• TTAB Trumps Anti-Trump Trademark Petitioner
  • November 28, 2017 | Author: Timothy J. Lockhart
  • Law Firm: Willcox & Savage, P.C. - Norfolk Office
  • The U.S. Trademark Trial and Appeal Board (TTAB) rejected arguments that, as a board within the executive branch of the U.S. government, the TTAB should disqualify itself from ruling on a petition to cancel seven registrations for TRUMP marks in which the head of the executive branch, President Donald J. Trump, has an interest. Prospector Capital Partners, Inc. v. DTTM Operations LLC, 123 USPQ2d 1832 (TTAB 2017) [precedential].

    On April 11, 2016, Prospector Capital Partners, Inc. (Prospector) filed a petition to cancel the TRUMP registrations on the ground of abandonment. Prospector claimed that it owns the mark TRUMP YOUR COMPETITION as used with “advertising and marketing consultancy,” in International Class 35. When it filed its petition, Prospector owned a pending application for TRUMP YOUR COMPETITION that shortly thereafter, on May 3, 2016, matured into Registration No. 4948838. That the U.S. Patent and Trademark Office did not cite any of the TRUMP registrations, two of which cover services in Class 35, against Prospector’s application, begs the question of why Prospector went to the trouble and expense of filing its arguably unnecessary petition.

    Instead of filing an answer to the petition, DTTM Operations LLC (DTTM) filed a motion to dismiss for failure to state a claim upon which relief can be granted. The TTAB granted the motion, allowing Prospector 20 days to file and serve an amended petition to cancel that properly pleaded both standing and a valid claim for relief. But Prospector then filed a motion to disqualify the TTAB, to “transfer” venue of the proceeding to the U.S. District Court for the Central District of California, to vacate the TTAB’s order granting DTTM’s motion, and to suspend proceedings.

    Prospector’s motion asserted that the TTAB should be disqualified because President Trump holds an interest in the TRUMP registrations and therefore the TTAB was incapable of fairly adjudicating the issues before it. Prospector argued that, because administrative trademark judges are appointed by the “Secretary of Commerce, who serves under the President, [and] has the authority to hire or fire” those judges, the TTAB’s decision-making process would be influenced by the fact of such appointment. In support of its arguments Prospector quoted from an online blog posting of the “watchdog group” Project On Government Oversight and invoked Title 28 of the U.S. Code, which deals with the operations of the judicial branch.

    In its ruling, written by Chief Judge Gerard F. Rogers, the TTAB rejected all of Prospector’s arguments. First, the TTAB said that it “is not a ‘court’ as defined by 28 U.S.C. § 451;” and TTAB judges are not judges of any such court. “Therefore, the judicial disqualification provision in 28 U.S.C. § 455 [was] inapplicable to these proceedings” (citations omitted).

    Second, the TTAB noted that a presumption of regularity attaches to the procedures of government agencies and any order issued by an agency. See, e.g., U.S. Postal Serv. v. Gregory, 534 U.S. 1, 10 (2001); Busboom Grain Co. v. I.C.C., 830 F.2d 74, 75 (7th Cir. 1987). Cf. United States v. Chem. Found., Inc., 272 U.S. 1, 14 (1926) (“In the absence of clear evidence to the contrary, courts presume that they have properly discharged their official duties.”).

    The TTAB pointedly observed that Prospector had provided “no facts whatsoever to support its asserted suspicions that the President or the Secretary of Commerce has, or will in the future, assert improper influence on the [TTAB’s] statutory responsibility to decide this cancellation proceeding based on the evidence and facts of record and the applicable law.” Accordingly, the TTAB said, “this motion to disqualify is utterly devoid of merit” (citation omitted).

    The TTAB said that its authority to rule on trademark cancellation proceedings “extends to all registrations, irrespective of the identity of the owner of a registration. The [TTAB] is not relieved of its statutory duty to determine rights to registration because a party is directly or indirectly connected with the United States government.” Cf. Thompson v. Commissioner, 148 T.C. No. 3, 2017 WL 448978 (Feb. 2, 2017) (denying motion to disqualify judge on ground that judge would be biased because the president of the United States has the power to remove judges of the Tax Court for cause), appeal filed, No. 17-71027 (9th Cir. Apr. 10, 2017); Cheney v. U.S. Dist. Court for D.C., 541 U.S. 913 (2004) (denying motion to recuse Justice Scalia based on a personal relationship with former Vice President Cheney).

    Adopting Prospector’s argument, said the TTAB, would mean that “there would exist entire categories of applications and registrations (those owned by, or connected to, the United States government or any of its officers or agencies) for which the [TTAB] would, per se, be unable to fulfill its statutory obligations.” Cf., e.g., U.S. Navy v. U.S. Mf’g Co., 2 USPQ2d 1254 (TTAB 1987) (determining likelihood of confusion with respect to mark owned by the United States Navy); Dep’t of Justice, FBI v. Calspan Corp., 196 USPQ 326 (TTAB 1977) (determining likelihood of confusion with respect to mark owned by the United States Department of Justice) (other citations omitted).

    Finally, the TTAB noted that if Prospector were dissatisfied with whatever final decision the TTAB made in the cancellation proceeding, Prospector could appeal the decision to the U.S. Court of Appeals for the Federal Circuit or file a civil action in a federal district court. 15 U.S.C. § 1071. In either of those scenarios Prospector would be making its arguments to entities within the judicial, not the executive, branch of the federal government.

    For all of those reasons the TTAB denied Prospector’s motion that the TTAB disqualify itself. The TTAB also denied as premature Prospector’s motion for review by a federal court of the TTAB’s earlier order, denied as being beyond the TTAB’s power Prospector’s motion to have the pending proceeding “transferred” to a district court, and, in view of its ruling on the transfer request, denied as moot Prospector’s motion to have the proceeding suspended. Under the circumstances the TTAB did, however, grant Prospector another 20 days to file an amended petition to cancel. Prospector subsequently filed a motion for reconsideration of the TTAB’s order denying its motion, DTTM opposed the motion, and the TTAB will now rule on the motion for reconsideration.