Precedential No. 12: TTAB Rejects Sovereign Immunity Claim in Opposition to Virginia College System Marks

In this opposition to registration of the mark MOUNTAIN GATEWAY COMMUNITY COLLEGE for educational services and various clothing items, Applicant Virginia Community College Systems moved for summary judgment, asserting that the Board lacked subject matter jurisdiction due to state sovereign immunity. The Board denied the motion, ruling that sovereign immunity does not apply to opposition proceedings. Mountain Gateway Order, Inc. v. Virginia Community College System, 2024 USPQ2d 1025 (TTAB 2024) [precedential].

Opposer did not dispute that applicant is a state agency, and so the question was "whether Applicant enjoys sovereign immunity."

State sovereign immunity sometimes applies "when 'a private party [] haul[s] a State in front of an administrative tribunal' within a federal agency in an adversarial proceeding bearing strong similarities to civil litigation." Fed. Maritime Comm’n v. S.C. State Ports Auth., 535 U.S. 743, 760 n.11, 63 USPQ2d 1321 (2002)

However, States may not assert sovereign immunity where a federal agency exercises its superior sovereignty in agency enforcement actions instituted upon information supplied by a private party to ensure State compliance with federal law, even if some aspects of civil litigation procedure are applied. Regents of Univ. of Minn. v. LSI Corp., 926 F.3d 1327, 2019 USPQ2d 219331 (Fed. Cir. 2019).

The Board observed that states that apply for trademark registration "are subject to the same registration provisions of the Trademark Act as any other applicant, including that a State’s application is subject to opposition proceedings." 

It noted that state sovereign immunity does not apply to Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB). Regents of Univ. of Minn. v. LSI Corp., 926 F.3d 1327, 2019 USPQ2d 219331 at *1-(Fed. Cir. 2019).

While opposition proceedings may have some procedural attributes different from IPR proceedings, their salutary purpose is comparable. Oppositions protect the public interest in the integrity of the federal trademark register by providing a means to consider and decide the right to registration, a matter of public interest. Traditional civil action-type remedies are unavailable in opposition proceedings. Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1591 (TTAB 2011).

The Board reasoned that, if state entities were not subject to opposition proceedings, the USPTO would be precluded from exercising “ample means of ensuring that [States] comply with the [Trademark] Act and other valid federal rules governing [trademark registrability]."

Applicant chose to apply for federal trademark registrations that would evidence its presumed nationwide exclusive rights to use marks in commerce, 15 U.S.C. § 1057(b), a choice with consequences for the public. Applicant’s status as a juristic person under the Trademark Act, and the public interest in the integrity of the trademark registration system, dictate that Applicant is subject to opposition proceedings and that sovereign immunity does not apply to opposition proceedings.

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TTABlogger comment: FWIW: MGCC's sports teams are nicknamed the "Roadrunners." They ran off the road in this one.

Text Copyright John L. Welch 2024.