CAFC Sends Back TTAB's "GET ORDAINED" Decision: Board Ignored Its Own Policy Regarding Waiver of Unargued Claims

Well, this is a strange one. The CAFC reversed the Board's decision sustaining an opposition to registration of GET ORDAINED for retail store services and ecclesiastical services, remanding the case for further consideration. The Board found the phrase so commonly used that consumers will not perceive it as a source indicator pointing uniquely to the applicant. Alternatively, the Board found the phrase to be merely descriptive and lacking secondary meaning. [TTABlogged here]. However, Opposer AMM had made no argument regarding applicant's retail store services, and so the court sent the case back to the TTAB to consider why the Board did not apply its usual waiver-of-argument policy with respect to those services. Universal Life Church Monastery Storehouse v. American Marriage Ministries, Appeal No. 2022-1744 (Fed. Cir. November 22, 2023) [not precedential].

The CAFC was unable to square the Board's decision with the usual waiver practice. Despite the failure of AMM to refer to its Class 35-specific claims in its briefs, the Board went ahead and adjudicated those claims without explaining why it did not consider them waived.

In sum, we determine that (1) the Board has an established practice of considering unargued claims to be waived, (2) AMM did not refer to or argue any Class 35- specific claims in its trial briefs, and (3) the Board considered the Class 35-specific services but did not explain why it did not consider these claims to be waived in view of its established waiver practice. We accordingly hold that the Board acted arbitrarily and capriciously by departing from its established practice without providing a reasoned explanation for the departure.5 For that reason, we vacate the Board’s decision as to ULC Monastery’s Class 35-specific services.

The CAFC did not decide whether the Board may have a basis "for deeming AMM’s opposition to ULC Monastery’s Class 35 application not to be waived, or for excusing any waiver." If the Board on remand decides to "reconsider" ULC Monastery’s retail store services, the Board should ensure that its analysis has a basis in the record. 

The Board’s decision laid out a summary of the relied-on evidence of record. Opposition Decision, 2022 WL 500926, at *4–7. While this evidence relates to ULC Monastery’s ecclesiastical services, the Board did not explain its pertinence to ULC Monastery’s online retail store services. Moreover, the Board’s findings specific to online retail store services lack any citations to the record. Id. at *7, 11, 13. On remand, for its mere descriptiveness and failure-to-function analyses with respect to ULC Monastery’s online retail store services, the Board should “assure that the requisite findings are made, based on evidence of record” and “explain the reasoning by which the findings are deemed to support” the Board’s decision. 

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TTABlogger comment: It appears that the parties will agree to dismiss the claims regarding the retail store services. BTW, the CAFC says "forfeiture" would be a more appropriate term than "waiver," since the latter is "the intentional relinquishment or abandment of a known right."

Text Copyright John L. Welch 2023.