Rita Kline

Recently, TTAB (The Trademark Trial and Appeal Board) held that no sovereign immunity could be claimed by a state agency in an opposition proceeding. The case involved a religious order, that challenged a community college system’s proposed marks (Mountain Gateway Order, Inc. v. Virginia Community College System).

The owner of the trademarks Mountain Gateway and Mountain Gateway Academy had opposed applications submitted by the Virginia Community College System (VCCS) for a similar mark to be used in clothing and in educational services. The owners of the preexisting trademarks, Mountain Gateway Order, Inc., alleged a likelihood of dilution by blurring, a lack of bona fide intent to use in commerce, and likelihood of confusion as claims in the opposition (Nos. 91283412 & 91283416). The Virginia Community College System responded by requesting dismissal of the opposition, accusing TTAB of lacking jurisdiction by claiming the doctrine of state sovereign immunity.

Although “state sovereign immunity may be asserted” in matters involving a private company challenging the State in an administrative tribunal, TTAB said, “States may not assert sovereign immunity where a federal agency exercises its superior sovereignty in agency enforcement actions instituted upon information supplied by a private party to ensure State compliance with federal law.” As the Community College was seeking registration for a federal trademark, the agency appeared before TTAB in the role of a trademark applicant, per Section 45 of the Trademark Act, 15 U.S.C. § 1127. As such, the College had subjected itself to provisions in the Lanham Act regarding infringement.

The case was not dismissed and in a further blow to the VCCS, TTAB held that Mountain Gateway Order, Inc., the owners of the preexisting marks, had shown the College’s proposed marks were likely to cause confusion.