Second Circuit: If you want a court to order the USPTO, ask in your pleadings, not after you win

September 25, 2008
Post by Blog Staff

In a recent decision, the Second Circuit affirmed a district court's decision in a trademark case not to enter an order pursuant to 15 U.S.C. § 1119. § 1119 permits a court to enter an order regarding registrability and cancellation of marks at the USPTO. The prevailing defendant asked the district court to order the USPTO to dismiss a related cancellation proceeding. The party had not requested an order under § 1119 in its counterclaims, but instead sought it by way of a Rule 59(e) motion to amend the final judgment in the case. The district court denied the motion, concluding the defendant could simply raise the issue as a matter of issue preclusion.

The Second Circuit affirmed. The court held there was no abuse of discretion in denying the Rule 59(e) motion. Further, the court noted § 1119 is permissive, such that the court was not required to grant such relief.

This is the latest chapter in a dispute dating back to 1997 regarding ownership of the COHIBA mark for cigars. The defendant, General Cigar, eventually prevailed on the basis that the plaintiff, Empresa Cubana, could not rely on the famous marks doctrine because of the US embargo against Cuba.

Empresa Cubana had filed a cancellation petition with the TTAB against General Cigar. With the parties' rights now adjudicated by the court, however, General Cigar sought to have the court direct the USPTO to terminate the cancellation proceeding. However, General Cigar did not request this relief under § 1119 in its counterclaims. Instead, it was raised for the first time after judgement was entered by way of a Rule 59(e) motion.

The district court denied the motion, holding General Cigar could simply raise the issue at the TTAB as a matter of estoppel. General Cigar appealed.

The Second Circuit affirmed. The court held the denial of the Rule 59(e) motion was not an abuse of discretion, particularly given the USPTO's experience with preclusion issues and that relief under § 1119 is permissive, not mandatory. Given the repeated statements in the opinion that the relief was not requested in General Cigar's counterclaims, it seems the result may have been different had § 1119 relief been sought from the outset.

To read the full decision in Empresa Cubana del Tabaco v. Culbro Corp., click here.

Vegas Trademark Attorney blogs about the decision here.

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