New Orleans Louisiana Saints LLC and NFL Properties LLC v. Who Dat', Inc.

This Decision is a UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

Precedent of the TTAB P.O. Box 1451

Alexandria, VA 22313-1451

DUNN

Mailed: July 22, 2011

Opposition No. 91198708

New Orleans Louisiana Saints

LLC and NFL Properties LLC

v.

Who Dat?, Inc.

Elizabeth A. Dunn, Attorney:

This case now comes up on cross-motions to suspend

this opposition on, respectively, different grounds, namely

the disposition of other oppositions against the

application and of a civil action against the same

application.1 Each motion requires a different analysis.

For clarification, the Board’s practices regarding multiple

opposers of an application and multiple proceedings against

an application are set forth below.2

1 Applicant apparently filed three motions to suspend, but no

action will be taken with respect to docket entry #4, which was filed

inadvertently in this proceeding, or docket entry #7, which is a

duplicate paper.

2 There are parallel practices regarding multiple petitioners or

proceedings against a registration. However, it is less common to have

multiple petitions or actions pending simultaneously against a

registration, and the order will refer only to oppositions.

Opposition No. 91198708

Multiple Unrelated Opposers

On occasion, one application is the subject of

multiple oppositions, unrelated except insofar as they

address the same application. See Stuart Spector Designs

Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549

(TTAB 2009); DataNational Corp. v. BellSouth Corp., 18

USPQ2d 1862 (TTAB 1991); Vaughn Russell Candy Co. v.

Cookies in Bloom Inc., 47 USPQ2d 1635, 1636 (TTAB 1998).

Because the Board and the parties are interested in the

prompt disposition of pleaded claims and defenses, separate

oppositions against the same application typically proceed

simultaneously. Any amendments to the opposed application

must be made with the consent of all opposers. 37 CFR

Section 2.133(a) (Trademark Rule 2.133(a). Likewise, any

voluntary abandonment of the application must be made with

the written consent of all opposers, or judgment will

entered for each opposer who has not consented to the

abandonment. 37 CFR Section 2.135 (Trademark Rule 2.135).3

3 When an application that is the subject of multiple oppositions

is voluntarily abandoned, each opposition will necessarily be sustained

or dismissed, depending on whether the opposer has consented to the

abandonment. In contrast, when the Board sustains one opposition on

its merits, either on summary judgment or at final hearing, this will

result in abandonment of the application, but the other oppositions

will remain pending. In such cases, the Board generally issues an

order to each opposer for the remaining oppositions, requiring notice

from each such opposer as to whether it wishes to go forward to obtain

judgment on the merits, failing which the opposition will be dismissed

as moot. Where the Board dismisses one opposition to an application,

the entry of judgment for applicant has no bearing on the other pending

2

Opposition No. 91198708

In view of this practice, the Board seldom grants a

motion to suspend an opposition pending the disposition of

other oppositions against the same application unless the

motion includes the consent of the other parties. If the

Board were to pick one among multiple oppositions to

proceed, and to suspend all others, there is potential

prejudice to those who did not consent to suspension.4

Accordingly, in the absence of consent, a motion to suspend

an opposition on the ground that another opposition against

the same application may be successful, making the movant’s

opposition moot, in most cases will be denied.

When there are common claims in separate oppositions

against the same application, the Board’s interest in

consistency and economy may dictate an exception to the

practice that the oppositions go forward simultaneously.

In the usual circumstance involving multiple oppositions,

the various opposers plead one or more common claims, for

example, the mark fails to function as a trademark, or is

merely descriptive or generic as applied to the goods or

oppositions, and the opposed application will not go forward to issue

until a final order has been entered in all pending oppositions.

4 Evidence or witnesses may be lost if there is a protracted delay

in the ability of opposers or applicants to bring their claims and

defenses. See for example Prakash Melwani v. Allegiance Corporation,

97 USPQ2d 1537, 1541 (TTAB 2010); Gaylord Entertainment Co. v. Calvin

Gilmore Productions Inc., 59 USPQ2d 1369, 1372 (TTAB 2000) (in

determining whether excusable neglect allows the reopening of testimony

periods, the Board considers any prejudice to the non-moving party such

as lost evidence or unavailable witnesses).

