TTAB 2024 Series, Part 5: Procedure, Evidence & Special Topics

This is Part 5, the final installment of our series on the TTAB's 30 precedential decisions from 2024. Read Part 4 on Use Requirements →

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The Trademark Trial and Appeal Board issued 30 precedential decisions in 2024, and the TTABlog's year-end roundup files 13 of them under discovery, evidence and procedure. These rulings rarely make headlines, but they often decide cases. An unanswered discovery request, a defense with no facts behind it, or a claim filed one step too early can end a party's case before anyone reaches the merits.

This final part covers six procedural rulings, including the META opposition and the sovereign immunity decision, plus two decisions that fit no other category: the LEATHERNECKS false-suggestion refusal and a rare claim under the Pan-American Convention. It closes with a wrap-up of the whole series.

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Decision 1: USPTO's Inherent Authority to Cancel a Mistaken Registration

Case: Precedential No. 29, In re Nursecon, LLC (December 26, 2024) Outcome: The USPTO's cancellation of an inadvertently issued registration was upheld, and the descriptiveness refusal of NURSECON was affirmed

What Happened

Nursecon applied to register NURSECON for arranging and conducting special events for social entertainment purposes. After its statement of use was accepted, but before the registration issued, the examining attorney put a note in the file: a refusal had to issue, the USPTO's systems could not stop the registration from issuing, and so the registration would be canceled as inadvertently issued and the application returned to pending status. That is what happened. The examining attorney then refused registration on the ground that NURSECON is merely descriptive of the services. Nursecon argued that the USPTO had no authority to cancel an issued registration in order to reopen examination.

The TTAB's Analysis

The Board held that the USPTO, like other administrative agencies, has inherent authority to reconsider its decisions and correct its own errors, and that this authority does not come from the TMEP. Canceling the registration "as inadvertently issued was an appropriate exercise of the USPTO's inherent authority to correct its errors." An applicant who disagrees with the refusal that follows has a remedy: appeal the refusal on its merits, which is what Nursecon did. On the merits, the Board affirmed the refusal.

Why It Matters

A registration certificate is not always the end of examination. When the USPTO catches an error before a registration issues but cannot stop its systems in time, it can cancel the registration and resume examination, even to raise a refusal that could have been made earlier.

Practical tip: If your registration is canceled as inadvertently issued, the real fight is over the refusal that follows. Respond to it on the merits, and appeal if needed.

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Decision 2: Unanswered Requests for Admission Cancel a Registration

Case: Precedential No. 22, The Learning Journey International, L.L.C. v. Hua Yongfu, Cancellation No. 92082654 (September 6, 2024) Outcome: Summary judgment for the petitioner on abandonment; the LEARN-JOURNEY registration was ordered canceled

What Happened

The Learning Journey International petitioned to cancel a registration for LEARN-JOURNEY covering stationery, paper and related goods. On December 5, 2023, it served discovery requests, including requests for admission, on the registrant. The registrant never responded. When the petitioner moved for summary judgment based on the unanswered requests, the registrant's only argument was that the requests asked it to admit things it had already denied in its answer.

The TTAB's Analysis

Under Federal Rule of Civil Procedure 36(a)(3), which applies in Board proceedings, a matter is admitted unless the other party answers or objects within 30 days after being served. The Board rejected the registrant's argument, relying on a federal appeals court decision holding that an earlier denial "does not obviate the need to respond to a Rule 36 request for admissions."

The registrant had two ways out and used neither: a motion to reopen its time to respond by showing excusable neglect, or a motion to withdraw or amend the admissions under Rule 36(b). So the admissions were conclusively established. Among them: the registrant had not sold any of the listed goods under the mark for at least three consecutive years and had no intent to use the mark on any of them. That was enough for summary judgment on abandonment, and other evidence in the record could not reopen facts already settled by the deemed admissions.

Why It Matters

An ignored request for admission does not just leave a gap in discovery. It is admitted by operation of law, and in this case the admissions decided the whole proceeding without a trial.

Practical tip: Answer or object to every request for admission on time, even one that repeats a denial from your answer. If a deadline slips, move promptly to reopen the time or to withdraw the admissions, and explain why.

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Decision 3: VELCRO Cancellation Bifurcated

Case: Precedential No. 21, NHDNC LLC v. Velcro BVBA and Velcro IP Holdings LLC, Cancellation No. 92074468 (September 6, 2024) Outcome: Velcro's motion to split the case into two phases was granted over the petitioner's objection

What Happened

NHDNC petitioned to cancel Velcro's registration for VELCRO, issued in 1975 for hook and loop fasteners, claiming the public understands the term as the name of the goods. NHDNC amended its petition several times trying to show it was entitled to bring the case at all, and eventually relied on its own application for a composite mark containing VELCRO. On summary judgment the Board found a genuine dispute over whether NHDNC had a bona fide intent to use that mark, so its entitlement to sue was left for trial. After a Board judge suggested the parties stipulate to deciding that question first and NHDNC declined, Velcro moved to bifurcate.

