TTAB Confirms That Federal Registration Defense to Dilution Claim Lives On For Older Cases

[TTABlog caveat: in this proceeding, Evade, LLC, is represented by yours truly]. In a non-precedential ruling, the Board has confirmed that “the federal registration defense” to a claim for dilution still applies to actions commenced prior to October 5, 2012, despite the amendment of the Trademark Act on that date to eliminate the defense. Under Armour, Inc. v. Evade, LLC, Cancellation No. 92052716 (February 14, 2013) [not precedential].


In Academy of Motion Picture Arts and Sciences v. Alliance of Professionals & Consultants Inc., 104 USPQ2d 1234 (TTAB 2012) (“Academy”) [TTABlogged here], the Board ruled that Section 43(c)(6) of the Trademark Act created a “federal registration defense” to a claim for dilution. The Board dismissed the Academy's dilution claim, but acknowledged that the defense arose from a “clerical error” that occurred during the passage of the Trademark Dilution Revision Act of 2006 (TDRA).

On October 5, 2012, eight days after the Academy decision, President Obama signed into law An Act to amend the Trademark Act of 1946 to correct an error in the provisions relating to remedies for dilution, which Act corrected the unintended error in Section 43(c)(6). [TTABlogged here].

However, the new Act expressly states that the amendment to Section 43(c)(6) "shall apply to any action commenced on or after the date of the enactment of this Act."

Accordingly, the Act only applies prospectively to actions which commenced on or after October 5, 2012, and the Board is bound to adhere to the stated effective date of the statute. Consequently, the current Trademark Act Section 43(c)(6), which limits the applicability of the “federal registration defense” to dilution claims that are brought under common law or a statute of a State, is not applicable with respect to dilutions claims brought in inter partes proceedings that commenced prior to October 5, 2012.

The Board observed that what it "recognized in Academy is true here as well: '(T)he Board must apply and enforce the statute as written, rather than picking and choosing a preferred interpretation… this Board must assume that Congress means what it says.'"

The instant case, which included dilution claims aimed at two registrations owned by Evade, was commenced by Under Armour on July 12, 2010. The Board therefore ruled that these claims are barred by the federal registration defense, and it granted Evade's motion for summary judgment vis-a-vis those claims.

Text Copyright John L. Welch 2013.