TTAB has power to enforce agreements between trademark owners

In Adhesive Technology (International) Licensing BV v Fenchurch Environmental Group Limited (Case 91151587), the Trademark Trial and Appeal Board (TTAB) has affirmed that it has the power to enforce agreements between parties that are relevant to opposition proceedings. The TTAB dismissed Fenchurch's motion for summary judgment, holding that Adhesive Technology's notice of opposition was valid because the goods description Fenchurch used in its trademark registration application did not comply with a pre-existing settlement agreement between the two parties.

Adhesive Technology filed a notice of opposition following the publication of Fenchurch's BACTIGUARD mark. It contended that the goods description in the application at issue did not comply with an alleged agreement between the two parties, in which Adhesive Technology had agreed not to oppose Fenchurch's application provided that it specifically excluded "medical products, devices, equipment and applications". The pending trademark registration did not include this exclusion.

Fenchurch brought a motion for summary judgment requesting the dismissal of the opposition. In response, Adhesive Technology solely relied on the provisions of the agreement to support the validity of its opposition.

The TTAB dismissed Fenchurch's motion for summary judgment. It held that it has the authority to construe an agreement between parties involved in an opposition proceeding in order to decide the relevant issues and to enforce its terms where necessary. In the case at hand, the TTAB agreed with Adhesive Technology and held that the goods description in Fenchurch's application "broadens the scope of protection for [Fenchurch's] products beyond that contemplated by the agreement". However, the TTAB noted that it was prepared to allow Fenchurch the opportunity to amend its goods description to comply with its construction of the agreement.

Rochelle D Alpert, Morgan Lewis & Bockius LLP, San Francisco