The Board of Trustees of the University of Alabama and Paul W. Bryant, Jr.v.William Pitts, Jr. and Christopher Blackburn

Trademark Trial and Appeal Board

Jun 23, 2015

No. 91187103 (T.T.A.B. Jun. 23, 2015)

Mailed:
June 23, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

The Board of Trustees of The University of Alabama and Paul W. Bryant, Jr.
v.
William Pitts, Jr. and Christopher Blackburn

Opposition No. 91187103
to application Serial No. 77342852

R. Charles Henn, Jr., Alicia Grahn Jones and Nichole Davis Chollet of Kilpatrick
Townsend & Stockton LLP for Opposers The Board of Trustees of The University of
Alabama and Paul W. Bryant Jr.

Jerry L. Watts of Page, Scrantom, Sprouse, Tucker & Ford, P.C. for Applicants
William Pitts, Jr. and Christopher Blackburn.

Before Rogers, Chief Administrative Trademark Judge, Richey, Deputy Chief
Administrative Trademark Judge, and Zervas, Bergsman and Kuczma,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
This decision concerns a request to re-open, vacate, and dismiss without prejudice
the Board’s prior precedential decision in light of the parties’ settlement while that
decision was under review by a district court. Because of the importance of this
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91187103
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issue and the frequency with which the Board has received similar post-decisional
requests, we have augmented the panel to decide this request, which we
unanimously deny.
I. Background.
A. The Board’s 2013 Decision.
On July 23, 2013, the Board issued a precedential decision dismissing an
opposition filed by The Board of Trustees of The University of Alabama and Paul W.
Bryant Jr., son of legendary football coach Paul W. Bryant, (Opposers) against the
registration of HOUNDSTOOTH MAFIA (and design) sought by William Pitts Jr.
and Christopher Blackburn (Applicants) for “shirts, hats” in International Class 25.1
Bd. of Trs. of Univ. of Ala. v. Pitts, 107 USPQ2d 2001 (TTAB 2013). The Notice of
Opposition alleged that Applicants’ HOUNDSTOOTH MAFIA (and design) mark
was likely to be confused with trademark rights inuring to Opposers as a result of
the University’s longstanding use of a houndstooth pattern as well as a crimson and
white color scheme in conjunction with the provision of athletic services, and as a
result of Opposers’ ownership of an Alabama state trademark registration for PAUL
W. BRYANT MUSEUM (and design), depicting a likeness of Coach Bryant wearing

1 Application Serial No. 77342852 was filed under § 1(a) of the Trademark Act of 1946, 15
U.S.C. § 1051(a). The mark that is the subject of the Application is shown below:

Color is not claimed as a feature of the mark and the word “HOUNDSTOOTH” is
disclaimed.

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a houndstooth-patterned fedora, for museum services and apparel. See § 2(d) of the
Trademark Act of 1946, 15 U.S.C. § 1052(d). Additionally, Opposers charged that
Applicants’ mark falsely suggested a connection with, and disparaged, the
University and Coach Bryant under § 2(a) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(a). Id.
The opposition was decided by the Board, and designated by the Board as a
precedential decision, after full trial, briefing, and an oral hearing. The Board
concluded that Applicants’ mark was not likely to cause confusion with any of
Opposers’ asserted marks, in part because Opposers failed to show acquired
distinctiveness in the alleged houndstooth pattern mark and also because of the lack
of similarity between Applicants’ mark and either the PAUL W. BRYANT MUSEUM
(and design) mark or the crimson and white color scheme. Further, Opposers failed
to introduce evidence to show that the houndstooth pattern functions as a source or
sponsorship indicator for products sold or licensed by the University. In addition, the
Board concluded that Applicants’ mark does not falsely suggest a connection with
Opposers, as Opposers failed to show that Applicants’ mark closely approximates the
identity or persona of either Coach Bryant or the University or points uniquely to
them. Finally, the Board concluded that Applicants’ mark does not disparage
Opposers due to the incongruous connotation applied to the “MAFIA” portion of the
mark by virtue of its context. Consequently, the Board ordered dismissal of all
claims with prejudice and, contingent on Applicants ultimately prevailing in any
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appeal of the Board’s decision, remand of the matter to the examining attorney to
address irregularities in the Application.2 Id. at n. 1.
B. Opposers Challenge the Board’s 2013 Decision in District Court.
Opposers sought review of the Board’s order by means of a civil action filed in
U.S. District Court for the Northern District of Alabama, pursuant to § 21(b) of the
Trademark Act of 1946, 15 U.S.C. § 1071(b).3 While the civil action was pending,
Opposers and Applicants settled the case and consented to entry of final judgment
in the action in favor of the Plaintiffs (Opposers at the Board). Pursuant to the
settlement, the parties drafted and submitted to the Court a Final Consent
Judgment. The settlement and Final Consent Judgment resulted in assignment of
“all right, title, and interest in and to the HOUNDSTOOTH MAFIA mark,”
including the involved Application4, from Applicants to the University. See Final

