The opinion
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF OHIO
EASTERN DIVISION
INTERNATIONAL WATCHMAN ) Case No. 1:19-cv-2310
INC., )
) Judge J. Philip Calabrese
Plaintiff, )
) Magistrate Judge David A. Ruiz
v. )
)
BARTON WATCHBANDS )
HOLDCO, LLC, et al., )
)
Defendants. )
)
OPINION AND ORDER
Defendant Barton Watchbands Holdco, LLC seeks to stay this matter pending
resolution of proceedings before the Trademark Trial and Appeal Board involving the
trademark that forms the basis of the dispute between the parties. (ECF Nos. 51, 63
& 67.) Plaintiff International Watchman Inc. opposes a stay. (ECF Nos. 50, 64 & 68.)
For the reasons set forth below, Barton Watchbands’ request to stay is DENIED.
STATEMENT OF FACTS
Barton Watchbands’ request to stay is based on the relationship between the
allegations Plaintiff makes in this case and those in proceedings before the
Trademark Trial and Appeal Board (“TTAB”), a branch of the United States Patent
and Trademark Office. Among other duties, it administers cancellation proceedings
“in which the plaintiff seeks to cancel an existing registration, in whole or in part.”
(ECF No. 51, PageID #345 (citing TBMP § 102.02).) Barton Watchbands argues
several TTAB proceedings involving Plaintiff’s trademarks merit a stay of this
litigation.
A. Plaintiff’s Allegations
International Watchman is an Ohio corporation that claims to be “very well
known as a supply of watches and watch strap [sic],” among other products, sold
under its NATO brand. (ECF No. 1, ¶ 13, PageID #6.) Plaintiff has federally
registered its “NATO” mark and claims Barton Watchbands violated the mark in
several ways. (Id., ¶ 17.) According to the complaint, Barton Watchbands sells “at
least forty seven [sic] (47) different watch straps advertised and/or described as
‘NATO’ watch straps.” (Id., ¶ 21.) Based on these allegations, Plaintiff seeks
injunctive and monetary relief for trademark infringement under federal law and for
unfair competition under State law. (Id., ¶¶ 64–77, PageID #13–16.)
B. TTAB Proceedings
B.1. Watching Time Cancellation Proceeding
When the complaint was filed, there was one cancellation proceeding related
to Plaintiff’s mark pending before the TTAB. (ECF No. 51, PageID #345 (citing
Watching Time, LLC v. International Watchman, Cancellation No. 92067341).) The
Watching Time action was filed November 18, 2017 and seeks cancellation of
Plaintiff’s mark on the grounds it (1) is or has become generic; (2) falsely suggests a
connection with the North Atlantic Treaty Organization; and (3) was obtained
fraudulently. Watching Time, 1 TTABVUE 1–7 (Petition for Cancellation).
B.2. ToxicNATOS and Barton Watchbands Cancellation
Proceedings
In addition to the Watching Time cancellation proceeding, former Defendant
ToxicNATOS filed a cancellation proceeding related to the mark on December 3, 2019.
(ECF No. 51, PageID #345 (citing ToxicNATOS Ltd. v. International Watchman, Inc.,
Cancellation No. 92072930).) On March 23, 2020, after Plaintiff initiated this
lawsuit, Barton Watchbands commenced a third cancellation proceeding related to
the mark. (ECF No. 51-1.) But the TTAB suspended the ToxicNATOS and Barton
Watchbands cancellation proceedings pending this litigation. (ECF No. 51, PageID
#345; ECF No. 63, PageID #477.)
B.2. Plaintiff’s TTAB Appeals
International Watchman initiated several ex parte appeals to the TTAB
regarding the Patent and Trademark Office’s rejection of Plaintiff’s applications to
register “NATO” and/or “N8O” in various capacities. (ECF No. 67, PageID #523–24.)
The Trademark Office denied Plaintiff’s application to register “N8O” for watches,
watchbands, and watchstraps based in part on a finding of genericness. (ECF
No. 67-1, PageID #535.) Plaintiff’s appeal of that decision is suspended pending the
Watching Time cancellation proceeding. (ECF No. 67-2.)
Also pending are Plaintiff’s seven appeals to the TTAB regarding the
Trademark Office’s rejection of its applications to register “NATO.” (ECF No. 67-3.)
