The Trademark Trial and Appeal Board (“TTAB”) of the U.S. Patent and Trademark Office (“USPTO”) ruled that a state agency has no sovereign immunity to a trademark opposition proceeding. Mountain Gateway Order, Inc. v. Virginia Community College System, Opposition Nos. 91283412 (parent) and 91283416 (TTAB June 6, 2024) [precedential].
FACT PATTERN
Mountain Gateway Order (“MGO”), owner of the trademarks MOUNTAIN GATEWAY and MOUNTAIN GATEWAY ACADEMY, opposed two applications of the Virginia Community College System (“VCCS”) to register the mark MOUNTAIN GATEWAY COMMUNITY COLLEGE for use with clothing in Class 25 and educational services in Class 41. MGO based its oppositions on alleged likelihood of confusion, dilution by blurring, and lack of a bona fide intent to use the mark in commerce. VCCS filed motions to dismiss each opposition on the grounds that the TTAB lacked subject-matter jurisdiction under the doctrine of state sovereign immunity and that the notices of opposition failed to state a claim upon which relief could be granted.
THE DECISION
The TTAB acknowledged that “state sovereign immunity may be asserted when ‘a private party [] haul[s] a State in front of . . . an administrative tribunal’ within a federal agency in an adversarial proceeding bearing strong similarities to civil litigation” (citing Federal Maritime Commission v. South Carolina State Ports Authority, 535 U.S. 743, 760 n.11) (2002)). But, the TTAB said, “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” (citation omitted).
The TTAB noted that state educational entities had appeared before it on several occasions and that in this case a state agency was appearing in the role of a trademark applicant. Section 45 of the Trademark Act, 15 U.S.C. § 1127, expressly provides that states and their instrumentalities are “subject to [U.S. trademark law] in the same manner and to the same extent as any nongovernmental entity.”
Thus, the TTAB said, “[T]he Trademark Act is clear that States may apply for trademarks and that States that apply are subject to the same registration provisions of the Trademark Act as any other applicant, including that a State’s application is subject to opposition proceedings” (citing Trademark Act §§ 1 and 45, 15 U.S.C. §§ 1051, 1127, and Trademark Rule 2.116(b)). Moreover, the TTAB said, because “opposition proceedings involve solely an applicant’s right to register as demonstrated by the limitation of available claims and defenses to a resolution of the question of registrability,” if “state entities such as Applicant were not subject to opposition proceedings, the USPTO would be precluded from exercising ‘ample means of ensuring that [States] comply with the [Trademark] Act and other valid federal rules governing [trademark registrability]’” (citing Federal Maritime Commission, 535 U.S. at 768).
The TTAB concluded that VCCS’s status as a juristic person under the Trademark Act and the public interest in the integrity of the trademark registration system, “dictate that Applicant is subject to opposition proceedings and that sovereign immunity does not apply to opposition proceedings.” Accordingly, the TTAB dismissed VCCS’s motions to dismiss on the ground of sovereign immunity.
THE TAKAWAY
The TTAB made short work of VCCS’s motions to dismiss for failure to state a claim upon which relief could be granted. The TTAB held that, by pointing to its rights in its MOUNTAIN GATEWAY trademarks, MGO had adequately pleaded that it was entitled to a statutory cause of action. The TTAB also held that MGO had adequately pleaded that VCCS’s mark was likely to cause confusion with MGO’s preexisting marks and that VCCS’s MOUNTAIN GATEWAY mark was likely to dilute the distinctive quality of MGO’s MOUNTAIN GATEWAY and MOUNTAIN GATEWAY ACADEMY marks. Thus, the TTAB dismissed VCCS’s motions for failure to state a claim.
