Cancellation Petitioner Lacks Standing In View Of Litigation Settlement

The Board entered summary judgment sua sponte dismissing Agri-Pro's petition for cancellation of Dositron's registration for the product configuration shown below for livestock medicators. Agri-Pro Enterprises of Iowa, Inc. v. Dosatron Int’l., Cancellation No. 92043411 (May 3, 2005) [not citable].
Agri-Pro alleged that the registration was obtained by fraud and that the design is functional. Dosatron moved for summary judgment, asserting that the functionality claim was barred by an earlier litigation settlement, and that the fraud claim was "barred" by Agri-Pro's intentional copying.

The Board, however, raised the issue of standing. It noted that, in the litigation, the court approved a settlement agreement in which Agri-Pro agreed to "cease and desist from the manufacture, distribution or sale of any medicator apparatus confusingly similar in appearance to Plaintiff's medicator apparatus."


Agri-Pro claimed that its modified design, which Dosatron accused of infringement, is similar to Dosatron's registered design only as to functional features. But the Board found that Agri-Pro has no standing to challenge the subject registration because:

"its earlier agreement to cease use of a confusingly similar configuration removes Agri-Pro's real interest in seeking cancellation of Dosatron's registration, and thus precludes Agri-Pro from having standing to challenge the registrability of Dosatron's mark."

TTABlog comment: Doesn't Agri-Pro still have a "real interest" in defending itself from unfounded claims of infringement? It appears that nothing in the settlement agreement precluded Agri-Pro from challenging the Dosatron registration. Agri-Pro agreed not to market a "confusingly similar" device. Isn't the Board here making an unsupported assumption that the "modified" device is confusingly similar to the registered design?

Just because Dosatron claims infringement does not mean that the accused design is indeed confusingly similar. In other words, isn’t the Board putting the cart before the horse? Agri-Pro has no standing if the modified device is confusingly similar, but shouldn't there first be a decision on confusing similarity? Perhaps the Board should have suspended this cancellation proceeding until a court decides the "confusing similarity" question.

Text Copyright John L. Welch 2005. All rights reserved.