United States: Summary Of Recent Precedential Trademark Trial And Appeal Board Decisions - September 15, 2015

From June through August 2015, the Trademark Trial & Appeal Board issued eleven precedential decisions. Over the course of the upcoming weeks, we will briefly summarize each opinion and a "take away" for brand owners and practitioner. We begin with the first two opinions (in chronological order): The Board of Trustees of The University of Alabama v. Pitts, Jr. and In re Aquamar.

The Board of Trustees of The University of Alabama v. Pitts, Jr.– You Can't Erase the Past

This opinion is a sequel to another precedential opinion issued by the Board. Namely, on July 23, 2013, the Board issued a precedential decision dismissing the University of Alabama's opposition to registration of the mark HOUNDSTOOTH MAFIA & Design in Class 25. In that opinion, the Board ruled against the University on likelihood of confusion and false suggestion of a connection with the University and its legendary coach Bear Bryant. Notably, the Board ruled that the University had failed to prove trademark rights in the houndstooth pattern which famously adorned the hats of Coach Bryant and had been used by the University since then.

Seeking "home field advantage," the University sought review of the Board's decision in the U.S. District Court for the Northern District of Alabama. Nevertheless, while the case was pending, the parties settled their dispute which included assignment of the application in question to the University. The parties submitted to the Court a Final Consent Judgment agreeing that the precedential Board ruling should be vacated. This was likely important to the University, which did not want a finding that the houndstooth design was not singularly associated with the University of record. The Court issued the Final Consent Judgment which ordered that the Board ruling be vacated.

Subsequently, the University filed with the Board a "Request to Reopen, Vacate and Dismiss Without Prejudice," along with a copy of the Final Consent Judgment. Determining that "the policies and public interest implicated by a request to vacate a prior precedential opinion based on settlement are important," the Board assessed the request on its merits.

It was not clear under what authority the University sought vacatur of the Board's order. In U.S. Bancorp Mortgag Co. v. Bonner Mall Partnership, 513 U.S. 18, 29 (1994), the Supreme Court held that "mootness by reason of settlement does not justify vacatur of a judgment under review," such that the proper course is for the appellate court to dismiss the appeal as moot and remand the matter to the Board to consider vacatur. Because the Board is not an Article III court, though, Bancorp did not apply. Also, vacatur was not sought by the University under Fed.R.Civ.P. 60(b).

Accordingly, the Board assessed the request for vacatur under 15 U.S.C. § 1071(b)(1), which empowers a district court to adjudge an application's entitlement to registration, that a registration should be canceled, or "such other matter as the issues in the proceeding require, as the facts in the case may appear." Also, "[s]uch adjudication shall authorize the Director to take any necessary action, upon compliance with the requirements of law." (emphasis in opinion.)

The Board held that the Final Consent Judgment was not an adjudication and did none of the things allowed under 15 U.S.C. § 1071(b)(1). Notably, vacatur of the Board's precedential opinion was not a "necessary action" because the Board's precedential opinion did not bar registration of the application, now owned by the University; on the contrary, it allowed it.

Finally, the Board considered the request under its general equitable authority. Although the Final Consent Judgment included vacatur of the Board's order, it did not adjudicate any of the facts or issues before the Board or the Court on review. Moreover, the public interest was served by the precedential ruling remaining viable to guide trademark practitioners. Finding no exceptional circumstances mitigating for vacatur, much less an equitable basis therefore, the Board denied vacatur under its equitable authority.

Take Away: If, as a term of settlement, a party to a TTAB action wishes to vacate a prior adverse ruling, it should not assume that an order of a reviewing court alone is sufficient to do so.

In re Aquamar – Hablas Español?

At issue in Aquamar was applicant Aquamar, Inc.'s application to register MARAZUL for "fish and seafood products, namely, frozen and fresh processed fish and seafood, and imitation crab meat."

Initially, the Board considered the propriety of the examining attorney's requirement that applicant provide an English translation of MARAZUL ("mar azul" is "blue sea" in Spanish). Applicant argued that MARAZUL was a "completely arbitrary designation and coined term," and, even if the words were separated, "mar azul," literally translated, means "sea blue." The Board disagreed, noting branding on applicant's website prominently using a blue wave design, as well as an anchor design frequently used with the MARAZUL mark on applicant's packaging. The Board also cited precedent that simply combining two terms into one does not necessarily create a different commercial impression than the terms separately, particularly when applicant's products were targeted to bilingual purchasers.

Next, the Board reviewed the examining attorney's refusal to register MARAZUL on the grounds it would cause confusion with the prior-registered BLUE SEA for "non-live fish and frozen fish." First, the Board found that the parties' goods were, in part, identical, and, thus, their channels of trade and classes of purchasers were presumed to be the same. Second, the Board turned to the similarity of the marks. Finding that Spanish is a common language in the U.S., the Board held that the marks' meanings are identical under the doctrine of foreign equivalents. Furthermore, the examining attorney had made of record printouts from applicant's website showing that it targeted its products to the U.S. Hispanic market. Although equivalency in connotation is not alone determinative of the likelihood of confusion, here, as in past cases, the equivalency outweighed the differences in sound and appearance. They were identical in nuance and meaning. Accordingly, the Board upheld the refusal to register.

Take Away: When conducting trademark searches, make sure to review foreign language marks.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
18 Oct 2017, Seminar, San Francisco, United States

Please join us for Sheppard Mullin's Labor & Employment Law Update & Happy Hour Seminar Series. 2017 presents significant developments in California labor and employment laws that will affect the way you run your day-to-day business operations. We will provide analysis and insight on these new laws, as well as offer practical advice and helpful tools for employers to protect their organizations from liability in the workplace.

18 Oct 2017, Seminar, California, United States

Come learn the latest about Labor Law Updates, Healthcare Reform Updates, Federal and State Tax-related issues/credits, Unemployment and Disability Insurance-related issues. Meet face-to-face with Sheppard, Mullin, Richter & Hampton LLP attorneys, government representatives, and other experts in workshops that will educate you on critical and timely issues.

18 Oct 2017, Seminar, San Diego, United States

Data breaches have a devastating impact on business and personal privacy. The Equifax breach is the most recent example of hackers taking advantage of corporate vulnerability. Shows like Mr. Robot have surged in popularity as our curiosity with hacking and cybersecurity continues to grow.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.