Earlier this week, the Federal Circuit court heard oral argument in Titanium, LLC v. Zspec Design LLC, a trademark case we have been following because it attracted an amicus brief. In this case, Titanium appeals a denial by the Trademark Trial and Appeal Board of its petition to cancel Zspec Design’s trademark registration. Chief Judge Moore and Judges Cunningham and Stark heard the oral argument. This is our argument recap.
Andrew P. Connors argued on behalf of Titanium. He began by highlighting how the Patent and Trademark Office is “charged with maintaining a trademark registry” and determines “who has ownership and who does not.” Connors contended “part of that charge” requires the Trademark Trial and Appeal Board to “reconcile conflicts between claims of ownership.”
Chief Judge Moore explained her view the case “boils down to” whether Titanium waived its likelihood of confusion argument. She asked Connors to address the alleged waiver. In response, Connors pointed the panel to “two trademark applications” the TTAB “rejected on the basis of likelihood of confusion.”
Considering Connors’s argument, Chief Judge Moore asked why the appendix was the “only place where you referenced likelihood of confusion.” Connors answered by arguing “it’s very common” for a party to apply for a trademark and for its application to get “rejected for a likelihood of confusion.” After a trademark rejection, Connors continued to argue, applicants may “suspend those trademark applications” and “seek a cancellation proceeding.” That, he said, is what Titanium did. According to Connors, the problem arose when the TTAB said likelihood of confusion is waived because it wouldn’t look at its own proceedings unless they are attached to the record. That approach, Connors argued, “is an unreasonable rule.”
Judge Stark pressed Connors. He highlighted how Titanium “didn’t even make an argument” beyond a “quick passing reference” to likelihood of confusion. In response, Connors acknowledged Titanium’s argument “isn’t in the argument section” of its brief. Instead, Connors emphasized, its petition, which is “included in the record,” cited the “actual registrations that are filed.”
At this point, Chief Judge Moore asked Connors to point to where in Titanium’s trial brief the issue of “same mark, same goods” was addressed. In response, Connors argued “the entire brief” addressed the issue because it presented “evidence of screenshots of websites and goods.” Those goods, he argued, were “all the same goods.” Connors acknowledged the trial brief’s discussion of the “same mark, same goods” issue “may be elegant,” but maintained the issue was addressed. Considering his argument, Chief Judge Moore asked if the trial brief “actually assert[ed] that these parties are fighting over the exact same mark as used with the exact same goods.” In response, Connors admitted the trial brief did not “explicitly say the exact same goods.” But, he said, “reference to the evidence” shows the issue is about “exact same goods.”
Todd Wengrovsky argued on behalf of Zspec Design. He began by highlighting “the standard of review” is “abuse of discretion.” In this case, he continued, the TTAB “simply followed its own well-established rules,” which “have been affirmed by this court.” He argued “there is no dispute” Titanium’s trial brief “contained no likelihood of confusion” argument. Accordingly, he said, the TTAB “reached the only conclusion that it could have reached,” finding Titanium “waived the likelihood of confusion claim.” In hhis, he said, the TTAB “acted well within its discretion.”
Chief Judge Moore asked Wengrovsky to assume the statement “‘exact same mark,’ verbatim, on the exact same goods,” was “sprinkled” throughout the trial brief. She asked whether that would have preserved the likelihood of confusion claim. Wengrovsky answered “absolutely not.” He argued the “likelihood of confusion analysis” is “a lot more complicated than just a match up” of certain words. Instead, he said, precedent requires the evaluation of “many factors.” This includes, in Wengrovsky’s view, the requirement to break down the relevant factors to determine if “there is a likelihood of confusion.” He said Titanium “did precisely none of that.”
Judge Stark asked how the TTAB “was able to find standing if there’s nothing on likelihood of confusion.” Wengrovsky answered by arguing the TTAB was able to find standing because precedent requires “only that the party seeking cancelation believe that it is likely to be damaged by the registration” of the trademark. To conclude otherwise, he argued, “makes no sense” because trial is “necessarily a separate exercise” and “takes place a couple of years after a proceeding is initiated.”
In his rebuttal, Connors argued “it makes sufficient sense here to say” the reference to “serial numbers” and other evidence shows Titanium preserved its likelihood of confusion claim. A judge asked Connors what standard of review applied, and Connors agreed the standard is “abuse of discretion on [TTAB’s] own rules.” But, he also argued, the court should “examine whether the rule applied here is arbitrary and capricious.”
We will continue monitoring this case and report on developments.