The rejection was based in part on a false association with the North Atlantic Treaty
Organization. (Id.) The rejected applications did not relate to watches, but to other
types of goods, including decals, metal bottle caps, flashlights, lip balm, energy bars,
and tents. (ECF No. 67, PageID #524 n.3; ECF No. 68, PageID #644 n.1.)
STATEMENT OF THE CASE
International Watchman filed this action on October 3, 2019, raising claims of
trademark infringement, counterfeiting, and unfair competition against several
Defendants, although Barton Watchbands is one of only two Defendants who remain.
. (ECF No. 1.) Barton Watchbands answered the complaint and asserted several
defenses, including that Plaintiff’s claims are barred because the mark is generic and
suggests a false association with the North Atlantic Treaty Organization. (ECF No.
43, ¶¶ E–F, PageID #235.)
At the Court’s direction (ECF No. 44), International Watchman and Barton
Watchbands filed cross-briefs on the propriety of a stay pending a ruling by the TTAB
in the Watching Time cancellation proceeding. International Watchman filed a brief
against a stay and subsequently submitted three supplemental briefs. (ECF Nos. 50,
64, 65 & 68.) Barton Watchbands filed a cross-brief and two supplemental notices in
support of a stay. (ECF Nos. 51, 63 & 67.)
A. Barton Watchbands’ Arguments
Barton Watchbands requests a stay of this litigation in light of the TTAB’s
pending cancellation proceeding in Watching Time and Plaintiff’s appeals before the
TTAB. (ECF No. 67, PageID #522.) Barton Watchbands argues the TTAB
proceedings will determine whether Plaintiff owns enforceable trademark rights in
the mark and that those proceedings will likely end before this litigation would reach
trial on the merits. (ECF No. 67, PageID #524–25.) In sum, Barton Watchbands
argues a stay would be judicially efficient, will not prejudice Plaintiff, and is the most
equitable option. (ECF No. 67, PageID #526.)
B. Plaintiff’s Arguments
International Watchman responds that a stay will not improve judicial
efficiency because the TTAB’s decisions are appealable to federal district courts or
the Federal Circuit. (ECF No. 68, PageID #645–46.) Although Plaintiff maintains
cancellation is unlikely, it assures the Court it will appeal cancellation of its mark if
the TTAB orders cancellation. (ECF No. 68, PageID #650.) Plaintiff also argues a
stay should not be ordered because Barton Watchbands is not a party to the TTAB
proceedings and it would be unprecedented to stay based on proceedings that do not
involve both parties. (Id., PageID #645.) Further, Plaintiff argues even if the mark
creates a false association, that issue is not properly before the Court because Barton
Watchbands lacks standing to argue false association on behalf of the North Atlantic
Treaty Organization. (Id., PageID #647–49.) Plaintiff also argues it will be
prejudiced because a stay undermines the “presumption of non-genericness” afforded
to registered marks. (Id., PageID #651.) Finally, Plaintiff argues this case, originally
filed on October 3, 2019, is too far along to permit a stay. (Id., PageID #652.)
LEGAL STANDARD
“[D]istrict courts have the inherent authority to manage their dockets and
courtrooms with a view toward the efficient and expedient resolution of cases.” Dietz
v. Bouldin, 136 S. Ct. 1885, 1892 (2016) (citations omitted). Incident to that inherent
authority is the “broad discretion to stay proceedings.” Clinton v. Jones, 520 U.S.
681, 706 (1997) (citing Landis v. North Am. Co., 299 U.S. 248, 254 (1936)). But courts
“must tread carefully in granting a stay of proceedings, since a party has a right to a
determination of its rights and liabilities without undue delay.” Ohio Envtl. Council
v. United States Dist. Court, S. Dist., etc., 565 F.2d 393, 396 (6th Cir. 1977). Where a
stay is granted, it must be moderate and courts should avoid disrupting “a statutory
or administrative timetable.” Id. (citation omitted).
Barton Watchbands, as the proponent for a stay, bears the burden of
establishing its need. Clinton, 520 U.S. at 709. Barton Watchbands must establish
“that neither the other party nor the public will suffer harm from entry of the order.”
