Friday, July 29, 2011

Precedential No. 17: TTAB Suspends NFL's "WHO DAT" Opposition In View of Pending Lawsuit

One might say, "Bully for the NFL." The Board, in a rare precedential interlocutory order, granted the parties' motions to suspend this opposition in view of a civil action brought by the NFL over the annoying "trademark," WHO DAT. New Orleans Louisiana Saints LLC and NFL Properties LLC v. Who Dat?, Inc., 99 USPQ2d 1550 (TTAB 2011) [precedential].

This low-stakes, utterly meaningless battle over the term WHO DAT? is explained at a Wikipedia posting here.

Applicant Who Dat?, Inc. seeks to register the mark WHO DAT for lighters, tobacco pouches, and the like, and for arena and entertainment services. The NFL has opposed, dubiously claiming false association under Section 2(a), deceptiveness under 2(a), and (rather ridiculously) likelihood of confusion with various NFL and Saints' marks, none of which are anywhere near the mark WHO DAT.

Applicant moved for suspension in light of two other pending oppositions to its mark, but the Board denied that motion, explaining that it will usually not suspend one of several oppositions unless the oppositions contain "common" claims: e.g., mere descriptiveness or failure to function. Here the claims in the three opposition are all "personal" [my term] to each opposer.

Both the NFL and Applicant moved for suspension based upon a lawsuit commended by the NFL in the Louisiana federal court, where NFL makes claims of trademark infringement, among others, and seeks to enjoin use of WHO DAT by the defendants. The Board concluded that, since a decision by the federal court to enjoin use of WHO DAT by opposers [sic!] would have a bearing on this TTAB proceeding, it should suspend the case.

The Board noted that "[a] decision by the district court my be binding on the Board whereas a determination by the Board as to a defendant's right to obtain or retain a registration would not be binding or res judicata in respect to the proceeding pending before the court. Whopper-Burger, Inc. v. Burger King Corp., 171 USPQ 805, 805 (TTAB 1971).

Text Copyright John L. Welch 2011.


At 8:25 AM, Blogger Ian Mullet said...

Nice YouTube find.

At 9:44 AM, Anonymous Anonymous said...

Is there any TTAB precedent stating when the Board will stay a proceeding due to another board proceeding (not a civil action) in which the same parties are involved, although the proceedings have different facts?

At 11:07 AM, Blogger John L. Welch said...

If different facts are involved, what is the justification for the stay? Common legal issue?

At 11:21 AM, Anonymous Anonymous said...

Essentially, the situation is this: X refiled, Y opposed X's refiling.

Want to file a cancellation against Y's registered marks that are cited as the basis for opposition (for fraud / nonuse), and stay Y's opposition proceeding pending outcome of X's cancellation of Y's mark.

So not technically "different facts," but two different issues, involving same parties.

At 4:26 PM, Blogger John L. Welch said...

Sounds like you should be counterclaiming in the opposition to knock out Y's registered marks. Seems like a compulsory counterclaim to me.

At 9:28 AM, Anonymous Anonymous said...

But even if it is a compulsory counterclaim, can't you file a separate cancellation petition against opposer? I have read counterclaiming is the better practice, but I am unsure why. Any insight on when you should counterclaim and when you should file a separate cancellation?

At 12:36 PM, Blogger John L. Welch said...

No. That's what "compulsory" means. Look at the FRCP and search for "compulsory counterclaim" in the TTABlog search engine.


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