In Brief:  Wording in a prior settlement agreement barred a trademark opposition proceeding.

Here’s What Happened:  

In 2018, BYLT Performance LLC (“Performance”) sued BYLT LLC (“LLC”) for using the marks with the letters “BYLT” in them for apparel. The parties settled the matter by entering into a co-existence agreement. Performance agreed to allow LLC’s two pending trademark applications to proceed as long as LLC dropped an earlier filed trademark application. The abandonment of the earlier filed application and some details on use of the marks appear to have been LLC’s only obligations to Performance in order to proceed with the other two applications.

Once the two LLC applications were published for opposition, Performance filed oppositions to registration before the Trademark Trial and Appeal Board. Performance alleged that the marks in the two applications were causing actual confusion.

In a motion for summary judgment, LLC pointed out that Performance had agreed not to oppose the registration of the two marks.

Performance’s response was in the form of “yes, but”. Performance argued that the agreement was unenforceable because LLC didn’t comply with packaging requirements. As a result of LLC’s failures, the agreement didn’t live up to the intention of the parties and Performance should be allowed to rescind, void or cancel the agreement as a matter of public policy.

The Board applied the equitable doctrine of contractual estoppel. The Board’s subject matter jurisdiction doesn’t include enforcement of a contract. But the Board may consider a contract that is integral to the Board’s ability to render a decision. Performance had agreed not to contest the two applications.

The Board noted a material omission in the agreement in making its decision in LLC’s favor. The agreement had no section that allowed the parties to rescind, void or cancel the agreement in the event of actual confusion.

The Board dismissed the opposition with prejudice.

Why You Should Know This: As this case demonstrates, anticipating every possible eventual issue in an agreement is an impossible goal.

Case Information:  BYLT Performance LLC v. BYLT, LLC, Oppositions Nos. 91274047 and 91276608 (September 14, 2023) [not precedential].

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