Lindsey Birch Assesses Recent Trademark Trial and Appeal Board Decisions

Foley & Lardner LLP associate Lindsey Birch authored two articles published by the International Trademark Association assessing recent decisions at the Trademark Trial and Appeal Board (TTAB).

Birch’s articles, “Allegations of ‘Trademark Bullying’ Insufficient to Plead Unclean Hands at TTAB” and “TTAB Decision Is “Modest Extension” of Section 18 Partial Cancellation Precedent,” offer insights on two TTAB decisions in DoorDash, Inc. v. Greenerside Holdings, LLC and Sage Therapeutics, Inc. v. SageForth Psychological Services, LLC, respectively.

On the first case, Birch describes the “rare precedential decision” from TTAB in granting a motion to strike the affirmative defense of “unclean hands” based on an allegation of “trademark bullying,” writing that while perhaps a plea with more specific allegations might have survived, “practitioners will have to wait for another case as the Board barred the applicant from repleading the defense given that its allegations did not support the affirmative defense.” 

On Sage, Birch summarizes the arguments made and the resulting decision from TTAB to sustain opposition to the registration of a service mark based on a likelihood of confusion, highlighting TTAB’s expansion of an earlier holding by finding that “a Section 18 counterclaim should be denied without prejudice if the Board sustains a Section 2(d) opposition based on registrations that are not challenged by the counterclaim.”