In Prospector Capital Partners, Inc
. v. DTTM Operations LLC
, the Trademark Trial and Appeal Board (TTAB or Board) denied the petitioner’s motion to disqualify the TTAB, transfer venue to U.S. District Court, vacate, and suspend proceedings. The Board also exercised its discretion not to enter default judgment on motion by the respondent. Cancellation No. 92063494 (TTAB Aug. 18, 2017) (precedential). The cancellation action is ongoing.
The respondent, DTTM Operations LLC, is the owner of several registrations for the TRUMP mark for various goods and services in Classes 14, 21, 24, 25, 35, 36, 39, and 41. Prospector Capital Partners, Inc., petitioned to cancel the respondent’s registrations for the TRUMP mark on the ground of abandonment, also alleging rights to the TRUMP YOUR COMPETITION mark. Rather than answer the petition to cancel, the respondent filed a motion to dismiss, which the Board granted due to the petitioner’s failure to properly allege abandonment claim or standing. The Board gave the petitioner 20 days to amend its petition to cancel, but rather than amend its petition, the petitioner filed the motion to disqualify the TTAB, transfer venue to U.S. District Court, vacate, and suspend proceedings.
The petitioner argued that the Board should be disqualified and is incapable of objectively ruling because U.S. President Donald J. Trump holds an interest in the TRUMP registrations subject of the cancellation proceeding, and the Board’s judges are appointed by the Secretary of Commerce serving under the president with the “authority to hire or fire.”
The Board defended its ability to adjudicate in an unbiased, independent manner, noting that it is not a “court” under applicable statutes and that the judicial disqualification provision of 28 U.S.C. Section 451 was inapplicable to it. The Board further found that the petitioner had failed to provide any facts supporting its assertion that Board judges are unable to fulfill their statutory obligations merely because the registrations subject to the cancellation proceeding are connected to the President, noting that “the Board is not relieved of its statutory duty to determine rights to registration because a party is directly or indirectly connected with the United States government.” The motion was denied on the ground that the “petitioner has set forth no basis whatsoever for its assertion that the Board lacks the independence necessary to make unbiased decisions in this proceeding.”
In denying the motion to transfer venue to U.S. District Court, the Board educated the petitioner on procedure and the Board’s inability to simply “transfer” a case to district court, noting that if the petitioner wanted to litigate in federal court, it should have filed in the appropriate venue. The petitioner’s request to suspend the proceeding pending transfer to court was therefore denied as moot.
Lastly, in addressing the respondent’s cross motion for default judgment, the Board opted to exercise its discretion not to enter a default judgment and allow the petitioner another chance to file its amended petition to cancel, this time properly alleging the abandonment claim and standing.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.
© 2017 International Trademark Association