2 The irregularities noted by the Board involved Applicants’ March 19, 2008, Response to
Office Action which attempted to amend the original identification of goods for “pants;
shirts; shoes; undergarments” to read, “shirts; hats.” The amendment did not conform to 37
C.F.R. § 2.71(a) because “hats” were not included in the original identification of goods and
the signature on the Response did not conform to the requirements in 37 C.F.R.
§ 2.193(e)(2) in that it was not signed by the joint applicants.

3 The Board’s final decision in a trial case may be appealed to the U.S. Court of Appeals for
the Federal Circuit, and the appeal will remain there absent the appellee’s invocation of its
right to remove the appeal to federal district court. Section 21(a)(1) of the Trademark Act of
1946, 15 U.S.C. § 1071(a)(1). Alternatively, the dissatisfied party may seek review by filing
a civil action in federal district court. Section 21(b)(1), 15 U.S.C. § 1071(b)(1). While an
appeal to the Federal Circuit is reviewed on a closed record, i.e., the record on appeal, a civil
action in federal district court gives litigants in inter partes disputes the option of
introducing new evidence as well as arguing new issues, and, “where new evidence is
presented to the district court on a disputed fact question, a de novo finding will be
necessary to take such evidence into account together with the evidence before the board.”
See Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150, 109 USPQ2d 1291, 1295 (4th Cir.
2014) (quoting Kappos v. Hyatt, 132 S. Ct. 1690, 1695-96 (2012)) (further citations omitted).

4 Application Serial No. 86022067, not involved in the opposition, also was assigned.
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Consent Judgment, ¶ 6. The Final Consent Judgment recites certain facts agreed to
by the parties, but which might be understood to stand in contradiction to those
found by the Board, based on the record presented to the Board, and recited in its
July 23, 2013 order. Specifically, the parties stipulated as a factual matter that the
houndstooth pattern enjoys “widespread association with the University” and that it
“has become a well-known source identifier for the University.” Final Consent
Judgment, ¶ 2 (emphasis added).5 The document further states: “Plaintiffs believe
the Board’s Order is clearly erroneous in a number of material respects . . . [and]
[t]he parties acknowledge and agree that the Board’s Order should be vacated.”
Final Consent Judgment, ¶¶ 4 and 5 (emphasis added). The district court issued the
Final Consent Judgment on May 27, 2014, and ordered: 1) that the Clerk enter final
judgment in favor of Plaintiffs/Opposers; 2) that the Board’s order is vacated; and 3)
that the “Register of Trademarks” allow the involved Application to proceed to
registration once assignment of the mark to the University is properly recorded.
The Final Consent Judgment does not address the prospective remand to the
Examining Attorney referenced in footnote one of the Board’s published,
precedential decision.

