Precedential No. 8: Tribal Sovereign Immunity Inapplicable in Board Proceedings, Says TTAB

In a case of first impression, the TTAB ruled that the defense of tribal sovereign immunity is not available in Board proceedings. The Board therefore denied Respondent Sycuan Tribal Development Corporation's motion to dismiss a petition for cancellation (on the grounds of nonuse and naked licensing) of four registrations for certain word-and-design marks (one of which is shown immediately below) for cigarettes and other tobacco products. Philip Morris USA Inc. v. IP Services International Inc. and Sycuan Tribal Development Corporation, Cancellation No. 92063134 (September 18, 2026) [Precedential].

Respondent Sycuan's motion was originally styled a motion for summary judgment, but because the issue of tribal sovereign immunity is jurisdictional, the Board construed the motion as one seeking dismissal for lack of subject matter jurisdiction. Although the time for filing an FRCP 12(b) motion had passed before Sycuan was added as a party (after the subject registrations were assigned to it), the Board considered the motion on the merits, noting that "the Board must dismiss a proceeding if it lacks subject matter jurisdiction." See FRCP 12(h)(3).

The Board began by considering the CAFC's ruling in St. Regis Mohawk Tribe v. Mylan Pharm. Inc., in which the court held that tribal sovereign immunity does not apply to inter partes review ("IPR") proceedings before the Patent Trial and Appeal Board ("PTAB"). The CAFC observed that immunity generally "does not apply where the federal government acting through an agency engages in an investigative action or pursues an adjudicatory agency action.”

The CAFC found that an IPR proceeding "is neither clearly a judicial proceeding instituted by a private party nor clearly an enforcement action brought by the federal government," but rather a ‘hybrid proceeding’ with ‘adjudicatory characteristics’ similar to court proceedings, but more like a specialized agency proceeding in other aspects.

Subsequently, the CAFC ruled in Regents of the Univ. of Minn. v. LSI Corp that state sovereign immunity does not apply in IPR proceedings. The Board later ruled that state sovereign immunity does not apply in opposition proceedings before the TTAB. Mountain Gateway Ord., Inc. v. Va. Cmty. Coll. Sys. What about tribal sovereign immunity at the Board?

The Board first observed that federally recognized tribes may apply for registration under the Trademark Act and are subject to the same provisions of the Act as any other applicant, including those "subjecting applications to opposition and registrations to cancellation proceedings." The Board saw no reason to depart from its reasoning in Mountain Gateway just because this case involved tribal rather than state sovereign immunity. Cf. U. Minn. v. LSI, 926 F.3d at 1341 (“We conclude that state and tribal sovereign immunity do not differ in a way that is material to the question of whether IPR proceedings are subject to state sovereign immunity.”).

In TTAB proceedings, a plaintiff may challenge only an applicant's right to obtain a registration or a registrant's right to maintain a registration. "Board proceedings do not involve the exercise of personal jurisdiction over the registrant, the assessment of liability for monetary damages, and the imposition of injunctive relief. * * * Consequently, '[t]raditional civil action-type remedies are unavailable in opposition [or cancellation] proceedings.'"

The Board acknowledged that TTAB proceeding "share more characteristics with district court litigation than do IPR proceedings," including a broader range of discovery tools. However, although TTAB proceedings have "adjudicatory characteristics," they also operate "like a specialized agency proceeding" (noting various powers of the Director of the USPTO with respect to Board proceedings).

But the Board cannot exercise personal jurisdiction or impose monetary or injunctive remedies, and so "the tribe’s sovereignty over its tribal members and territories remains undiminished by the Board’s administrative inter partes proceedings. Such proceedings do not implicate the tribe’s 'ability to regulate within its own domain.'" 

Inter partes proceedings before the Board fulfill the trademark regulatory scheme (of which Sycuan availed itself when it acquired the involved registrations) by ensuring that only eligible marks are registered and maintained on the federal trademark register.

The Board observed that, if tribal sovereign immunity were recognized as a defense at the TTAB, "Nothing would prevent a tribe 'from lending its sovereign immunity to private parties, as the tribe attempted to do in St. Regis. Such manipulation would undo Congress’ central quality control mechanism in creating post-grant administrative proceedings.'"

If Respondents’ position were adopted, not only could Indian tribes shield their federal applications and registrations from challenge, but non-tribal entities could also use the doctrine to insulate invalid registrations from removal from the register by assigning them to a tribe or an arm of the tribe. The danger of such gamesmanship is plainly evidenced by Respondents’ conduct here, stretching so far as to attempt to blanket itself in immunity even prior to the assignment from IP Services to Sycuan.

In short, "Respondents’ attempt to invoke tribal immunity would contravene the very letter and purpose of the federal Trademark." And so, the Board denied the motion to dismiss.

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TTABlogger comment: This proceeding was commenced in 2016. The subject motion was filed in 2018. And it's still not over! In the face of the cited precedents, Respondent Sycuan was up the creek with not much of a paddle.

Text Copyright John L. Welch 2026.