3

Opposition No. 91198708

services, and the common claim indicates that duplicative

evidence may be submitted. Thus, the Board may order

suspension of other oppositions pending disposition of the

opposition that has proceeded the furthest and is closest

to issuance of a Board final decision, because that

decision may have a bearing on the common claims in the

other oppositions. 37 CFR Section 2.117(a) (Trademark Rule

2.117(a)). If the multiple oppositions against the same

application are at the same stage of litigation and plead

the same claims, the Board may order consolidation. See

Stuart Spector Designs Ltd. v. Fender Musical Instruments

Corp., 94 USPQ2d 1549 (TTAB 2009); DataNational Corp. v.

BellSouth Corp., 18 USPQ2d 1862 (TTAB 1991); TBMP §511 (3d

ed. 2011).

In the instant case, application Serial No. 85113102

seeks registration under Trademark Act Section 1(b) for the

mark WHO DAT, in standard character form, for a variety of

goods and services, and is the subject of three oppositions

brought by different parties. In this proceeding, New

Orleans Louisiana Saints LLC and NFL Properties LLC bring

claims of priority and likelihood of confusion,

deceptiveness, and false suggestion of a connection with

their registered marks including NEW ORLEANS SAINTS,

SAINTS, NFL, SUPER BOWL, fleur-de-lis design, and black and

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Opposition No. 91198708

gold football uniforms. In Opposition No. 91198673, a

third party brings claims that the mark is merely

descriptive, functional, and generic. In Opposition No.

91198706, another third party brings claims that the mark

is merely descriptive or generic.

The Board disagrees with applicant’s statement that

the pleaded issues in this case “are essentially duplicates

of claims” in the other oppositions brought against the

application. If applicant successfully defends against the

instant opposers’ claims of likelihood of confusion,

deceptiveness, and false association, this will have no

bearing on the ability of the other opposers to bring their

claims that the mark is merely descriptive, functional, and

generic. Because the instant opposers have not consented

and the claims in the other oppositions differ from the

claims involved here, applicant’s motion to suspend this

opposition pending the disposition of the other oppositions

is denied.

Civil Proceedings Bearing on the Application or Mark

If the parties to an opposition are involved in a

district court action involving the same mark or the

opposed application, the Board will scrutinize the

pleadings in the civil action to determine if the issues

before the court may have a bearing on the Board’s decision

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Opposition No. 91198708

in the opposition. Forest Laboratories Inc. v. G.D. Searle

& Co., 52 USPQ2d 1058, 1061 (TTAB 1999)(“The parties are

allowed until thirty days from the mailing date of this

order to submit a copy of the complaint in the civil action

in order that the Board may determine whether suspension of

proceedings herein is warranted.”). A decision by the

district court may be binding on the Board whereas a

determination by the Board as to a defendant's right to

obtain or retain a registration would not be binding or res

judicata in respect to the proceeding pending before the

court. Whopper-Burger, Inc. v. Burger King Corp., 171 USPQ

805, 807 (TTAB 1971). Thus, the civil action does not have

to be dispositive of the Board proceeding to warrant

suspension, it need only have a bearing on the issues

before the Board. Trademark Rule 2.117(a). Accord 6

McCarthy on Trademarks and Unfair Competition §32:47 (4th

ed. updated June 2011)(“It is standard procedure for the

Trademark Board to stay administrative proceedings pending

the outcome of court litigation between the same parties

involving related issues.”).

The parties to this opposition are in reversed

positions in a civil action pending in the District Court

for the Eastern District of Louisiana (Who Dat? Inc. v. NFL

Properties LLC, New Orleans Louisiana Saints LLC et al.,

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Opposition No. 91198708

Case No. 2:10-CV-02296-CJB-KWR). The current complaint

alleges, among other claims, trademark infringement of

applicant’s WHO DAT mark, and seeks, among other remedies,

to enjoin use of the term WHO DAT by all the defendants.

Inasmuch as the decision by the district court to enjoin

use of the WHO DAT mark by opposers would have a bearing on

this proceeding, each party has moved to suspend

proceedings pending the disposition of the above-referenced

civil action in Louisiana.5 Accordingly, proceedings are

suspended pending final disposition of the civil action

between the parties.

Within twenty days after the final determination of

the civil action, opposer must so notify the Board so that

this case may be called up for appropriate action.

During the suspension period the Board shall be

notified of any address changes for the parties or their

attorneys.

***

5 More specifically, applicant sought suspension of this proceeding

due to the pending oppositions and the civil action, and its motion is

denied as to the pending oppositions. Opposers sought suspension based

solely on the civil action, and their motion is granted.

7