Ohio Envtl. Council, 565 F.2d at 396. Having reviewed the parties’ briefing on the
matter, the Court is not persuaded that a stay is appropriate and declines to exercise
its discretion to grant Barton Watchbands’ request for one.
ANALYSIS
Courts commonly consider five factors when deciding whether to grant a stay:
“(1) the need for a stay; (2) the stage of the litigation; (3) whether the non-moving
party will be unduly prejudiced or tactically disadvantaged; (4) whether a stay will
simplify the issues; and (5) whether the burden of litigation will be reduced for both
the parties and the court.” Cybergenetics Corp. v. Inst. of Envtl. Sci. & Rsch, No. 5:19-
CV-1197, 2020 WL564217, at *2 (N.D. Ohio Jan. 27, 2020) (citing Grice Eng’g, Inc. v.
JG Innovations, Inc., 691 F. Supp. 2d 915, 920 (W.D. Wis. 2010)).
Barton Watchbands specifically asks the Court to consider three factors to
determine whether to stay this litigation pending the TTAB proceedings : “(1) judicial
efficiency as measured by the state of the civil litigation and the stay’s potential to
simplify the issues; (2) harm or unfair prejudice to the non-moving party that will
result from the grant of a stay; and (3) the hardship and inequity to the moving party
if the stay is denied.” (ECF No. 67, PageID #525 (quoting Tigercat Int’l., Inc. v.
Caterpillar, Inc., 2018 WL 2049816, at *2 (D. Del. May 2, 2018).). Because Plaintiff
also focuses on those three factors in its response, the Court addresses each here.
I. Judicial Efficiency
When examining whether a stay will serve judicial efficiency, courts examine
the stage of the civil litigation and whether the stay will simplify the issues. Tigercat
Int’l., 2018 WL 2049816, at *2.
I.A. Stage of Litigation
Plaintiff initiated this litigation on October 3, 2019. Although the case has
been pending for over two years, not much has happened other than dismissal of
several Defendants through settlement or other agreements. In part because of the
briefing on whether to stay, this case has not progressed past the pleading stage. In
contrast, the TTAB cancellation proceeding involving Plaintiff and Watching Time
was filed November 18, 2017, some two years before this action. The TTAB
proceedings are currently suspended pending expert discovery and are set to resume
on May 11, 2021. (ECF No. 67-4.) While the TTAB proceeding has progressed, the
Court considers this case to be in the early stages of litigation, which weighs in favor
of a stay. Tigercat Int’l., 2018 WL 2049816, at *3.
I.B. Simplification of Issues
Resolution of the Watching Time proceeding before the TTAB will not
necessarily simplify the issues in this case. Whatever the outcome of the Watching
Time cancellation, the TTAB’s decision is appealable to federal district courts or the
the Federal Circuit. Kellogg Co. v. Toucan Golf, Inc., 337 F.3d 616, 622–23 (6th Cir.
2003) (citing In re Thrifty, Inc., 274 F.3d 1349, 1350 (Fed. Cir. 2001)). On appeal to
a federal court, the court must review the TTAB’s decision de novo, id. (citing 15
U.S.C. § 1071(b)(1)), and may review new evidence not presented to the TTAB, id.
(citing Dickinson v. Zurko, 527 U.S. 150, 164 (1999)). The TTAB’s decision may be
“highly instructive and persuasive” of the issues at hand, Tigercat, 2018 WL 2049816,
at *4, but is also “rebuttable, not binding, and would require the same factual issues
to be litigated again if challenged in this court,” National Staffing, 2020 WL 6149916,
at *2 (citation omitted). Accordingly, to the extent the issues of genericism and false
association are at issue here, the TTAB’s resolution of those issues in the Watching
Time proceeding or Plaintiff’s TTAB appeals will not necessarily simplify or expedite
their resolution in this case.
