Friday, February 09, 2024

Despite Respondent's Bogus Legal Citations, TTAB Denies BRONX NATIVE Cancellation Petition on Contractual Estoppel Ground

The Board tossed out this petition for cancellation of a registration for the mark BRONX NATIVE for various clothing items, finding that the petitioners were contractually estopped from challenging the registration. In reaching this decision, the Board refused to consider respondent's brief, which was filled with erroneous quotations from and citations to various precedents, and references to a number of decisions that didn't exist. Tiarra Hamlett and Michael Hamlett Jr. v. Bronx Native composed of Giancarlos Martinez, Roselyn Grullon and Amaurys Grullon, Cancellation No. 92077944 (February 7, 2024) [Not precedential] (Opinion by Judge Thomas L. Casagrande). 

Respondent's counsel admitted that he did not read the cases cited in respondent's brief, or even attempt to look them up. He did nothing to rectify the errors in his brief, even though he was on notice of same for months before oral argument. The Board was "at a loss for words that adequately express the gravity of Respondents’ citation of fictitious decisions."

Failing to read the decisions cited in a trial brief represents a dereliction of the duty to perform “an inquiry reasonable under the circumstances” sufficient to certify that the “legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law.” Attributing propositions of law to decisions that did not discuss those propositions is bad enough. Purporting to actually quote decisions where neither the quote nor anything like it appears is worse. And worst of all is citing or purporting to quote from decisions that do not exist. (emphasis by the Board).

Nonetheless, the Board did not consider this a forfeiture of respondent's defenses, and it left petitioners with the burden to prove their case.

Turning to the substantive issues, the Board observed that it has the authority "to entertain an opposition to an application based on an agreement barring registration of the opposed mark and to entertain a defense that a prior agreement might either preclude a party from opposing an application or challenging a registration."

In a coexistence agreement between the parties in 2018, the petitioners acknowledged respondent's intellectual property rights in the BRONX NATIVE mark and they agreed not to challenge or interfere with respondent's use or registration of that mark in connection with any goods covered in International Class 25 (which include those of the challenged registration).

Petitioners did not contend otherwise, but instead argued that the agreement is "null and void" because counsel for respondent purportedly made several misrepresentations that induced petitioners to enter into the agreement. "This is essentially a claim that the agreement, by virtue of having been induced by fraud, is thereby unenforceable against the party accused of misrepresentations."

The Board, however, was unable to entertain that claim:

Adjudication of this sort of claim, however, is beyond our limited statutory authority. Cf. Selva & Sons, 217 USPQ at 647 (“courts would be the proper tribunals in which to litigate a cause of action for enforcement or breach of the contract”). That being the case, we hold that Petitioners are contractually estopped from challenging Respondent’s BRONX NATIVE registration.

And so, the Board denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: I wonder if there was some AI involvement in the preparation of respondent's brief.

Text Copyright John L. Welch 2024.


At 10:21 AM, Anonymous Narek Zohrabyan said...

I wonder if TTAB is going to refer the attorney in question to OED for disciplinary action.


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