New Orleans Louisiana Saints LLC and NFL Properties LLCv.Who Dat', Inc.

Trademark Trial and Appeal Board

Jul 22, 2011

No. 91198708 (T.T.A.B. Jul. 22, 2011)

DUNN

Mailed: July 22, 2011

Opposition No. 91198708
New Orleans Louisiana Saints
LLC and NFL Properties LLC

v.
Who Dat?, Inc.

Elizabeth A. Dunn, Attorney:

This case now comes up on cross-motions to suspend
this opposition on, respectively, different grounds, namely
the disposition of other oppositions against the
application and of a civil action against the same
application.1 Each motion requires a different analysis.
For clarification, the Board’s practices regarding multiple
opposers of an application and multiple proceedings against
an application are set forth below.2

1 Applicant apparently filed three motions to suspend, but no
action will be taken with respect to docket entry #4, which was filed
inadvertently in this proceeding, or docket entry #7, which is a
duplicate paper.
2 There are parallel practices regarding multiple petitioners or
proceedings against a registration. However, it is less common to have
multiple petitions or actions pending simultaneously against a
registration, and the order will refer only to oppositions.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
This Decision is a
Precedent of the TTAB
Opposition No. 91198708
2
Multiple Unrelated Opposers
On occasion, one application is the subject of
multiple oppositions, unrelated except insofar as they
address the same application. See Stuart Spector Designs
Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549
(TTAB 2009); DataNational Corp. v. BellSouth Corp., 18
USPQ2d 1862 (TTAB 1991); Vaughn Russell Candy Co. v.
Cookies in Bloom Inc., 47 USPQ2d 1635, 1636 (TTAB 1998).
Because the Board and the parties are interested in the
prompt disposition of pleaded claims and defenses, separate
oppositions against the same application typically proceed
simultaneously. Any amendments to the opposed application
must be made with the consent of all opposers. 37 CFR
Section 2.133(a) (Trademark Rule 2.133(a). Likewise, any
voluntary abandonment of the application must be made with
the written consent of all opposers, or judgment will
entered for each opposer who has not consented to the
abandonment. 37 CFR Section 2.135 (Trademark Rule 2.135).3

3 When an application that is the subject of multiple oppositions
is voluntarily abandoned, each opposition will necessarily be sustained
or dismissed, depending on whether the opposer has consented to the
abandonment. In contrast, when the Board sustains one opposition on
its merits, either on summary judgment or at final hearing, this will
result in abandonment of the application, but the other oppositions
will remain pending. In such cases, the Board generally issues an
order to each opposer for the remaining oppositions, requiring notice
from each such opposer as to whether it wishes to go forward to obtain
judgment on the merits, failing which the opposition will be dismissed
as moot. Where the Board dismisses one opposition to an application,
the entry of judgment for applicant has no bearing on the other pending
Opposition No. 91198708
3
In view of this practice, the Board seldom grants a
motion to suspend an opposition pending the disposition of
other oppositions against the same application unless the
motion includes the consent of the other parties. If the
Board were to pick one among multiple oppositions to
proceed, and to suspend all others, there is potential
prejudice to those who did not consent to suspension.4
Accordingly, in the absence of consent, a motion to suspend
an opposition on the ground that another opposition against
the same application may be successful, making the movant’s
opposition moot, in most cases will be denied.
When there are common claims in separate oppositions
against the same application, the Board’s interest in
consistency and economy may dictate an exception to the
practice that the oppositions go forward simultaneously.
In the usual circumstance involving multiple oppositions,
the various opposers plead one or more common claims, for
example, the mark fails to function as a trademark, or is
merely descriptive or generic as applied to the goods or

