Federal Circuit Vacates TTAB Decision as Arbitrary and Capricious

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday vacated and remanded a Trademark Trial and Appeal Board (TTAB) decision that had sustained an opposition to the mark GET ORDAINED, holding that the TTAB had failed to “furnish a reasoned explanation for departing from its established practice of deeming unargued claims waived.”

Universal Life Church Monastery Storehouse (ULC Monastery) filed a trademark application for the mark GET ORDAINED for online retail store services and ecclesiastical services. American Marriage Ministries (AMM) filed a notice of opposition to the mark, telling the TTAB the application should be denied because the mark is merely descriptive and fails to function as a mark as to both classes of services.

The court determined on appeal that the Board has an established waiver practice, codified both in the Board’s Manual of Procedure (TBMP) and through its precedential decisions, and that, since AMM’s trial briefs failed to refer to ULC Monastery’s online retail store services in Class 35, the Board had acted arbitrarily and capriciously by not providing an explanation as to why these claims weren’t waived.

At the TTAB, AMM raised genericness, mere descriptiveness, and failure-to-function arguments but did not explicitly refer to ULC Monastery’s online retail store services. AMM argued the phrase “get ordained” “immediately conveys the availability of the service of ordination” and that “competitors routinely and extensively use ‘get ordained’ in conjunction with their own ordination services,” explained the CAFC.  AMM also said “ULC Monastery’s use of GET ORDAINED cannot be separated from other source-identifying elements in ULC Monastery’s logo.” Although ULC argued in response that AMM had failed to raise any argument against the mark in connection with online retail store services, AMM did not address this argument in its rebuttal brief.

The CAFC ultimately found that: “1) the Board has an established practice of considering unargued claims to be waived, (2) AMM did not refer to or argue any Class 35-specific claims in its trial briefs, and (3) the Board considered the Class 35-specific services but did not explain why it did not consider these claims to be waived in view of its established waiver practice.”

The court said that, on remand, the TTAB should “explain its decision regarding waiver of AMM’s Class 35 claims and, in particular, square its decision with the practices and procedures articulated in the T.B.M.P. and in its prior precedential decisions.” The opinion also clarified that the court did not decide whether the Board might have a basis for deeming AMM’s opposition not to be waived or for excusing any waiver, or the merits of whether the application should be granted for Class 35.