IP Law Daily, TRADEMARK—TTAB: State college system not immune from opposition to registration of marks, (Jun 12, 2024)

By Thomas Long, J.D.

The Lanham Act’s inclusion of State entities in its definition of “person” indicated that such agencies are subject to the same registration provisions as any other applicant, including oppositions.

The Virginia Community College System was not immune from a Trademark Trial and Appeal Board proceeding in which a company opposed the college system’s applications to register the standard character mark MOUNTAIN GATEWAY COMMUNITY COLLEGE. In a precedential order, the Board determined that state sovereign immunity did not apply because the Lanham Act made it clear that States—as entities capable of applying for trademark registrations—are subject to the same registration provisions of the Act as any other applicant, and are therefore subject to opposition proceedings. When it applied for trademark registrations, the college system became subject to the USPTO’s authority under the Lanham Act to enforce the statute’s requirements for registration, which concerned a matter of public interest. The Board also noted that opposition proceedings involved only the right to register a mark, not the right to use it, and they did not subject the college system to the same types of remedies as civil lawsuits. The Board also decided that the opposer adequately pleaded its claims for likelihood of confusion and dilution and that it had a bona fide intent to use its asserted trademarks. Accordingly, the college system’s motions to dismiss the opposition were denied (Mountain Gateway Order, Inc. v. Virginia Community College System, No. 91283412 and No. 91283416 (TTAB June 6, 2024)).

Marks at issue. The Virginia Community College System filed two applications to register the standard character mark MOUNTAIN GATEWAY COMMUNITY COLLEGE, one for t-shirts and other apparel, and one for educational services. Mountain Gateway Order, Inc., filed a notice of opposition, claiming common-law rights in the marks MOUNTAIN GATEWAY and MOUNTAIN GATEWAY ACADEMY. The college system moved to dismiss the opposition for lack of subject matter jurisdiction due to state sovereign immunity, and also leveled several substantive challenges to the opposition filing.

State sovereign immunity. The college system asserted that it was an agency of the Commonwealth of Virginia, which the opposer did not dispute. The Board disagreed with the college system that similarities between district court and Board proceedings supported its argument that state sovereign immunity applied. The Board noted that state educational entities had appeared before the Board on several occasions both as plaintiff and defendant. The Board also noted that, in some circumstances, state sovereign immunity may be asserted when a private party hauls a state in front of an administrative tribunal within a federal agency in an adversarial proceeding that resembles civil litigation. “However,” the Board pointed out, “States may not assert sovereign immunity where a federal agency exercises its superior sovereignty in agency enforcement actions instituted upon information supplied by a private party to ensure State compliance with federal law, even if some aspects of civil litigation procedure are applied.”

In this case, the college system was seeking federal trademark registrations and therefore had subjected itself to the registration provisions set forth in the Lanham Act. Applications to the USPTO are subject to refusal by a USPTO examiner and also may be subject to refusal by way of an opposition proceeding. The definition of “person” in Section 45 of the Act, 15 U.S.C. § 1127, includes “any State [and] any instrumentality of a State,” such that “any State [] and any such instrumentality … shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.” The statute clearly states that “persons” may file trademark registration applications, and it expressly requires submission to opposition proceedings by such persons, the Board said. Therefore, States that apply to register a mark are subject to the same registration provisions of the Lanham Act as any other applicant, including that a State’s application is subject to opposition proceedings.

The Board pointed out that the issue in an opposition proceeding is the applicant’s right to register and not the opposer’s right to exclusive use, and the opposer was limited to certain statutory grounds that negated the applicant’s entitlement to registration. It also explained that opposition proceedings enable the USPTO to fully accomplish the means of enforcing the trademark regulatory scheme. “Oppositions protect the public interest in the integrity of the federal trademark register by providing a means to consider and decide the right to registration, a matter of public interest,” the Board said. “Traditional civil action-type remedies are unavailable in opposition proceedings.” If opposition proceedings against State entities were not permitted, the USPTO would be deprived of a significant way of ensuring compliance with the Lanham Act’s registration requirements. Accordingly, the Board rejected the college system’s attempt to assert state sovereign immunity.

Likelihood of confusion; dilution. The Board quickly disposed of the college system’s assertion that the opposer failed to plead likelihood of confusion or dilution. According to the Board, the opposer sufficiently pleaded likelihood of confusion based on its alleged use of its MOUNTAIN GATEWAY marks prior to September 7, 2021, the filing date of the involved applications. The opposer also adequately pleaded that its marks became famous and distinctive prior to the relevant filing date and that use of the college system’s marks in the listed goods and services would dilute the distinctive quality of the opposer’s marks. The Board also rejected the college system’s contention that the opposer failed to plead a bona fide intent to use its marks.

The college system’s motions to dismiss were denied, and the Board resumed proceedings in the opposition.

The Case is Opposition Nos. 91283412 and 91283416.

Judge: By the Board

Attorneys: Troy G. Woollen (Bird Loechl McCants & Holliday, LLC) for Mountain Gateway Order, Inc. Robert D. Michaux (Christian & Barton, LLP) for Virginia Community College System.

Companies: Mountain Gateway Order, Inc.; Virginia Community College System

Cases: Trademark USPTO GCNNews