Four cases being argued at the Federal Circuit in March attracted amicus briefs. One of these cases is Titanium, LLC v. Zspec Design LLC, a trademark case. In it, Titanium appeals the Trademark Trial and Appeal Board’s denial of its petition to cancel Zspec Design’s trademark registration. This is our argument preview.
In its opening brief, Titanium argued the TTAB erred when it “refused to consider” Titanium’s cancellation petition on the merits after concluding Titanium “failed to raise whether a likelihood of confusion exists.” Titanium maintained it referenced “likelihood of confusion in its briefing,” and “did so explicitly” when discussing the denial of its trademark application “based upon a likelihood of confusion with Zspec’s mark.” Titanium further contended that it “repeatedly raised the issue of likelihood of confusion” when it explained during trial that the parties were “fighting over the exact same mark as used in association with the exact same goods.” In Titanium’s view, these arguments made the issue of confusion “the obvious thing that has been alleged and practically agreed to over-and over.”
In its response brief, Zspec Design highlighted how, under the TTAB’s procedural rules, an argument is waived “if a party fails to reference a pleaded claim in its Trial Brief.” According to Zspec Design, Titanium’s brief “clearly contained no likelihood of confusion argument.” As a result, Zspec Design says, the TTAB’s decision to disregard the claim was proper. Zspec Design maintained that, although its own “responsive Trial Brief did not discuss likelihood of confusion either,” that omission does not “cure the defects in Appellant’s Trial Brief.” Finally, Zspec Design asserted, “public policy considerations dictate” denial of Titanium’s appeal because reversing the TTAB’s decision “would be condoning ignoring TTAB rules.” According to Zspec Design, this “would be promoting a waste of judicial resources.”
In its reply brief, Titanium began by arguing the issue of likelihood of confusion was obvious, “regardless of how elegant that confusion was recited” in its trial brief. Titanium suggested the TTAB “acted arbitrarily when it refused to acknowledge its own rejection” of Titanium’s trademark applications “based on likelihood of confusion.” According to Titanium, “[t]hese are plainly facts within the Board’s knowledge,” which the TTAB should have considered when evaluating Titanium’s petition for cancellation. Moreover, although “standing and likelihood of confusion are not precisely the same,” Titanium argued, “standing could only exist . . . if a likelihood of confusion existed.” Thus, in Titanium’s view, if the “Board concluded that standing existed even though it was raised only” in the petition, then it “necessarily follows that” the Board “should have evaluated likelihood of confusion, too.”
The Director of the U.S. Patent and Trademark Office filed an amicus brief in support of Zspec Design. In it, the government argued “the Board acted consistently with its rules and precedents.” As a result, the government says, the court “should affirm the Board’s decision” and avoid “disturb[ing] the Board’s forfeiture practice or procedures.”
Oral argument is scheduled to be heard on Monday, March 9 at 2:00 pm in Courtroom 402.