Hi Anthony Verna here.

Let’s talk a little bit about a decision that came from the Trademark Trial and Appeal Board (TTAB) on October 31st.

First, it reminded me of a case a few years ago that I had in which I made my appearance in the case and opposing counsel, about two weeks, later filed a motion for sanctions. Why did opposing counsel want to sanction me when I was only involved in the case for two weeks? Well, my client was really not forthcoming in giving his dates for his trial testimony. Now, my client being the plaintiff really did need to state his case at some at some point.

Opposing counsel did call him for his testimony and since he was foreign he really was reluctant.

However, since I had only been in the case for two weeks, the Trademark Trial and Appeal Board (TTAB) said that no appropriate type of sanction in this trademark dispute was really going to be appropriate.

So no sanctions were needed. Also, at some point, we did give a date for my client’s testimony and we worked it out.

Now, this case on October 31st came from the makers of Tito’s Vodka that’s called Fifth Generation and they were filing to cancel trademarks from a company called Titomirov Vodka LLC. Now, Titomirov Vodka LLC and Tito’s Vodka have had disputes since 2016.  One of the issues was that a Titomirov had said that the only board member that could be in the United States really isn’t in the United States and therefore could not provide any particular testimony as to the cases.

After a filing the Trademark Trial and Appeal Board (TTAB) found that this particular company might have been lying about that. And that’s been a part of the reason for the sanctions. What were the sanctions? All of Titomirov Vodka LLC’s trademarks were canceled by the Trademark Trial and Appeal Board and therefore no trademarks are registered here in the United States by this particular company anymore.

It was fraudulent filings.

It was repeated violation of court orders.

It was repeated inability to put witnesses up for testimony.

That is is a big reminder when there are disputes in the Trademark Trial and Appeal Board (TTAB). It is a federal court of law. It might be an administrative court, but it is a federal court of law and discovery requests are court orders, as subpoenas or court orders, any kind of testimony, is done under penalty of perjury.

It’s a federal court of law and that’s the key with this particular case. And that court does have the power to put harsh sanctions for business, practicality and canceling all while that is a very hard sanction does come into play. So remember, if your trademark is in dispute and you’re in the Trademark Trial and Appeal Board (TTAB), you’ll want to take that case as seriously as if it were a trademark infringement case in any federal district court. I’m Anthony Verna, managing partner of Verna Law where we focus on IP and advertising law. See you next time. Thank you.