Rolex Seeks Vacatur of TTAB's Precedential Dilution Decision
Rolex Watch U.S.A., Inc. recently asked the CAFC to vacate the TTAB's decision in Rolex Watch U.S.A., Inc. v. AFP Imaging Corporation, 101 USPQ2d 1188 (TTAB 2011) [precedential].[TTABlogged here]. The Board had dismissed Rolex's dilution-by-blurring claim, concluding that Rolex failed to prove that the applied-for mark ROLL-X for "x-ray tables for medical and dental use" would, despite an "actual association" between the marks, impair the distinctiveness of Opposer's famous ROLEX mark.
The appellate court had dismissed the appeal as moot on August 14, 2012, but Rolex asked that the court to modify its order and to vacate the Board's decision. The CAFC, in an Order dated November 1, 2012 [here], declined Rolex's request, but instead remanded the case to "allow the Board to consider a motion to vacate its decision in the first instance, in accordance with United States Bancorp Mortgage Company v. Bonner Mall Partnership, 513 U.S. 18, 29 (1994), and for any further proceedings deemed appropriate by the Board."
The CAFC took "no position as to whether the Board should grant any motion for vacatur or any motion to deem the trademark abandoned."
TTABlog note: Applicant withdrew its application on March 19, 2012. Since that mooted the appeal, is it fair to allow the TTAB judgment to stand when Rolex lost its opportunity to appeal the decision? Is this a case where the "unilateral" action by the victorious party below warrants vacatur?
Text Copyright John L. Welch 2012.