The TTAB's Analysis

Federal Rule of Civil Procedure 42(b) lets the Board order separate trials for convenience, to avoid prejudice, or to expedite and economize a case. The Board looked at factors including whether the issues can be separated, whether separating them saves discovery and resources, and prejudice to the parties. Bifurcation fits especially well when one issue could resolve the whole case. Here, entitlement could end the proceeding, while genericness "often involves the development and review of voluminous evidence, including any expert reports." Proving entitlement was NHDNC's burden in any event, so trying it first did not prejudice NHDNC. Phase one covers entitlement only; genericness will be tried only if NHDNC clears it.

Why It Matters

Entitlement to a statutory cause of action is a threshold issue in every Board inter partes case. When it is genuinely disputed and the merits would be expensive to try, a defendant can ask the Board to decide it first.

Practical tip: If you are defending a costly case and the plaintiff's entitlement to sue is shaky, consider a motion to bifurcate. If you are the plaintiff, build the record on your entitlement early.

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Decision 4: Sovereign Immunity Rejected in a State College Opposition

Case: Precedential No. 12, Mountain Gateway Order, Inc. v. Virginia Community College System, Opposition Nos. 91283412 and 91283416 (June 6, 2024) Outcome: The state applicant's motions to dismiss on sovereign immunity grounds were denied

What Happened

The Virginia Community College System applied to register MOUNTAIN GATEWAY COMMUNITY COLLEGE for clothing and for college-level educational services. Mountain Gateway Order, Inc., which pleaded prior rights in MOUNTAIN GATEWAY and MOUNTAIN GATEWAY ACADEMY, opposed on the grounds of likelihood of confusion, dilution and lack of a bona fide intent to use. Instead of answering, the college system, which told the Board it "is an agency of the Commonwealth of Virginia," moved to dismiss, arguing that state sovereign immunity left the Board without jurisdiction.

The TTAB's Analysis

The Board held that sovereign immunity does not apply to opposition proceedings. The Trademark Act defines a "person" to include "any State [and] any instrumentality of a State," and a state that applies for registration is subject to the same registration provisions as any other applicant, including opposition. The Board compared oppositions to inter partes review at the Patent Trial and Appeal Board, where the Federal Circuit has held that state sovereign immunity does not apply, and found the purpose comparable: oppositions protect "the public interest in the integrity of the federal trademark register." The applicant's status under the Act and that public interest "dictate that Applicant is subject to opposition proceedings and that sovereign immunity does not apply to opposition proceedings."

Why It Matters

A state university or agency that applies for a federal registration can be opposed like any other applicant. The holding is about oppositions; the Board did not rule on cancellation proceedings.

Practical tip: If you are opposing an application filed by a state entity, this is the precedent to cite when it raises immunity.

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Decision 5: "Trademark Bullying" Defense Struck

Case: Precedential No. 8, DoorDash, Inc. v. Greenerside Holdings, LLC, Opposition No. 91285160 (May 23, 2024) Outcome: The applicant's unclean hands defense, built on "trademark bullying," was struck without leave to replead

What Happened

DoorDash opposed an application to register DOOR DABZ, pleading likelihood of confusion with its registered marks. The Board had already struck all of the applicant's original affirmative defenses once. The applicant repleaded an unclean hands defense: DoorDash had engaged in "trademark bullying," was among the top filers of TTAB proceedings, and had opposed a significant number of applications on dubious, weak or exaggerated grounds.

The TTAB's Analysis

The Board noted that the Trademark Act "does not refer to 'trademark bullying' explicitly or even implicitly." An unclean hands defense needs specific allegations of misconduct by the plaintiff, related to the plaintiff's claim. An opposer that pleads likelihood of confusion based on its registrations is exercising its right to protect its marks, and calling its past oppositions "bullying" or "dubious" is a label, not a fact. The Board struck the defense and, because the allegations could not support it, did not let the applicant plead it again.

Why It Matters

The Board acknowledged that courts in infringement litigation have awarded sanctions for over-aggressive enforcement with no reasonable basis for recovery. But here, a defense built on the opposer's litigation history, without specific misconduct tied to its claim, did not survive a motion to strike.

Practical tip: If you are the smaller party in an opposition, put your effort into the merits of the likelihood of confusion claim rather than the opposer's track record.

