TTAB Decision Illustrates Importance of Contract Language

Fenwick & West trademark litigation attorney Eric Ball told Bloomberg BNA that a recent Trademark Trial and Appeal Board (TTAB) ruling illustrates the importances of settlements including a provision to preclude a party's ability to use and/or apply to register a trademark.

Who Dat Yat Chat filed an application with the USPTO in 2012 to trademark “Who Dat Yat Chat” in connection with restaurant services. Another company, Who Dat?, held trademarks on “Who Dat” related to alcoholic beverages, clothing and musical recordings. 

"Who Dat" is a common law phrase widely used in New Orleans. 

The two companies subsequently signed an agreement giving Who Dat Yat Chat exclusive registering and use of the terms “Who Dat Yat Chat” and “Who Dat” in relation to “restaurants, restaurant services, coffeehouses, coffeehouse services, and related services and products.” Who Dat? agreed not to interfere with Who Dat Yat Chat's registration or use of the trademark in these areas.

But in 2013, Who Dat? filed a new trademark application to use "Who Dat" on bakery products, including coffee and cake. 

In early 2014, Who Dat Yat Chat opposed the application, but the U.S. District Court for the Eastern District of Louisiana denied that motion. 

Most recently, the TTAB affirmed the district court’s ruling in a summary judgment, saying that Who Dat’s trademark application applied to a “much broader” range of goods and services than stipulated in the agreement in question.

Ball said that the TTAB finding “wasn't too surprising.” 

“Since this is a unique factual situation – it's pretty much the same motion from the district court litigation – I would expect the TTAB to defer in this situation,” he added.

Ball said that trademark attorneys should make sure that in addition to ensuring that another party can’t interfere with their clients’ use of their own trademarks, settlements must preclude the other party from using their clients’ trademark and/or applying to register it.

“Here, it looks like the opposer had the right to use the mark, but the issue it's running up against is that it didn't have a prohibition saying the other side can't apply for or use this mark. If it had that, then it wouldn't be in this situation,” Ball said. 

Ball also told BNA that this case was not necessarily a harbinger of future TTAB “preclusion” rulings. 

“I wouldn't want to read too much into this decision, because it is so factually unique in some ways, and not precedential,” he said, adding, “But if anything, it shows that the board is willing to defer to the district courts.”​​​