TTAB determined that the University had no common law rights to a houndstooth pattern. (here)

Rather than appeal the TTAB decision to the Federal Circuit, the University opted to challenge the TTAB decision in a civil action under 15 U.S.C. 1071(b)(1) — in the Northern District of Alabama.  Before that action progressed very far the parties settled, and via consent decree of the Court, agreed that the TTAB decision should be vacated.  More importantly, the consent decree made statements of fact that the houndstooth pattern had become distinctive, which could impact other ongoing TTAB oppositions of the University on the same issue.  The University motioned to vacate the TTAB decision based upon the consent decree (here).  In an expanded panel decision that included the Chief Judge of the TTAB, the motion was unanimously denied. The TTAB determined that a settlement of private parties should not impact a decision of the TTAB absent extraordinary circumstances; especially where precedential.

The Alabama judge strongly disagreed.  In a stinging memorandum, he ordered the TTAB to vacate its Order within 14 days. (here)

The TTAB begrudgingly complied with the more recent Order of the Court, vacating the decision, but reserving the right to pursue the matter further (here).  Given the potential for the consent decree to interfere with other pending TTAB cases and procedure, it is likely the PTO will pursue the matter.

So what does this mean for the PTAB?

First unlike in Trademark oppositions, there is no right to challenge a decision of the PTAB by civil action.  Still, many AIA trial proceedings run concurrent with a district court infringement proceeding involving the same patent and parties.  Might a settlement of the infringement proceeding by consent decree present a similar opportunity to re-characterize the PTAB findings and order vacatur of a final written decision (FWD) or Institution Decision (ID)?  

As made clear in the last decision of the Alabama court, it was acting in its capacity as the PTAB reviewing court.  This was not the case of a district court simply ordering the vacatur of an unrelated proceeding. However, that is exactly how the TTAB perceived the situation.  That is, the TTAB argued that the Alabama Court had not, in fact, reviewed the full TTAB record. Thus, this decision if left undisturbed might provide precedent for collateral attacks on PTAB decisions by unrelated courts.  

In AIA trial proceedings this would be quite attractive as, if nothing else, vacatur by consent decree (would be an avenue to “settle” a PTAB proceeding without having to file the actual settlement papers (which risk public access if “good cause” is shown). See 37 C.F.R. §42.74

What about the Federal Circuit?

Such a CAFC Order would seem very unlikely. While the Federal Circuit can certainly vacate PTAB decisions on full review, I am not aware of any vacaturs ordered to erase an adverse decision of a losing party.  In fact, when asked most recently, the Court declined. See Tafas v. Kappos, Fed. Cir., No. 2008-1352, 11/13/09.

Should make for an interesting debate should the PTO seek review of the Court Order.