In addition, the validity of a mark and whether that mark was infringed upon
are different issues, meaning that resolution of validity by the TTAB may not resolve
the infringement issue here. W & G Tenn. Imps., Inc. v. Esselte Pendaflex Corp., 769
F. Supp. 264, 265 (M.D. Tenn. 1991). Therefore, the Court finds no reason to delay
these proceedings simply based on the shared issues involved. See National Staffing,
2020 WL 6149916, at *2 (explaining that the TTAB’s ruling on cancellation of
registration is not enough to justify a stay of litigation alleging trademark
infringement); Cornerstone Sys. v. Cornerstone Transp. Servs., No. 2:09-cv-02449-
JPM-dkv, 2010 WL 1882074, at *2 (W.D. Tenn. May 11, 2010) (denying stay where
case involved “claims of trademark infringement, Tennessee state law claims, and
the appropriateness of injunctive or monetary relief” because the “TTAB’s sole
exercise of jurisdiction is limited to issues of trademark registration”). This cuts
against staying this action.
II. Prejudice
The Court next considers whether a stay will harm or unfairly prejudice
Plaintiff, Tigercat Int’l., 2018 WL 2049816, at *2, and finds that it will to some degree.
This lawsuit is Plaintiff’s means to enforce and protect the mark. “Unlike a federal
district court, TTAB cannot provide relief for an infringement claim, ‘either injunctive
or by way of damages.’” National Staffing, 2020 WL 6149916, at *3 (quoting Rhoades
v. Avon Prod., Inc., 504 F.3d 1151, 1163 (9th Cir. 2007)). Further, Plaintiff is entitled
to prompt resolution of the alleged infringement, which a stay would impede. Goya
Foods, Inc. v. Tropicana Prods., 846 F.2d 848, 854 (2d Cir. 1988). Delaying these
proceedings will therefore cause some prejudice to International Watchman by
further delaying potential relief on its infringement and state law claims.
III. Hardship and Inequity to Barton Watchbands Without a Stay
Finally, the Court considers whether Barton Watchbands will suffer hardship
or inequity without a stay. Tigercat Int’l., 2018 WL 2049816, at *2. As the movant,
Barton Watchbands “must make out a clear case of hardship or inequity in being
required to go forward, if there is even a fair possibility that the stay for which he
prays will work damage to some one [sic] else.” Landis, 299 U.S. at 255. According
to Barton Watchbands, the harm it will suffer if its request is denied is that it will be
forced “to defend a baseless lawsuit . . . .” (ECF No. 67, PageID #67.) Balanced
against the potential prejudice a stay will cause Plaintiff, Barton Watchbands having
to participate in a lawsuit as a named party does not constitute sufficient hardship
or inequity to merit a stay.
Barton Watchbands argues that Plaintiff is a serial filer of trademark
infringement claims and that no trademark case it has filed has ever made it to final
judgment. (ECF No. 67, PageID #529.) Even assuming that to be true, proceeding
as the Defendant in this case gives Barton Watchbands the opportunity to pursue a
final judgment against Plaintiff. A stay delays that ultimate resolution. Both parties
will benefit from a more immediate final judgment from this Court. See W & G Tenn.
Imports, 769 F. Supp. at 266–67 (noting that delaying final determination on a
trademark claim before the district court “would be unfair to both parties”). Further,
there is no risk to Barton Watchbands of duplicative or wasteful discovery in
proceeding here because it is not a party to the Watching Time proceeding. See
National Staffing, 2020 WL 6149916, at *3 (ability to avoid duplicative discovery
weighed in favor of proceeding).
As a non-party to the Watching Time cancellation, Barton Watchbands lacks a
voice in that proceeding. Barton Watchbands has an interest in defending itself in
these proceedings rather than relying on the arguments in Watching Time at the
TTAB. If the TTAB proceedings result in rulings adverse to Plaintiff, it may direct
the Court to those rulings for consideration as persuasive authority while it
simultaneously defends itself in this case and suffers no harm from proceeding in this
litigation in the interim. Because Barton Watchbands it is not a party to the TTAB
proceedings, it will be spared the risk of simultaneous litigation of similar issues
before different adjudicatory bodies if this matter proceeds. On balance, delaying
these proceedings will neither promote judicial efficiency nor benefit the parties.
CONCLUSION
Considering all the relevant factors—judicial efficiency, prejudice to
International Watchman, and hardship or inequity to Barton Watchbands—the
Court DENIES Barton’s request for a stay.
SO ORDERED.
Dated: March 8, 2021
J.Philip Calabrese”
United States District Judge
Northern District of Ohio
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