–Sharon Armstrong, Attorney
Thinking about filing a trademark opposition against a competitor’s pending trademark application? Thinking about filing a civil suit against a competitor’s corresponding trademark use? Often, upon the filing of a civil trademark suit and a request to the Trademark Trial and Appeal Board (“TTAB”), the TTAB will suspend the opposition pending the disposition of the civil suit. Generally, the expectation is that the civil suit will wrap up within a few years, sometimes rendering the subject of the opposition proceeding moot.
But from time to time it is possible for a civil suit to linger – causing its corresponding TTAB action to do the same. The most notorious of such cases (at present) is United Black Fund v. National Black United Fund, Inc., Cancellation No. 92013503. The cancellation proceeding was filed in 1982 and suspending in 1984 pending the outcome of a corresponding civil action in the United States District Court for the District of Maryland. The lawsuit was administratively closed by the court in order to allow “the parties the opportunity to resolve their differences.” If my calculations are right, the parties have provided the TTAB with at least 10 status reports since suspending the action corresponding to the TTAB’s inquiries into the civil suit every two or three years over the past 25 years or so.
The petitioner’s most recent filing indicates that the civil suit remained administratively closed as of December 2009 and that the parties were engaged in settlement talks. The United Black Fund has used its mark in connection with fundraising activities since 1969, while the Black United Fund has done so since 1977. Both continue to offer those same services today, as seen here and here, presumably without any settlement regarding how the parties may use their marks. It would seem that this 28-year-long saga has played itself out, but only time will tell.