5 The Final Consent Judgment was entered on May 27, 2014. The Board’s order issued
July 23, 2013, some 10 months earlier, based on a trial that was conducted even earlier.
Trademark rights—and, in particular, the issue of whether a trademark right has arisen
due to a term or visual symbol having come to indicate source—are not static. See, e.g., In re
Morton–Norwich Prods., Inc., 671 F.2d 1332, 1344, 213 USPQ 9, 18 (CCPA 1982). Thus,
the parties’ recitations in the Final Consent Judgment do not necessarily stand at odds
with the Board’s factual findings in its July 23, 2013, order. However, because there is no
statement of the evidentiary basis, if any, for the recitations in the Consent Judgment, we
cannot address the change in circumstances, if any.
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On June 3, 2014, Opposers filed the “Request to Reopen, Vacate and Dismiss
Without Prejudice” with the Board, along with a copy of the Final Consent
Judgment. 73 TTABVUE.6 The request states that assignment of the mark and
Application has been properly recorded with the Assignment Division of the U.S.
Patent and Trademark Office (USPTO). Opposers followed that filing on
September 15, 2014, with a “Notice of Filing,” under cover of which they submitted
a copy of the Report on the Filing or Determination of an Action Regarding a
Patent or Trademark, mailed to the Director of the USPTO from the U.S. District
Court for the Northern District of Alabama, and a copy of the Final Consent
Judgment as entered. 74 TTABVUE. Trademark Rule 2.127(a), 37 C.F.R. §
2.127(a), allows the Board to treat as conceded any motion not contested by the
non-movant, but does not require that result. Although Applicants did not file a
brief in opposition to the Request to Reopen, Vacate and Dismiss Without
Prejudice, the policies and public interest implicated by a request to vacate a prior
precedential opinion based on settlement are important, and so we have decided,
in our discretion, to assess the request on the merits. See Trademark Board
Manual of Procedure (TBMP) § 502.04 (2014) (“[T]he Board, in its discretion, may
also decline to treat an uncontested motion as conceded, and may grant or deny the
motion on its merits.”) and authorities collected in note 2. We deny the request for
vacatur and dismissal without prejudice for the reasons set forth below.

6 TTABVUE is the Board’s electronic docket history system. See Turdin v. Trilobite, Ltd.,
109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
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II. Vacatur of Board final orders upon voluntary settlement.
When a registration dispute decided by the Board becomes moot due to voluntary
settlement during a pending appeal, the appellate court normally dismisses the
appeal as moot and remands the matter to the Board to allow the parties to move for
vacatur there. See, e.g., Ohio Willow Wood Co. v. Thermo-Ply, Inc., 629 F.3d 1373,
1375 (Fed. Cir. 2011) (remand to the district court: “We have remanded so that the
court that rendered the decision can decide whether to vacate it, based on our
conclusion that the district court is in the better position to make that ruling, indeed
to consider all the legal and equitable considerations as may be brought to its
attention by those favoring and opposing the motion.”) (citing U.S. Bancorp
Mortgage Co. v. Bonner Mall Partnership, 513 U.S. 18, 29 (1994)); MidAmerican
Energy Co. v. Mid-America Energy Resources, Inc., 250 F.3d 754 (Fed. Cir. 2000)
(table) (in an inter partes case, the Federal Circuit held: “The parties’ agreement
does not render vacatur by this court appropriate. . . . The proper course is to
remand the case so that the TTAB can consider MidAmerican’s request for vacatur
and dismissal of the opposition.”) (citing U.S. Bancorp, 513 U.S. at 29).
The U.S. Supreme Court’s decision in U.S. Bancorp holds that “mootness by
reason of settlement does not justify vacatur of a judgment under review,” in the
absence of “exceptional circumstances.”7 513 U.S. at 29. The U.S. Bancorp decision,

7 Vacatur may be proper when a matter becomes moot on appeal outside of a voluntary
settlement. In Rolex Watch USA Inc. v. AFP Imaging Corp., 107 USPQ2d 1626 (TTAB
2013), the Board vacated its final order dismissing an opposition because the matter had
become moot on appeal through the unilateral action of the Applicant, over the objection of
the Opposer. While the matter was pending before the U.S. Court of Appeals for the
Federal Circuit, the Applicant expressly abandoned its application without the Opposer’s
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though cited by the Federal Circuit in the decisions discussed above, only interprets
28 U.S.C. § 2106, which authorizes “[t]he U.S. Supreme Court or any other court of
appellate jurisdiction . . . [to] affirm, modify, vacate, set aside or reverse any
judgment, decree, or order of a court lawfully brought before it for review.” Because
the Board is not an Article III appellate court subject to 28 U.S.C. § 2106, U.S.
Bancorp does not directly apply to us. See, e.g., Valero Terrestrial Corp. v. Paige, 211
F.3d 112, 117 (4th Cir. 2000) (“[T]he holding of Bancorp extends only to appellate
court vacatur.”); Dana v. E.S. Originals, Inc., 342 F.3d 1320, 1328 (Fed. Cir. 2003)
(Dyk, J., concurring) (“[B]y its terms, Bancorp does not apply to district courts but
rather only to the Supreme Court and to courts of appeals.”). Instead, the vacatur
requests that we usually receive are typically styled as motions under Fed. R. Civ.
P. 60(b).8 But the Opposers here do not invoke Rule 60(b). Rather, they simply
submit the Final Consent Judgment and a copy of the official form entitled “Report
on the Filing or Determination of an Action Regarding a Patent or Trademark” that
district courts fill out when a trademark case is concluded. So our first task is to
determine the authority, if any, under which Opposers’ request is made.

