Lately we’ve been discussing more and more the difference between the right to register a trademark and the right to use a trademark. In many trademark disputes the perfect forum for an amicable resolution is the Trademark Trial and Appeal Board (TTAB) of the USPTO.
The TTAB can be a cost effective forum for parties to achieve settlements and coexistence agreements addressing both the right to register and the right to use, even though — if the case proceeded to decision there, the TTAB could not determine the right to use, only the right to register. The parties are, of course, free to resolve all possible issues through agreement, and most of the time they do so while their opposition or cancellation action is pending at the TTAB.
Having said that, since the limited jurisdiction of the TTAB does not provide for the possibility of injunctions, lost profit awards, damage awards, attorneys fees, or any other monetary relief, some trademark disputes are best suited for federal district court where all these remedies are possible. But, sometimes the federal court option is chosen over the TTAB to increase pressure for a settlement even when the likelihood of obtaining injunctive or monetary relief is not good.
Last Friday, less than two months after filing an opposition with the TTAB, Plasti Dip International decided that federal district court was the more appropriate forum to object to Rust-Oleum’s recent Flexidip mark in Plasti Dip International, Inc. v. Rust-Oleum Brands Company.
Does this look like a damages case or an exceptional one where attorneys fees might be appropriate? I have my doubts. And, it seems to me, another good example of a case where the plaintiff has a better chance of proving likelihood of confusion at the TTAB than in federal court.
While more remedies are possible in federal court, more will be considered to deserve them, and more will be expected to receive them.
By way of example, in reaching a conclusion about the alleged likelihood of confusion between PLASTI DIP and FLEXIDIP, both for rubberized plastic coating products, the TTAB would ignore the different visual impressions of the marks and the different house marks on the packaging (Performix v. Rust-Oleum), but the federal district court will pay close attention to all these differences, differences as to style and coloration, and the trade dress differences too.
Perhaps this explains, in part, why the Eighth Circuit Court of Appeals doesn’t feel bound by a TTAB likelihood of confusion finding. And, perhaps that explains why a party, located in the Eighth Circuit — like Plasti Dip — might not waste too much time before the TTAB if stopping another’s use is of paramount importance to the business.
Any predictions from our learned readers on how this one turns out?
Does it matter to you that Plasti Dip did not oppose another’s registration of DURADIP for similar coating products?
Does it matter to you that Plasti Dip had to settle for the Supplemental Register when it tried to register its similar RUBBER DIP mark for similar coating products?