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May 17, 2019

US Trademark Trial and Appeal Board: Improper to Consider Declarations Executed Outside of the Testimony Period


In its April 25, 2019 precedential opinion, the US Trademark Trial and Appeal Board (TTAB) rejected one party's effort to rely on a declaration that was executed outside of the statutory "testimony period" provided by Trademark Rule 2.123.

Trademark Rule 2.123(a)(1) permits testimony submitted in the form of either an affidavit or declaration, so long as the testimony is "filed during the proffering party's testimony period." Each party is issued a discrete testimony period by the TTAB, and Rule 2.121, "Assignment of times for taking testimony and presenting evidence," requires the TTAB to strictly construe these assigned periods of time: "No testimony shall be taken or evidence presented except during the times assigned [by the TTAB]."

In Robinson v. Hot Grabba Leaf, LLC, (T.T.A.B. Apr. 25, 2019), Michael A. Robinson filed a petition to cancel the mark "HOT GRABBA NATURAL TOBACCO LEAF" on the ground that it was confusingly similar to his previously registered word and design mark, "GRABBA LEAF." To support his petition, Robinson re-submitted a declaration that he originally filed in 2013 in connection with his application for the "GRABBA LEAF" mark.  

Robinson wanted to rely on his 2013 declaration to rebut the respondent's argument that Robinson's "GRABBA LEAF" mark was merely descriptive of cigar wrap products.Robinson asserted that his 2013 declaration was properly before the TTAB as "testimony," because Robinson had re-filed it during this proceeding.

The TTAB rejected Robinson's argument.Based on "well-established" precedent, according to the TTAB, Trademark Rule 2.123(a)(1) requires that testimony offered in the form of a declaration or affidavit be taken, i.e., actually executed, during the assigned testimony period. Robinson therefore needed to actually execute his declaration during the current assigned period. Given that Robinson's declaration was executed years before his assigned testimony period, the TTAB found that it could not consider the declaration "as testimony in this proceeding."

The TTAB then concluded that Robinson's "GRABBA LEAF" mark was merely descriptive of the tobacco products with which it was associated. The TTAB accordingly denied Robinson's petition to cancel the mark "HOT GRABBA NATURAL TOBACCO LEAF," and granted the opposing counterclaim for cancellation of Robinson's "GRABBA LEAF" mark.

In this precedential opinion, the TTAB makes clear that testimony executed outside of the testimony period is barred by the Trademark Rules. The TTAB did, however, offer some workarounds that would allow parties to rely on testimony originally executed outside of this period, while still complying with Rule 2.123(a)(1):

First, the TTAB explained that a party will not run afoul of Rule 2.123 if it submits a declaration or affidavit executed outside of the testimony period, so long as that submission is also accompanied with a "timely taken affidavit or declaration attesting to the continued accuracy" of the previously executed testimony. The TTAB also noted that parties can stipulate to allow the TTAB to consider a declaration executed outside of the testimony period, and that the TTAB could also order that outcome on its own.

The TTAB did find an alternative basis to consider Robinson's declaration in this case.After observing that Robinson's previous registration "is the subject of [the respondent's] counterclaim," the TTAB concluded that it was appropriate to consider the 2013 declaration in its determination of whether to grant the counterclaim to cancel Robinson's mark.

What appeared to save Robinson here, with respect to his declaration, was the fact that he previously submitted the declaration to the TTAB as part of the application history, and his previous registration was properly before the TTAB in this case.It is not clear, though, whether future litigants who submit declarations executed outside of the testimony period will receive that same benefit now that the TTAB has issued this opinion.

© Arnold & Porter Kaye Scholer LLP 2019 All Rights Reserved. This Advisory is intended to be a general summary of the law and does not constitute legal advice. You should consult with counsel to determine applicable legal requirements in a specific fact situation.