E.D. Texas Denies Motion To Stay Infringement Action In Favor Of TTAB Proceeding

• Jurisdiction: United States,Federal
• Law Firm: Wolf, Greenfield & Sacks, P.C.
• Subject Matter: Intellectual Property, Trademark
• Author: Mr John L. Welch
• Published date: 25 January 2023

O&M Halyard brought a civil action against Sri Trang US, Inc., claiming trademark infringement and dilution of two registered trademarks for medical gloves, one mark consisting of the color purple and the other the color gray. Sri Trang then filed at the TTAB petitions for cancellation of the two registrations. The Board suspended the cancellation proceeding pending the outcome of the litigation. Sri Trang then moved to stay the litigation in favor of the TTAB proceeding, but the court denied the motion because the defendants "have not shown that any potential efficiencies to be gained by awaiting the TTAB decision warrant a stay." O&M Halyard, Inc. v. Sri Trang USA, Inc, et al. , Civil No. 4:22-CV-622-SDJ (E.D. Texas January 18, 2023).

The court took guidance from the Second Circuits decision in Goya Foods, Inc. v. Tropicana Products, Inc., 846 F.2d 848 (2d Cir. 1988) regarding the doctrine of "primary jurisdiction" on behalf of an administrative agency. That doctrine is "relatively narrow" in scope, applying only in lawsuits involving an issue committed by Congress in the first instance to an agency's determination - e.g., the validity of a commercial rate or practice - and involving technical questions uniquely within the agency's expertise.

The Goya court concluded that "the basic framework of federal registration differs from other statutory regimes that implicate primary jurisdiction because the Lanham Act allows a litigant disappointed with a TTAB decision to file an action in federal district court that is 'intended to be a trial de novo.'" Furthermore, courts have a long-standing familiarity in resolving suites under both the Lanham Act and the common law of trademark infringement and unfair competition.

The Second Circuit developed the following guidance regarding whether a court should stay an action pending the outcome of a TTAB "registration action."

On the one hand, if the district court action "involves only the issue of whether a mark is entitled to registration," the doctrine of...