A Primer on Practice at the Trademark Trial & Appeal Board

In a precedential decision rendered in an opposition proceeding, the Trademark Trial & Appeal Board (Board) took the lawyers for each side to task for ignoring Board rules in presentation of their case, but ultimately decided the case on a likelihood of confusion analysis. The Board found that the parties' marks and goods were "highly similar" and sustained the opposition. Made in Nature, LLC v. Pharmavite LLC, Opposition Nos. 91223352; 91223683; 91227387 (June 15, 2022, TTAB) (Wellington, Heasley and Hudis, ALJs) (precedential).

Pharmavite sought registration of the standard character mark NATURE MADE for various foods and beverages based on allegations of bone fide intent to use in commerce. Made in Nature (MIN) opposed on the ground that Pharmavite's mark so resembled MIN's registered and common law "Made In Nature" marks as to cause a likelihood of confusion when used on the goods for which registration was sought.

In its brief to the Board, Pharmavite raised, for the first time, the Morehouse (or prior registration) defense. MIN objected to the Morehouse defense as untimely. The Board agreed, noting that defense is "an equitable defense, to the effect that if the opposer cannot be further injured because there already exists an injurious registration, the opposer cannot object to an additional registration that does not add to the injury." The party asserting a Morehouse defense must show that it "has an existing registration [or registrations] of the same mark[s] for the same goods" (emphasis in original).

Here, the Board found that this defense was not tried by the parties' express consent and that implied consent "can be found only where the non-offering party (1) raised no objection to the introduction of evidence on the issue, and (2) was fairly apprised that the evidence was being offered in support of the issue." In this case, Pharmavite did introduce into the record its prior NATURE MADE registrations but only for the purpose of supporting Pharmavite's "[r]ight to exclude; use and strength of Applicant's mark." The Board found that this inclusion did not provide notice of reliance on the Morehouse or prior registration defense at trial.

In sustaining the opposition, the Board commented extensively on the record and how it was used, "[s]o that the parties, their counsel and perhaps other parties in future proceedings can benefit and possibly reduce their litigation costs."

Over-Designation of the Record as Confidential

The Board criticized the parties for over-designating as confidential large portions of the record, warning that only the specific "exhibits, declaration passages or deposition transcript pages that truly disclosed confidential information should have been filed under seal under a protective order." If a party over-designates material as confidential, "the Board will not be bound by the party's designation."

Duplicative Evidence

The Board criticized the parties for filing "duplicative evidence by different methods of introduction; for example, once by Notice of Reliance and again by way of an exhibit to a testimony declaration or testimony deposition." The Board noted that such practice is viewed "with disfavor."

Overuse of Deposition Designations

The Board criticized both parties for over-designating extensive excerpts of discovery deposition testimony of their own witnesses under Trademark Rule 2.120(k)(4), which provides:

If only part of a discovery deposition is submitted and made part of the record by a party, an adverse party may introduce under a notice of reliance any other part of the deposition which should in fairness be considered so as to make not misleading what was offered by the submitting party. A notice of reliance filed by an adverse party must be supported by a written statement explaining why the adverse party needs to rely upon each additional part listed in the adverse party's notice, failing which the Board, in its discretion, may refuse to consider the additional parts.

As the Board explained, "[i]t is not an appropriate use of Trademark Rule 2.120(k)(4) to introduce unrelated testimony, rather than just the additional necessary portions of discovery deposition excerpts that clarify the passages originally submitted." In this case, the Board stated that both parties "are equally guilty of abusing Trademark Rule 2.120(k)(4), and [we] trust that the parties and their counsel will not repeat this practice in future matters before the Board."

Limiting the Record to Pertinent Evidence

The Board noted that "sizeable portions of each party's evidentiary materials were not pertinent to the issues involved in this rather straightforward priority and likelihood of confusion opposition proceeding, such that the Board was forced to spend needless time sifting through an inappropriately large record in search of germane proofs." The Board pointedly noted that "[t]his is not productive. ‘Judges are not like pigs, hunting for truffles buried in [the record].'"

Record Citations

The Board advised the parties to adhere to its Manual of Procedure at § 801.03. As to how evidence should be cited:

For each significant fact recited, the recitation of facts should include a citation to the portion of the evidentiary record where supporting evidence may be found. When referring to the record in an inter partes proceeding before the Board, parties should include a citation to the TTABVUE entry and page number (e.g., 1 TTABVUE 2) to allow the reader to easily locate the cited materials.

In this case, the Board criticized the parties for using their own exhibit numbering system rather than the TTABVUE docket number and, for testimony submitted by deposition transcripts, using the page and line numbers provided by the court reporters rather than the TTABVUE citations. As the Board noted, this encumbered the Board in its efforts "to provide evidentiary references for use in this opinion; lengthening the time for review of the record, drafting of the decision and ultimately for issuance of this opinion."

Likelihood of Confusion

After its chapter and verse critique of the presentation by the parties, the Board embarked on an exhaustive Trademark Act § 2(d) analysis, considering and balancing each of the DuPont factors, and ultimately concluded that MIN had sustained its opposition.