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Decision 6: META Opposition Survives Meta's Motions to Dismiss

Case: Precedential No. 6, MyMeta Software, Inc. v. Meta Platforms, Inc., Opposition No. 91286055 (April 24, 2024) Outcome: Meta Platforms' motions to dismiss the amended notice of opposition were denied

What Happened

MyMeta Software, Inc. obtained an extension of time to oppose Meta Platforms' application to register META and filed its opposition on July 14, 2023. The electronic (ESTTA) cover sheet named MyMeta Software, Inc. as the opposer, but the attached pleading named myMeta Software SRL, a non-U.S. company that owned the pleaded application. The opposer amended its pleading to explain that MyMeta Software, Inc. was the Delaware corporate domestication of myMeta SRL. Meta moved to dismiss on two grounds: that the amended opposition was an untimely filing by a party that had not received the extension, and that the opposer could not rely on a third party's rights.

The TTAB's Analysis

On timing, the Board treats the ESTTA filing form and its attachments as a single document and presumes that the party named on the form is the opposer. Because the form named MyMeta Software, the original opposition was its own timely filing, and the amendment simply conformed the pleading to the form.

On entitlement, the Board read Delaware's domestication statute to mean that myMeta SRL and MyMeta Software "are deemed to be the same continuing entity under Delaware law." So MyMeta Software could rely on the SRL's pending application, against which the USPTO had cited Meta's application as a potential bar to registration, as well as on its own alleged prior common-law use. The Board added that the opposer had sufficiently pleaded a Section 2(d) claim based on prior common-law rights and a hypothetical likelihood of confusion.

Why It Matters

The decision says nothing about Meta's size or fame; it turned on filing mechanics. A motion to dismiss for failure to state a claim is, in the Board's words, "a test solely of the sufficiency of a complaint," and this pleading was sufficient. The ruling also shows that a company that changes form through a corporate domestication can keep relying on its predecessor's rights.

Practical tip: When you oppose after an extension of time, file in the exact name of the party that received the extension, and make sure the attached pleading names the same party as the ESTTA form.

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Beyond Procedure: Two Decisions That Fit No Other Category

LEATHERNECKS: False Suggestion of a Connection

Case: Precedential No. 11, In re Leathernecks Motorcycle Club International, Inc. (June 6, 2024) Outcome: The Section 2(a) refusal of LEATHERNECKS as a collective membership mark was affirmed

What happened. A motorcycle club applied to register LEATHERNECKS, in gold letters on a scarlet arc, as a collective membership mark indicating membership in the club. All of its current members are active-duty or honorably discharged Marines, or Navy corpsmen who served with the Fleet Marine Force. The examining attorney refused registration under Section 2(a) because the mark falsely suggests a connection with the U.S. Marine Corps.

The TTAB's analysis. The club argued that Section 2(a) does not apply to collective membership marks. The Board disagreed: nothing in the Trademark Act exempts them, and they are examined under the same criteria as other marks. Merriam-Webster defines "leatherneck" as "a member of the U.S. Marine Corps." The Board found that the term points uniquely and unmistakably to the Marine Corps for the relevant public, even though it can also refer to the British Royal Marines and appears in thirteen third-party uses and seven registrations for unrelated goods and services. Two more facts reinforced that finding: the club's design closely resembles ten Marine Corps-owned registrations for gold and red patches, and members wear it on their vests above the Eagle, Globe and Anchor emblem and the letters "USMC." The Marine Corps is not connected to the club in the way the test requires, for instance through a licensing arrangement, even though a 2002 article about the club was still posted on the Marine Corps website. Given the Corps' fame and reputation, the Board found that a connection would be presumed.

Why it matters. The members' own service did not give the club the kind of connection Section 2(a) requires. False suggestion of a connection reaches a recognized nickname, not just an official name, and it applies to collective membership marks like any other mark.

Practical tip: Veterans' groups, alumni clubs and fan organizations that adopt the nickname of a government body or institution face the same risk. Being made up of Marines did not connect this club to the Marine Corps; a license or similar authorization is the kind of connection the Board looks for.

The Pan-American Convention: A Rare Treaty Claim

Case: Precedential No. 27, Empresa Cubana del Tabaco d.b.a. Cubatabaco v. Kretek International, Inc., Cancellation No. 92082877 (November 14, 2024) Outcome: The Article 8 claim was dismissed without prejudice, with time to file a supplemented petition

What happened. Cubatabaco, which alleges it is a Cuban state corporation, petitioned to cancel two Kretek registrations for design marks for cigars, alleging that they copy the band design of its COHIBA cigars. It pleaded likelihood of confusion and a claim under Article 8 of the General Inter-American Convention for Trademark and Commercial Protection of Washington, 1929, known as the Pan-American Convention. The Board noted that the United States and Cuba are both parties to the convention, which is self-executing. Article 8 lets the owner of a mark cancel an interfering registration in another member country when its own application there is refused because of that registration. The owner must prove that its mark had legal protection in another member country first, and must also meet one of two further conditions, such as showing that the registrant knew of its mark.