consent. The Federal Circuit dismissed the appeal as moot and remanded the matter to the
Board for consideration of vacatur. The Board granted the Opposer’s request for vacatur
because it found the Applicant’s action to be “manifestly unfair” in that it “frustrated
opposer’s statutory right to seek review of a decision it believes to be incorrect.” Id. at 1628
(citing Tessera Inc. v. Int’l Trade Comm’n, 646 F.3d 1357, 98 USPQ2d 1868, 1878 (Fed. Cir.
2011) (vacatur is proper where an appeal becomes moot through happenstance)).

8 Rule 60(b) recites six grounds for relief and it is the last ground, “any other reason that
justifies relief,” that is pertinent for the Board, in the context of voluntary settlement during
review of a Board decision. See Fed. R. Civ. P. 60(b)(6).
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This request came from the party plaintiffs (Opposers) to a district court action
in which a § 21(b) challenge to our July 23, 2013, ruling was pending. We therefore
assess the Opposers’ request and the district court documents the Opposers have
submitted against the backdrop of the actions a district court is authorized to take
under § 21(b).
Section 21(b)(1) empowers a district court to adjudge:
[1] that an applicant is entitled to a registration upon the application
involved,

[2] that a registration involved should be canceled, or

[3] such other matter as the issues in the proceeding require, as the
facts in the case may appear.
(bracketed numbers added, spacing altered).

Section 21(b)(1) also provides that a district court having adjudicated such
matters [4] “shall authorize the Director to take any necessary action, upon
compliance with the requirements of law.” (emphasis added).
The Final Consent Judgment, referencing no record evidence, does not appear to
involve adjudication, and does none of these things a court is empowered to judge or
directed to inform the Director of, following adjudication. The judgment does not
order that the Applicants are entitled to a registration (no. [1]). It does not order
that a registration be canceled (no. [2]).9 We can identify no other “issues” in the

