Tuesday, January 07, 2014

Precedential No. 44: Respondent Consents to Judgment on Abandonment Claim, TTAB Declines to Consider Fraud Claim

Faced with a petition for cancellation of its registration for the mark ACTIVETECH on the grounds of abandonment and fraud, Respondent Pactiv filed a motion consenting to judgment on the abandonment claim, contending that the proceeding should be terminated without judgment on the fraud claim. Petitioner Multisorb opposed the motion, maintaining that respondent must either consent to entry of judgment on the fraud claim or answer the petition and defend its position. The Board observed that whether it allows a proceeding to continue after entry of judgment on one claim, falls within the Board discretion in light of the circumstances of each case. Finding that a decision on the fraud claim would have limited effect on Multisorb's ability to challenge any future attempt by Pactiv to register the challenged mark, the Board granted respondent's motion and entered judgment on the abandonment claim without reaching the fraud claim. Multisorb Technologies, Inc. v. Pactiv Corporation, 109 USPQ2d 1170 (TTAB 2013) [precedential].

Consistent with Trademark Rule 2.116(a), procedure before the Board is generally governed by the Federal Rules of Civil Procedure, except when the CFR (Code of Federal Regulations) provides otherwise. When procedural issues fall within the interstices between the FRCP, the CFR, and the Trademark Board Manual of Procedure (TBMP), the Board generally follows accepted federal practices. [But the TBMP is not the law! - ed.] "This is one of those cases."

Like the courts, the TTAB has generally invoked its discretion to decide only those claims necessary to enter judgment and dispose of the case. In short, a determination of registrability does not always require a decision on every pleaded issue. The courts and the Board will look at the specific circumstances of the case, including the claims pleaded.

Petitioner Multisorb maintained that the granting of respondent's motion would deprive petitioner of the preclusive effect that would result from a judgment on the fraud claim. The Board pointed out, however, that the fraud claim relates specifically and only to procurement of the challenged registration, and would not bar applicant from filing a new application nor permit petitioner to challenge that new registration on the basis of claim preclusion. Therefore, the Board saw no point in going forward with a fraud claim when entry of judgment on the abandonment claim will terminate the registration.

The question of whether the Board should continue with the proceeding on claims remaining after judgment on another claim (whether or not by consent) falls within the Board's discretion. Under the circumstances here, the Board saw no purpose in further litigation over the issue of fraud when the only remedy, cancellation of the registration, has been granted and a decision on the fraud claim "would have, at best, limited effect on petitioner's ability to challenge any future attempt by respondent to register the mark."

And so the Board granted respondent's motion and declined to reach the fraud claim.

Read comments and post your comment here.

TTABlog note:  The Board regularly declines to reach a dilution claim after it finds likelihood of confusion. And in the ShutEmDown Sports case [TTABlogged here], it declined to reach a fraud claim after sustaining claims of abandonment and non-use.

Text Copyright John L. Welch 2014.


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