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US: Federal court refuses to suspend TTAB proceedings

Although it is the general policy of the USPTO's Trademark Trial and Appeal Board (TTAB) to suspend opposition proceedings when the parties to such proceedings become involved in a civil action which may be dispositive of the case, a recent decision issued by the US District Court for the District of Delaware in Tigercat Int'l, Inc. v Caterpillar Inc. indicates that there are circumstances where, conversely, federal courts will stay a litigation pending a TTAB ruling.

Tigercat International, the owner of a federal registration for the mark TIGERCAT covering use in the forestry field, filed a second application for the mark with no designated field of use restriction. In November 2013, Caterpillar filed an opposition before the TTAB against the second application, claiming a likelihood of confusion between the TIGERCAT mark and Caterpillar's prior registered CAT and CATERPILLAR marks if the TIGERCAT mark were registered without the field of use limitation.

The parties subsequently engaged in a lengthy and extensive opposition proceeding which involved 106 interrogatories, 172 document requests, and 332 requests for admission, the production of over 35,000 pages of documents, 22 depositions as well as several discovery and procedural disputes requiring intervention from the TTAB and two federal district court judges. In November 2016, ten days before discovery was scheduled to close and two months before the trial period was to begin, Tigercat filed an action in district court for a declaratory judgment of non-infringement and non-dilution. The TTAB suspended the opposition as a result of the filing of the civil action and Caterpillar filed a Motion to Dismiss upon Discretionary Dismissal asking the district court not to exercise jurisdiction over Tigercat's claims.

The district court noted that "a decision to stay litigation lies within the sound discretion of the court and represents an exercise of the court's inherent power to conserve judicial resources by controlling its own docket in the interest of the efficient and fair resolution of disputed issues." In order to determine whether to stay the litigation, the district court applied a three prong test that examines: "(1) judicial efficiency as measured by the stage of the civil litigation and the stay's potential to simplify the issues; (2) the harm or unfair prejudice to the non-moving party that will result from the grant of a stay; and (3) the hardship and inequity to the moving party if the stay is denied."

Tigercat argued that judicial efficiency would be best served by denying the stay and allowing the litigation to move forward since doing so would place the dispute before a tribunal which can decide all of the issues. The court, however, noted that district courts should defer to the TTAB "in cases where that would be the more efficient cause of action", holding that a TTAB decision would aid the parties in narrowing their contentions and the court in rendering its decision.

As the TTAB proceeding had been pending for three years and was nearing completion at the time Tigercat filed its complaint, the court held that the interests of judicial efficiency supported a stay of the litigation pending the outcome of the TTAB proceeding. Further, the court found that there was no evidence that Tigercat would be damaged by the grant of the stay or that the denial of a stay would result in hardship or inequity to Tigercat. Therefore, the court granted Caterpillar's motion to stay the civil litigation pending the TTAB's decision in the opposition proceeding.

This decision is instructive for parties engaged in a TTAB proceeding because it indicates that circumstances exist where district courts will defer to the TTAB procedurally. If a party to a TTAB proceeding is considering pursuing a claim for infringement in federal court, the ruling in Tigercat suggests that they would be prudent to make that decision quickly.



Karen Artz Ash

Bret J Danow

Katten Muchin Rosenman LLP 

575 Madison Avenue

New York, NY 10022-2585

United States

Tel: +1 212 940 8554

Fax: +1 212 940 8671

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