E.D. Va. Reverses TTAB's Precedential Decision in HME Opposition, Orders USPTO to Issue Registration

In a precedential decision in September 2023, the Board sustained an opposition to registration of the mark HME in the stylized form shown below, for various types of pipes and other building products, finding confusion likely with opposer's mark KME for overlapping goods. [TTABlogged here]. Applicant Zhejiang Hailiang Co., Ltd. then commenced a civil action in the U.S. District Court for the Eastern District of Virginia, for review of the Board's decision. On January 10, 2025, the District Court reversed the TTAB's ruling and ordered the USPTO to issue a registration for the opposed trademark. Zhejiang Hailiang Co., Ltd. v. KME GermanyGmbH, 1-23-cv-1606 (LMB/LRV) (E.D. Va. Jan. 10, 2025).

The district court granted Zhejiang's motion for summary judgment because "among other things, the Court finds that in its opposition to plaintiff's registration of the mark at issue, the defendant engaged in inequitable conduct before the Trademark Trial and Appeal Board."

On January 24, 2025, Zhejiang filed a motion for an award of attorney's fees (pdf here). According to the motion brief, KME's witnesses gave false testimony before the Board, concealing the fact that KME "approved and helped develop the HME name."

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TTABlogger comment: So now what's the use/impact of the precedential Board decision?

Text Copyright John L. Welch 2025.