Federal Circuit vacates TTAB decision in dispute between two religious organisations

In response to a motion appeal from the TTAB, the US Court of Appeals for the Federal Circuit admonished the board on remand to “furnish a reasoned explanation” when departing from its “established practice” on the issue of waiver (Universal Life Church Monastery Storehouse v American Marriage Ministries, Case 22/1744, 22 November 2023, Chen, Cunningham, Stark, JJ).

Case background

Universal Life Church Monastery and American Marriage Ministries are both non-denominational religious organisations that offer online ordination programmes. Universal Life filed an application to register the mark GET ORDAINED in two classes: ecclesiastical services and retail store services. American Marriage opposed the application in both classes on the grounds that the mark was merely descriptive and therefore failed to function as a trademark.

The board sustained the opposition against both classes of service, despite the fact that American Marriage did not present any argument against Universal Life’s registration under the retail store services class. Universal Life argued that American Marriage waived its right to oppose registration of the mark for retail services, but this was ignored by the board in its decision. Universal Life appealed.

Decisions

After hearing arguments at the Federal Circuit, the parties jointly moved to vacate the board’s decision as it related to retail store services, or to remand the matter to the board to consider a party stipulation to that effect. However, the Federal Circuit denied the motion, finding no entitlement to the “extraordinary remedy of vacatur” nor any circumstances that necessitated a remand.

Instead, the Federal Circuit vacated the board’s decision based on its failure to explain why American Marriage’s silence on registrability for retail store services did not constitute waiver, or to “furnish a reasoned explanation for departing from [the Board’s] established practice of deeming unargued claims waived”.

The Federal Circuit also noted the board’s established waiver practice for inter partes proceedings; that “[i]f a party fails to reference a pleaded claim or affirmative defense in its brief, the Board will deem the claim or affirmative defense to have been waived”.

Key takeaways

The Federal Circuit cited several precedential board decisions, including General Mills v Fage Dairy Processing Industry of 2011 in which the board “deemed opposition claims directed to one class in a multi-class application as waived when there was an ‘absence of arguments in opposers’ brief as to anything other than [goods in the non-waived class]’”. The board’s precedent for such an opposition claim requires that “[e]ach international class stands on its own, for all practical purposes like a separate application, and [the Board] must make determinations for each separate class’”.