9 In any event, we had already determined that applicant was entitled to a registration and neither
the Board Opposition proceeding nor the district court proceeding involved a request to cancel any
registration. Thus, these two items are inapposite to the case at hand.
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case whose facts were determined by the court (no. [3]). And vacatur of our
precedential opinion is not a “necessary action” (no. [4]).
We understand the district court to have directed the USPTO to allow the
involved Application to proceed to registration because Opposers’ challenge to
registration of the HOUNDSTOOTH MAFIA mark is mooted by assignment of the
mark and application to the University. That is not a directive that requires
vacatur of the Board’s order and dismissal of the opposition proceeding without
prejudice as a necessary action. Opposers’ claims were dismissed at the Board and
the assignment is all that is necessary to allow the application to proceed to
registration for the University. In that respect, this case stands in contrast to the
Board’s handling of a post-decisional request filed in Ballet Tech Found. Inc. v. The
Joyce Theater Found. Inc. 89 USPQ2d 1262 (TTAB 2008) (consolidated Opposition
No. 91180789 and Cancellation No. 92042019), final judgment vacated as moot,
Ballet Tech Found. Inc. v. The Joyce Theater Found. Inc. (TTAB November 14, 2013)
(not a precedent), where vacatur was a “necessary action.” In Ballet Tech, the
Board, in a precedential opinion, sustained the opposition and granted the petition
for cancellation, based on the determination that Opposer/Petitioner Ballet Tech
Foundation Inc. was the owner of the JOYCE THEATER marks. 89 USPQ2d at
1276. Applicant/Respondent The Joyce Theater Foundation, Inc. sought review in
the federal district court for the Southern District of New York; and during the civil
action settled the case with Opposer/Petitioner by taking an assignment of its rights
in the JOYCE THEATER marks. The parties then dismissed the appeal and filed a
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joint motion at the Board under Fed. R. Civ. P. 60(b)(5) and (6), 36 TTABVUE 2-6.
(Opposition No. 91180789), seeking “relief from the Board’s December 11, 2008 final
judgment.” The Board granted the parties’ joint motion, explaining that “the Final
Judgment is hereby vacated as moot by virtue of the parties’ settlement.” 37
TTABVUE 1-2. Ballet Tech stands in contrast to the case at hand, insofar as the
Board only vacated the judgment that would have otherwise stood in the way of The
Joyce Theater Foundation’s application moving forward and would have resulted in
cancellation of its registrations. In the case at hand, the Board’s precedential
decision does not stand in the way of the University obtaining registration of the
HOUNDSTOOTH MAFIA mark acquired by assignment from Applicant.
In sum, we are not an appellate court, so this request does not implicate 28
U.S.C. § 2106. Opposer did not invoke Rule 60(b). And we do not view this request
as flowing from the authority of § 21(b)(1). We therefore may consider the request
only under our general equitable authority, for a request for vacatur is a request for
an equitable remedy. See Rio Grande Silvery Minnow v. Bureau of Reclamation, 601
F.3d 1096, 1142 (10th Cir. 2010) (“because vacatur is an equitable remedy, we, like
the district court, must also consider the public interest”) (citing U.S. Bancorp, 513
U.S. at 26-27 (emphasizing the value of legal precedents to the public as a whole));
see generally Md.-Nat’l Capital Park & Planning Comm’n. v. United States Postal
Serv., 487 F.2d 1029, 1042 (D.C. Cir. 1973) (“Equitable remedies depend not only on
a determination of legal rights and wrongs, but on such matters as laches, good (or
bad) faith, and most important an appraisal of the public interest.”) Because the
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submissions presented to us by Opposers do not require analysis under Rule
60(b)(6)10, we have in this case chosen to decide the request by balancing the
equities.
In this case, though our analysis does not require application of such a standard,
we do not see exceptional circumstances; nor do we see any other equitable basis
short of exceptional circumstances, to the extent such might be all that is required,
or any public interest, that would be furthered by vacatur. Looking at the terms of
the Final Consent Judgment, we do not understand the district court to have made a
determination that the Board’s final order was wrong in any respect. All it recites is
that it is Plaintiffs’/Opposers’ opinion that the Board’s order was erroneous, in
unspecified “material respects.” Indeed, we do not read it to reflect an adjudication
of any of the facts or issues in the case before the court.
Moreover, we determined at the time we issued the prior decision in this case
that it should serve as Board precedent, in order to provide guidance to trademark
practitioners on the issues decided in that decision. The Final Consent Judgment
points to no legal error in our prior decision, and we have not been alerted to any
aspect of the public interest that would be furthered by vacatur and would outweigh
our initial determination of the precedential value of the prior decision.

10 Opposers’ request for vacatur and dismissal without prejudice does not come before us as a Rule
60(b)(6) motion committed to the Board’s discretion. Rather, it is a request that we enforce the terms
of the district court’s consent judgment. Our interpretation of Opposers’ request stems from the fact
that the district court did not dismiss the civil action and remand the matter to us once it became
moot due to voluntary settlement, but instead entered a consent judgment. If we did have a Rule
60(b)(6) motion properly before us, we would weigh the public interests in precedent, preclusion, and
judicial economy and the circumstances, hardships, and interests of any involved parties, as well as
any other relevant equitable consideration.
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Decision: The Opposers’ Request to Reopen, Vacate and Dismiss Without
Prejudice is denied. The Board’s July 23, 2013, opinion and order in this proceeding
stand as issued. The Application will be remanded to the Examining Attorney for
consideration of the irregularities described in note 2 of this decision.