The TTAB's analysis. When Cubatabaco filed its petition, the USPTO had not yet examined Cubatabaco's own U.S. application. Later, the examining attorney suspended that application until the cancellation is decided, identifying Kretek's registrations as a potential Section 2(d) bar. Building on its 2020 Lacteos decision, the Board held that such a suspension satisfies the treaty's requirement of a refusal, which the Board reads to include a potential for refusal. The knowledge element was adequately pleaded: allegations that Kretek's marks were "a blatant and obvious copying" of Cubatabaco's mark supported the claim that Kretek knew of it. But the petition, filed before any examination, did not allege a refusal or potential refusal, so the Board dismissed the Article 8 claim without prejudice and gave Cubatabaco until December 4, 2024 to file a supplemented petition. Without one, the case would proceed on the Section 2(d) claim only.

Why it matters. Article 8 lets a mark owner rely on legal protection in another member country, but its conditions are specific and timing matters. A claim filed before the USPTO has acted on the plaintiff's own application is premature. The Board said the better practice would have been to supplement the pleading when the application was suspended.

Practical tip: If you plan an Article 8 claim, plead it after the USPTO has refused or suspended your application because of the registration you are attacking, or supplement your pleading as soon as that happens.

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Evidence Lessons From These Decisions

• Deemed admissions are binding. Facts established by unanswered requests for admission are judicial admissions that "cannot be rebutted by contrary testimony," as the LEARN-JOURNEY cancellation showed.
• Exhibits attached to a pleading are not evidence. Apart from status and title documents for a plaintiff's pleaded registrations, exhibits must be properly introduced during trial, as the Board reminded Cubatabaco.
• A lawyer's argument is not proof. In LEATHERNECKS, the Board rejected the club's unsupported argument that none of the third-party users of LEATHERNECK were affiliated with the Marine Corps.
• Canceled registrations carry no weight. The LEATHERNECKS panel set aside canceled registrations, including three for LEATHERNECKS that had listed the Marine Corps as owner, because "'dead' or cancelled registrations have no probative value at all."
• Format and citations count. The Board expects parties to cite the record by TTABVUE docket entry, and briefs must be double-spaced in at least 11-point type. The LEARN-JOURNEY registrant's single-spaced brief was considered only as a matter of the Board's discretion.

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Series Wrap-Up: What the 2024 Decisions Add Up To

Across the series, a few examples show the range of what the Board decided:

• Part 1: Likelihood of Confusion: the Board affirmed a Section 2(d) refusal of UPC for display panels and declined to extend the "something more" requirement to cases involving only goods.
• Fraud: in the BLOOKE cancellation, the Board found intentional deception or, at a minimum, "reckless disregard for the truth from which we infer intent to deceive," and granted the petition on fraud, among other grounds.
• Part 3: Descriptiveness: the Board affirmed the refusal of ZPILE as merely descriptive of metal sheet piles.
• Part 4: Use Requirements: the Board affirmed the expungement of two SMARTLOCK registrations because the marks had never been used in commerce for the listed goods.
• Part 5: Procedure, Evidence & Special Topics (you are here): unanswered requests for admission ended a registration without a trial, and both the META opposition and the Virginia college system opposition survived motions to dismiss.

The common thread: at the Board, a real record and careful attention to the rules matter, whoever the parties are.

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This article is for informational purposes only and does not constitute legal advice. Consult with a qualified trademark attorney for guidance on your specific situation.

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Sources:

• Precedential No. 29 (NURSECON), opinion of December 26, 2024
• Precedential No. 22 (LEARN-JOURNEY), order of September 6, 2024
• Precedential No. 21 (VELCRO), order of September 6, 2024
• Precedential No. 12 (MOUNTAIN GATEWAY COMMUNITY COLLEGE), order of June 6, 2024
• Precedential No. 8 (DOOR DABZ), order of May 23, 2024
• Precedential No. 6 (META), order of April 24, 2024
• Precedential No. 11 (LEATHERNECKS), opinion of June 6, 2024
• Precedential No. 27 (Pan-American Convention claim), order of November 14, 2024
• The TTABlog: The TTAB Issued 30 Precedential Opinions in 2024