The Trademark Trial and Appeals Board (TTAB) works to determine whether an applicant can register a trademark with the federal government. They do not have the power to determine matters of infringement, unfair competition, or award damages. Instead, a trademark holder takes those questions to state or federal court.
In a recent example of how the system works, bandmates got into a trademark battle over the band name. The band The Ebonys was founded in 1969, but the name was not trademarked. Later, a band member that joined in the 1990s, attempted to trademark the band name after he left the group. Not surprisingly, tensions ran high. The founder of the band, David Beasley, filed a petition with the United States Patent and Trademark Office’s (USPTO) TTAB to cancel his former bandmate’s attempt to register trademark protections for the band name.
Although the board dismissed the claim to cancel the registration, Mr. Beasley continued to pursue damages and filed suit against his former bandmate, William Howard, in federal court. Mr. Howard moved to have the case thrown out stating the TTAB had already decided the matter. The case went through the lower courts and made it to a federal appeals court. The 3rd US Circuit Court of Appeals disagreed with Mr. Howard. The court explained that the TTAB had decided the question of trademark registration but did not have the ability to decide on whether or not Mr. Beasley was harmed or have the power to award any remedy. As such, the court sided with the founder of the band stating the case can move forward.
The case provides an important example of the complexity of trademark protections. These are multifaceted legal tools that can provide immense protection. A challenge can come from many different directions. Whether a patent holder or a business who believes they are facing damages due to infringement, it is important to review all potential legal remedies including the TTAB, state and federal courts when dealing with a trademark case.