Stallard v. United States Patent & Trademark Office
| Decision Date | 01 March 2023 |
| Docket Number | 1:22-cv-1236 (LMB/JFA) |
| Parties | JOSEPH A. STALLARD, Plaintiff, v. UNITED STATES PATENT AND TRADEMARK OFFICE, Defendant. |
| Court | U.S. District Court — Eastern District of Virginia |
Proceeding pro se, plaintiff Joseph A. Stallard (“Stallard” or “plaintiff') filed this civil action under the Administrative Procedure Act (“APA”) to challenge § 1202.10 of the Trademark Manual of Examining Procedure which provides examining attorneys with guidance on the criteria for evaluating an application to register a character in a creative work as a trademark. That provision was applied in denying Stallard's application to register a character featured in his video game. Defendant the United States Patent and Trademark Office (“PTO” or “defendant”) has filed a Motion to Dismiss for lack of subject matter jurisdiction because Stallard's trademark application remains pending before the Trademark Trial and Appeal Board, which means he has not exhausted the required and exclusive administrative proceedings. [Dkt. No 8]. For the reasons stated in open court as supplemented in this Memorandum Opinion, defendant's Motion to Dismiss will be granted.
The PTO is charged with administering the federal system for trademark registration pursuant to the Lanham Act, 15 U.S.C. §§ 1051 et seq. A trademark, consisting of a “distinctive 1 mark[]” involving “words, names, symbols, and the like,” “can help distinguish a particular artisan's goods from those of others” and “designate[s] the goods as the product of a particular trader.” Matal v. Tam, 137 S.Ct. 1744, 1751 (2017). A trademark “helps consumers identify goods and services that they wish to purchase, as well as those they want to avoid.” Id.
The PTO's Trademark Manual of Examining Procedure (“TMEP”) provides “trademark examining attorneys in the USPTO, trademark applicants, and attorneys and representatives for trademark applicants with a reference work on the practices and procedures relative to prosecution of applications to register marks in the USPTO.” TMEP, Foreword (8th ed. 2022). As explained in its Introduction, the TMEP “sets forth the guidelines and procedures followed by the examining attorneys at the USPTO”; however, the TMEP also clarifies that the guidelines “do not have the force and effect of law” but “have been developed as a matter of internal office management[.]” TMEP, Foreword. See In re Pennington Seed, Inc., 466 F.3d 1053,1059 (Fed. Cir. 2006) ( that the TMEP “is not established law, but only provides instructions to examiners,” yet “[r]epresent[s] the PTO's established policy ... that is entitled to our respect”).
At issue in this civil action is § 1202.10 of the TMEP, which concerns proposed marks that identify a character in a creative work, specifically providing that:
Stallard is the creator and publisher of a video game, “Target of Desire: Episode 1,” in which one of the main characters is “Maria.” [Dkt. No. 1] ¶ 18. On November 19, 2021, Stallard filed an application to register the character “Maria” as an image mark for use on video games (the “Maria mark”). Id. ¶ 19. The Maria mark is depicted below:
(Image Omitted)
On April 21,2022, the examining attorney issued an initial non-final Office Action that refused registration because the proposed mark “as used on the specimen of record, identifies only a particular character in a creative work; it does not function as a trademark to identify and distinguish applicant's goods from those of others and to indicate the source of applicant's goods.”[1] Def. Ex. A [Dkt. No. 9-1] at 3 (citing 15 U.S.C. §§ 1051-1052,1127). The examining attorney also cited § 1202.10 in explaining that “[a] design of a character is registrable as a trademark only where the record shows that it is used in a manner that would be perceived by consumers as identifying the goods in addition to identifying the character.” Id. The examining attorney reasoned that because “it is clear that The Target of Desire is the provider of the goods.” Id. Registration was also denied on the grounds that the specimen submitted by Stallard was “not acceptable as a display associated with downloadable software and does not show the applied-for mark as actually used in commerce.” Id.
On November 9, 2021, Stallard filed a response to the office action. Def. Ex. B [Dkt. No. 9-1]. On July 18, 2022, the examining attorney issued a Final Office Action which denied registration of the Maria mark. Def. Ex. C [Dkt. No. 9-1]. Referencing §1202.10, the examining attorney reiterated that “the applied-for mark is merely used to identify and explain the character Maria in the applicant's video game” and was therefore not registrable. Id. at 21. As an additional ground for refusal of registration, the examining attorney concluded that the substitute specimens provided by Stallard were inadequate because he “failed to provide evidence of use of the applied-for mark in commerce.” Id. at 23.
On August 9,2022, Stallard timely appealed that decision to the Trademark Trial and Appeal Board (“TTAB”). [Dkt. No. 1] ¶ 25. Among other grounds for appeal, his opening brief challenged TMEP § 1202.10 as imposing a “misleading” and “rigid bright-line rule against characters as trademarks [which] has no basis in the statute or case law” and contravenes decisions by federal courts that characters can function as trademarks. Def. Ex. D [Dkt. No. 9-1] at 36-38.
On November 1, 2022, before the examining attorney had filed a response to the TTAB appeal, Stallard filed the pending two-count Complaint, which generally alleges that the PTO “wrongly refused [his] trademark registration” because the examining attorney relied on § 1202.10 and “gave [it] far more weight than any statute or case law.” [Dkt. No. 1] ¶¶ 10. 41. As relief, he seeks “removal of Section 1202.10 from the TMEP.” Id. at 6. More specifically, Count I of the Complaint alleges that TMEP § 1202.10 constitutes “final agency action” that violates the APA, 5 U.S.C. § 706(2), because it operates to deny the registration of marks like plaintiffs “because of [their] nature as a character” in violation of 15 U.S.C. § 1052 (). Id. ¶¶ 5-6, 34-36,40-42. Count II, captioned as “ultra vires action,” essentially duplicates Count I by claiming that “[i]f TMEP § 1202.10 is illegal, the Court can also remove it using its equity power.” Id. ¶ 45.
On November 15,2022, the examining attorney filed her brief before the TTAB, in which she responded to Stallard's arguments about the validity of § 1202.10. Def. Ex. E [Dkt. No. 9-1]. The examining attorney explained that she Id. at 50. The examining attorney reasoned that a character mark could serve as a trademark if it were “perceived by the purchasing public not just as a character but also as a mark which identifies and distinguishes the source of the goods to be registrable”; however, she argued that in this case, the Maria mark “fails to impart any commercial impression as a trademark for the Class 9 goods ... indicating the source of [Stallard's] downloadable electronic game software.” Id. at 50-51.
On December 5, 2022, Stallard filed his reply brief which continued to challenge the validity of TMEP § 1202.10. See Def. Ex. F [Dkt. No. 9-1] at 60-61. On December 19,2022, the appeal was submitted to the TTAB for a final decision, which remains pending as of February 28, 2023. See Def. Ex. G [Dkt. No. 9-1] at 63.
On January 17, 2023, the PTO filed a Motion to Dismiss this civil action for lack of jurisdiction [Dkt. No. 8], which has been fully briefed and argued.
Rule 12(b)(1) requires that a civil action be dismissed when the court lacks subject matter jurisdiction over the dispute. A plaintiff bears the burden of proving that subject matter...
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