oppositions, and the opposed application will not go forward to issue
until a final order has been entered in all pending oppositions.
4 Evidence or witnesses may be lost if there is a protracted delay
in the ability of opposers or applicants to bring their claims and
defenses. See for example Prakash Melwani v. Allegiance Corporation,
97 USPQ2d 1537, 1541 (TTAB 2010); Gaylord Entertainment Co. v. Calvin
Gilmore Productions Inc., 59 USPQ2d 1369, 1372 (TTAB 2000) (in
determining whether excusable neglect allows the reopening of testimony
periods, the Board considers any prejudice to the non-moving party such
as lost evidence or unavailable witnesses).
Opposition No. 91198708
4
services, and the common claim indicates that duplicative
evidence may be submitted. Thus, the Board may order
suspension of other oppositions pending disposition of the
opposition that has proceeded the furthest and is closest
to issuance of a Board final decision, because that
decision may have a bearing on the common claims in the
other oppositions. 37 CFR Section 2.117(a) (Trademark Rule
2.117(a)). If the multiple oppositions against the same
application are at the same stage of litigation and plead
the same claims, the Board may order consolidation. See
Stuart Spector Designs Ltd. v. Fender Musical Instruments
Corp., 94 USPQ2d 1549 (TTAB 2009); DataNational Corp. v.
BellSouth Corp., 18 USPQ2d 1862 (TTAB 1991); TBMP §511 (3d
ed. 2011).
In the instant case, application Serial No. 85113102
seeks registration under Trademark Act Section 1(b) for the
mark WHO DAT, in standard character form, for a variety of
goods and services, and is the subject of three oppositions
brought by different parties. In this proceeding, New
Orleans Louisiana Saints LLC and NFL Properties LLC bring
claims of priority and likelihood of confusion,
deceptiveness, and false suggestion of a connection with
their registered marks including NEW ORLEANS SAINTS,
SAINTS, NFL, SUPER BOWL, fleur-de-lis design, and black and
Opposition No. 91198708
5
gold football uniforms. In Opposition No. 91198673, a
third party brings claims that the mark is merely
descriptive, functional, and generic. In Opposition No.
91198706, another third party brings claims that the mark
is merely descriptive or generic.
The Board disagrees with applicant’s statement that
the pleaded issues in this case “are essentially duplicates
of claims” in the other oppositions brought against the
application. If applicant successfully defends against the
instant opposers’ claims of likelihood of confusion,
deceptiveness, and false association, this will have no
bearing on the ability of the other opposers to bring their
claims that the mark is merely descriptive, functional, and
generic. Because the instant opposers have not consented
and the claims in the other oppositions differ from the
claims involved here, applicant’s motion to suspend this
opposition pending the disposition of the other oppositions
is denied.
Civil Proceedings Bearing on the Application or Mark
If the parties to an opposition are involved in a
district court action involving the same mark or the
opposed application, the Board will scrutinize the
pleadings in the civil action to determine if the issues
before the court may have a bearing on the Board’s decision
Opposition No. 91198708
6
in the opposition. Forest Laboratories Inc. v. G.D. Searle
& Co., 52 USPQ2d 1058, 1061 (TTAB 1999)(“The parties are
allowed until thirty days from the mailing date of this
order to submit a copy of the complaint in the civil action
in order that the Board may determine whether suspension of
proceedings herein is warranted.”). A decision by the
district court may be binding on the Board whereas a
determination by the Board as to a defendant's right to
obtain or retain a registration would not be binding or res
judicata in respect to the proceeding pending before the
court. Whopper-Burger, Inc. v. Burger King Corp., 171 USPQ
805, 807 (TTAB 1971). Thus, the civil action does not have
to be dispositive of the Board proceeding to warrant
suspension, it need only have a bearing on the issues
before the Board. Trademark Rule 2.117(a). Accord 6
McCarthy on Trademarks and Unfair Competition §32:47 (4th
ed. updated June 2011)(“It is standard procedure for the
Trademark Board to stay administrative proceedings pending
the outcome of court litigation between the same parties
involving related issues.”).
The parties to this opposition are in reversed
positions in a civil action pending in the District Court
for the Eastern District of Louisiana (Who Dat? Inc. v. NFL
Properties LLC, New Orleans Louisiana Saints LLC et al.,
Opposition No. 91198708
7
Case No. 2:10-CV-02296-CJB-KWR). The current complaint
alleges, among other claims, trademark infringement of
applicant’s WHO DAT mark, and seeks, among other remedies,
to enjoin use of the term WHO DAT by all the defendants.
Inasmuch as the decision by the district court to enjoin
use of the WHO DAT mark by opposers would have a bearing on
this proceeding, each party has moved to suspend
proceedings pending the disposition of the above-referenced
civil action in Louisiana.5 Accordingly, proceedings are
suspended pending final disposition of the civil action
between the parties.
Within twenty days after the final determination of
the civil action, opposer must so notify the Board so that
this case may be called up for appropriate action.
During the suspension period the Board shall be
notified of any address changes for the parties or their
attorneys.
***

5 More specifically, applicant sought suspension of this proceeding
due to the pending oppositions and the civil action, and its motion is
denied as to the pending oppositions. Opposers sought suspension based
solely on the civil action, and their motion is granted.