Federal Trademark Lawsuits and TTAB Proceedings are not Mutually Exclusive

Sportico wrote last week that Chaos Lacrosse LLC (Chaos), "a club lacrosse program for youth and high-school players," recently sued the Premier Lacrosse League (PLL), which includes a team named Chaos Lacrosse Club, for trademark infringement. See https://sports.yahoo.com/pll-youth-lacrosse-program-battle-110000578.html?fr=sycsrp_catchall.

The recently filed trademark infringement—which was filed in federal court, specifically, the United States District Court for the Northern District of Texas—is not the first trademark proceeding between these two parties. On August 16, 2022, Chaos filed a petition for cancellation against PLL with the USPTO's Trademark Trial and Appeal Board (“TTAB”). Chaos alleged that PLL's Registration Nos. 6048885 and 6048870 for the marks

and CHAOS.

The dispute between Chaos and PLL illustrates that federal trademark lawsuits and TTAB proceedings are not mutually exclusive. Although there is no requirement that parties pursue both proceedings, it is not uncommon to seek relief in both forums.

Recall, a pending application is subject to opposition only at the TTAB (with few exceptions). By contrast, an existing registration is subject to cancellation in federal court, as well as at the TTAB. Although a district court and the TTAB can both cancel registrations, there are meaningful differences between the two forums that should be considered by trademark litigants.

First, the TTAB's authority in a cancellation proceeding is limited to canceling/maintaining trademark registrations. Unlike a district court, the TTAB cannot impose monetary sanctions nor award monetary relief (e.g., damages, attorney's fees). Similarly, the TTAB cannot impose injunctive relief. Stated differently, cancellation of a registration does not mean the registrant is forced to stop using a trademark.

Second, and regardless of where the litigants are located, cancellation proceedings are decided by administrative law judges of the TTAB located in Alexandria, Virginia (home of the USPTO). By contrast, trademark infringement lawsuits take place in federal court. Federal courts are located throughout the United States, and the particular court is chosen by the plaintiff at the time the lawsuit is filed and is usually based on where one or both of the parties reside.

Third, TTAB and district court proceedings proceed in much the same fashion from commencement through discovery. However, differences between the proceedings are more apparent when it comes time for trial and the presentation of evidence.

In federal court, the court schedules a trial to take place on a specific day(s). The outcome is decided by a jury or a single judge. In addition to opening statements and closing arguments, each side usually has an opportunity to elicit testimony from witnesses and offer exhibits through the witnesses.

At the TTAB, however, each side has a period of a few weeks to take trial testimony from witnesses. Instead of witnesses testifying in court on the witness stand, witnesses typically appear in a law firm conference room for a testimony deposition. Alternatively, witnesses can testify by way of sworn declaration. The parties submit the testimony transcripts/declarations, along with other trial exhibits to the TTAB. The submissions are made electronically.

After these periods are over, each side prepares and submits a written trial brief to the TTAB. For example, the party petitioning to cancel the registration(s) files an opening brief, the registrant reviews and files a response brief, and the party petitioning to cancel gets the last word with a shorter, final brief. One or both parties may request an oral argument before the three TTAB judges deciding the case. The oral argument may occur a few weeks to several months later.

Fourth, if a party wants to appeal the decision of the district court, the appeal is considered by the appellate court where the district court is located. For example, if Chaos or PLL is unhappy with the decision of the court in the Northern District of Texas, it can appeal to the U.S. Court of Appeals for the Fifth Circuit, which is located in New Orleans, Louisiana. By contrast, if Chaos or PLL is unhappy with the decision of the TTAB, it can appeal to either the United States District Court for the Eastern District of Virginia or the U.S. Court of Appeals for the Federal Circuit (located in Washington, D.C.).

While cancellation and infringement proceedings may proceed concurrently, often the TTAB will stay (i.e., put on hold) the cancellation proceeding while the infringement suit proceeds through the district court. The reasoning is that the district court will ultimately make the decision initially posed to the TTAB.

If you are involved in a trademark dispute, consult with a trademark attorney to consider what forum is best for you and your case.