Trademark litigants should heed the cautionary tale in this case – develop your arguments or risk waiving them. The United States Court of Appeals for the Federal Circuit continued its recent scrutiny of the practices of the Trademark Trial and Appeal Board in a non-precedential opinion issued November 22, 2023, regarding American Marriage Ministries’ challenge to the Universal Life Church’s “GET ORDAINED” trademark application based upon the alleged lack of distinctiveness and possibly failure to function as a mark for both classes of recited services. In this opinion, the Federal Circuit partially overturned the TTAB’s ruling sustaining the opposition because the opposer may have waived some of its claims. At its core, this ruling demonstrates precisely why trademark litigants must give full, reasoned arguments on their claims and defenses – and why the TTAB must give a reasoned explanation for its decisions.
Rules at Play
Under Trademark Trial and Appeal Board Manual of Procedure § 801.01, “[i]f a party fails to reference a pleaded claim or affirmative defense in its brief, the Board will deem the claim or affirmative defense to have been waived.” Where a party is silent on its arguments, the TTAB may deem the claim or defense completely waived and give it no consideration. In effect, the TTAB might undo months or even years of preparation, research, and discovery to develop that claim or defense. Here, the TTAB ignored this aspect of its practice and nonetheless sustained the opposition even over AMM’s potential waiver.
The risk is pronounced wherever a party bears the burden of proof on an issue. For instance, an opposer bears the burden of proof and persuasion regarding the ultimate issue of the likelihood of confusion. If an opposer neglects to argue its case, it may wither on the vine. The same goes for an applicant arguing an affirmative defense on which it bears the burden. For both parties, additional classes of goods/services raise additional issues that cannot be assumed to present the same issues and facts; therefore, all issues must be argued for each class involved in the proceeding.
The Case at Hand
Here, AMM left some of its claims completely unargued. AMM opposed Universal Life Church’s trademark application for GET ORDAINED on the basis that it was generic, merely descriptive, and failed to function as a trademark. AMM alleged that GET ORDAINED was descriptive, generic, or failed to function as a trademark for both Class 35 and Class 45. Strangely, however, AMM did not include any arguments in its briefs before the TTAB regarding Class 35. Universal Life Church picked up on the waiver in its briefing, pointing out that AMM had failed to make out its claims. Even over this possible waiver, the TTAB sustained the opposition to both Class 35 and 45. It did not, however, explain why AMM had not waived its claims as to Class 35.
On appeal, the Federal Circuit did not let the potential waiver slip by and vacated the TTAB’s judgment as to Class 35 retail store services. The Federal Circuit remanded the case for further proceedings on the question of waiver and found that the TTAB had acted arbitrarily and capriciously by departing from its established practice and precedent without explanation.
Key Takeaways
This appeal by the Applicant/Defendant from the TTAB to the Federal Circuit stands as an example of why all trademark litigants and practitioners must run down every argument in the matters they are involved in. Arguments may be slipping through the cracks of your trademark proceedings and could be waived in the process. This appeal highlights four important, foundational litigation rules:
- Unargued Claims and Defenses May Be Waived. Parties embroiled in trademark proceedings must be careful to argue for all of their claims and defenses in their briefs or risk waiving them.
- Multi-Class Petitions and Oppositions Require Multi-Class Arguments. The Federal Circuit took issue with the TTAB’s departure from precedential decisions holding that an opposition against a multi-class application requires determinations as to each class.[1] If your trademark proceeding involves a multi-class application or registration, consider arguments to attack or defend each class involved because each class of goods/services by definition is factually different. And legal outcomes are determined by the particular facts applied to the law at issue.
- Confront Waiver Head-on. Claims and defenses alleged but not argued are waived to promote efficiency and thoroughness in a party’s arguments. Trademark litigants must be prepared to check their opponent whenever they do not argue all of their claims or defenses and assert waiver where they can. The Universal Life Church was able to snatch a possible victory from the jaws of defeat because it pointed out AMM’s waiver in its briefing, preserving the issue for appeal.
The TTAB Must Explain Itself. If the TTAB as an administrative court fails to provide a reasoned explanation for its decisions, its superior court cannot adequately hold the TTAB accountable for its decisions because it is difficult to assess the correctness of a decision that is not explained, Where it is silent, the TTAB’s decision is vulnerable to attack on appeal.
Of course, it always helps to retain competent trademark counsel to help you in managing your trademark litigation and enforcement strategies.
[1] E.g., General Mills, Inc. v. Fage Dairy Processing Industry S.A., 100 USPQ2d 1584 (TTAB 2011) (precedential).
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