At least the trademark registration does. Remember the Mardi Gras bead dog case, Nola Spice, in which the PTO accidentally accepted a Section 15 incontestability statement during the pendency of an appeal of an order cancelling the mark, even though the notice of suit was on file? The PTO rescinded the acceptance after I blogged about it, but there’s really nothing in place preventing other mistaken acceptances.
I was writing a bit about incontestability and I decided to check in on the bead dogs. The district court ordered the marks cancelled in 2012–an order reflected in the form it sent to the PTO in 2012. The court of appeals affirmed in April 2015. After remand, the district court dismissed the case with prejudice that same month.
As of today, the marks still show as live in TESS and TSDR.
What went wrong, and can it be fixed? I can think of a couple of possibilities for improvement, but I seek the input of registration experts. I see why it makes sense to have the form for filing and resolving a TM case be the same. (“Report on the Filing or Determination of an Action Regarding a Patent or Trademark,” FYI.) But is there some way they could be entered differently into the system depending on whether they were about filing or determination? That could make it easier to flag the ones that need attention for human review, like this one. How does the patent side do this? Are there better mechanisms for catching cancellations ordered by a court? I know they’re rare, but that very rarity may mean that getting it right isn’t resource-intensive once a proper procedure is in place.
Do most courts send a separate order along with the Report? If so, do most courts know that the PTO wants them to do that? I can’t imagine that this order from an Article III court is not effective even if merely transmitted in the Report.
Just to look at another notable case, I looked at the TSDR history of the Louboutin red sole, Reg. No. 77141789. A couple of observations: (1) No Notice of Suit Incoming (which is how they display regardless of whether they’re about filing or resolution) showed up for the underlying litigation that led to the partial cancellation of the Louboutin mark. I understand that this failure is not uncommon, though I’m also interested to learn of others’ experiences. (2) Because this was a partial cancellation, the parties in the underlying litigation engaged in some dispute over how the PTO should implement the 2nd Circuit’s mandate, which seems likely to be unusual. (3) The Second Circuit did forward notice of its order separately, and it’s marked as “paper correspondence incoming” in TSDR. I’m not sure if that’s standard for cancellation orders, since most don’t come from courts of appeal. More information or thoughts would be appreciated.
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