IP Law Daily, TRADEMARK—TTAB: Settlement agreement prevented opposer from challenging applicant’s trademark application, (Sep 20, 2023)

By Patricia K. Ruiz, J.D.

The Board was unpersuaded by the opposer’s argument that the settlement agreement should not be enforced as a matter of public policy.

A previous settlement agreement between parties in a trademark registration dispute contractually estopped the opposer from contesting the registration of the applied-for marks, held the Trademark Trial and Appeal Board, granting partial summary judgment in favor of the applicant. The Board found the settlement agreement clearly and unambiguously states that, as long as the applicant filed the express abandonment of a certain trademark application, the opposer agrees not to oppose, challenge, contest, or otherwise interfere with the applicant’s other pending applications (BYLT Performance LLC v. BYLT, LLC, September 14, 2023, by the Board).

Applied-for marks, opposition. BYLT Performance LLC (applicant) sought registration of the marks BYLT BASICS and BYLT PREMIUM BASICS in standard characters, each for “hoodies, jackets, pants, shirts, briefs as underwear, jogging pants, men’s underwear, short-sleeve shirts, underwear; all of the foregoing excluding motorcycle related clothing and apparel.” BYLT also sought registration of the marks BYLT in standard characters for “footwear,” and BYLT PREMIUM BASICS, stylized, for a number of types of casual men’s and women’s apparel, accessories, and underwear.

BYLT Performance LLC (opposer) opposed registration of the applied-for marks on the grounds of likelihood of confusion. In support of its opposition, the opposer alleged ownership of eight trademark registrations for the marks B.Y.L.T., B.Y.L.T.20, B.Y.L.T. BEYOUND YOUR LIMIT TRAINING (& Design), B.Y.L.T. 20 BEYOND YOUR LIMIT TRAINING (& Design), and BEYOND YOUR LIMIT TRAINING for t-shirts, tank tops, sports bras, and a variety of sports drinks and bottled water. The opposer also alleged ownership of a pending application for the mark B.Y.L.T. BOOST for dietary and nutritional supplements and sports drinks.

Motion for partial summary judgment. The applicant moved for partial summary judgment on its affirmative defense of contractual estoppel, arguing there is no genuine dispute that the parties entered into an agreement that prohibits the opposer from opposing the trademark applications. To resolve a prior trademark infringement action between the parties, the parties entered into a settlement agreement explicitly stating that, so long as the applicant abandoned an earlier-filed trademark application for the mark BYLT, the opposer would not oppose the applicant’s other pending applications for BYLT BASICS and BYLT PREMIUM BASICS. The opposer contended the parties’ agreement is essentially a coexistence agreement, which is unenforceable because numerous instances of actual confusion have occurred since the agreement was executed. The opposer further alleged the applicant has not complied with the packaging requirements set forth in the parties’ agreement. Thus, the opposer argued the Board should not enforce the agreement as a matter of public policy.

Contractual estoppel. Applying California law to the settlement agreement, the Board looked to the objective language of the agreement to determine whether the opposer is contractually estopped from opposing the two applications. The Board found no genuine dispute that the parties’ agreement clearly and unambiguously states that as long as the applicant files the express abandonment of its trademark application for the mark BYLT, the opposer agrees not to oppose, challenge, contest, or otherwise interfere with the applicant’s other pending applications. Presuming the abandonment condition is met, the opposer has an obligation to assist the applicant as necessary to obtain registrations for the BYLT BASICS or BYLT PREMIUM BASICS marks.

The Board found no genuine dispute that there are no other conditions set forth in the agreement that would allow the opposer to oppose the involved applications, as long as the applicant filed the express abandonment of its trademark application for the mark BYLT. Because the applicant submitted a copy of its express abandonment of its application for the BYLT mark, the Board concluded that the opposer is contractually estopped from opposing registration for the applied-for marks.

The Case is Opposition Nos. 91274047 and 91276608.

Attorneys: Erica W. Stump (Erica W. Stump, P.A.) for BYLT Performance LLC. Aaron L. Renfro (CALL & JENSEN) for BYLT, LLC.

Companies: BYLT Performance LLC; BYLT, LLC

Cases: Trademark USPTO