TTAB Vacates Prince of Wales Section 2(b) Decision and Remands Application to the Examining Attorney

On remand from the CAFC, the TTAB has vacated its precedential March 31, 2017 decision in In re Shabby Chic Brands LLC, 122 USPQ2d 1139 (TTAB 2017) [TTABlogged here], and has returned the case to the Examining Attorney for consideration of certain additional evidence. [Order here]. In particular, the additional evidence concerns three matters: the activities and powers of the Prince of Wales, and the file history of Application Serial No. 89/001,177 regarding the United Kingdom's recordation of the Prince of Wales Badge with the USPTO pursuant to Article 6ter of the Paris Convention.

In its March 2017 decision, the Board affirmed a Section 2(b) refusal to register the mark shown above left, for a variety of furniture and decorative housewares, household and kitchen utensils, and textile goods, on the ground that applicant's mark is a simulation of a governmental insignia of the United Kingdom, namely, the official emblem of the Prince of Wales [above right], as depicted in a designation filed by the Government of the United Kingdom in accordance with the Paris Convention

Shabby Chic appealed to the CAFC and then filed, with the USPTO, a joint motion to remand the case to the USPTO so that the examining attorney "may further consider the refusal to register under Section 2(b) of the Lanham Act." Appellant requested judicial notice of the three matters indicated above that were not before the examining attorney or the Board. The USPTO stated that it “believes that the particular circumstances of this case warrant a remand for the [e]xamining [a]ttorney, and if necessary, the Board, to consider the evidence and arguments in the first instance.”

Appellant asserted that a court of appeals has discretion to take judicial notice pursuant to FRE 201 of facts not included in the record below, "even if not used by the trial tribunal, and may support or undermine that tribunal's conclusions." The B.V.D. Licensing Corp. v. Body Action Design Inc., 6 USPQ2d 1719, 1721 (Fed. Cir. 1988).

The CAFC agreed with the parties that "it would be best for all involved to remand this case to the USPTO for further proceedings."

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TTABlog comment: Interesting way to get a second bite of the apple. This was not "new" evidence, but evidence that was available all the time, both to applicant and to the Examining Attorney.

BTW: the TTAB typically does not take judicial notice of USPTO records. Is the CAFC indicating that it should do so?

Subsequent History: The Board, on remand, returned the case to the examining attorney for consideration of the additional evidence. The examining attorney then withdrew the Section 2(b) refusal.

Text Copyright John L. Welch 2018.