Applying Contractual Estoppel, TTAB Grants Motion for Partial Summary Judgment in BYLT Oppositions

In one of two oppositions consolidated by the Board, opposer sought to block registration of the marks BYLT BASICS and BYLT PREMIUM BASICS, each for “hoodies, jackets, pants, shirts, briefs as underwear, jogging pants, men’s underwear, short-sleeve shirts, underwear; all of the foregoing excluding motorcycle related clothing and apparel.” Opposer claimed likely confusion with its registered mark B.Y.L.T. for various clothing items and sports drinks. Applicant successfully moved for partial summary judgment as to this opposition on the ground of contractual estoppel based on a litigation settlement agreement. BYLT Performance LLC v. BYLT, LLC, Oppositions Nos. 91274047 and 91276608 (September 14, 2023) [not precedential].

While opposing the motion for partial summary judgment, opposer also asked for time to take discovery, under FRCP 56(d). However, it's motion was untimely. Moreover, when such a request accompanies an opposition to a summary judgment motion, the Board will deem the request as moot.

As to the subject of the summary judgment motion, applicant maintained that that the parties entered into an agreement that prohibits Opposer from opposing the two trademark applications identified above.

Specifically, Applicant explains by way of background that to resolve a prior trademark infringement action between the parties in the United States District Court for the Central District of California, Case No. 8:18-cv-02194 (JVS-KES), the parties entered into a Settlement Agreement, which explicitly states that so long as Applicant abandoned its earlier-filed trademark application Serial No. 87912445, Opposer would not oppose Applicant’s other pending applications for BYLT BASICS and BYLT PREMIUM BASICS.

Opposer contended that this was essentially a coexistence agreement, which is unenforceable because numerous instances of actual confusion occurred since the agreement was executed. Opposer further claimed that Applicant did not comply with certain packaging requirements set forth in the agreement. Therefore, opposer argued, the Board should not enforce the agreement as a matter of public policy because the agreement was purportedly "not accomplishing what it was intended to do." Opposer argued that the Board should declare the agreement “rescinded, voided, or cancelled."

The Board observed that the equitable doctrine of contractual estoppel applies in Board proceedings when one party has agreed not to challenge registration of another’s mark. "While it does not lie within the jurisdiction of the Board to enforce a contract between parties, Vaughn Russell Candy Co. v. Cookies in Bloom, Inc., 47 USPQ2d 1635, 1638 n.6 (TTAB 1998), whether Opposer is contractually barred from opposing registration of Applicant’s involved applications clearly falls within the jurisdiction of the Board."

In particular, the Board may “consider the agreement, its construction or its validity if necessary to decide the issues properly before it … including the issue of estoppel.”

The Board pointed out that it is Board practice to interpret an agreement based not on the subjective intention of the parties, but on the objective words of their agreement. There was no genuine dispute that "Section 2 of the parties’ agreement clearly and unambiguously states that as long as Applicant files the express abandonment of its trademark application Serial No. 87912445 for the mark BYLT, Opposer agrees not to oppose, challenge, contest, or otherwise interfere with Applicant’s (as Plaintiff in the civil action) pending applications for BYLT BASICS or BYLT PREMIUM BASICS." Applicant complied with that requirement.

The Board noted that the agreement did not state any goal related to avoiding likely or actual confusion. "Specifically, there is no section in the agreement allowing for 'rescind[ing], void[ing], or cancel[ing]' the agreement due to actual confusion or other circumstance, as Opposer suggests."

Likewise, with respect to Opposer’s allegations that Applicant failed to comply with labelling requirements set forth in the agreement,the agreement is clear and unambiguous that only one precondition exists to invoke the consequence that Opposer may not oppose the applications identified in the agreement; that is, Applicant’s express withdrawal of application Serial No. 87912445 is the only condition for binding Opposer’s promise not to oppose.

And so, the Board dismissed Opposition No. 91274047, with prejudice.

Read comments and post your comment here.

TTABlogger comment: You may remember the NAKED condom case, an unnecessarily complicated case involving contractual estoppel: TTABlogged here.

Text Copyright John L. Welch 2023.