Sermon from the Bench: TTAB May Not “Altar” Course in Silence

by Dennis Crouch
Universal Life Church Monastery v. American Marriage Ministries (Fed. Cir. 2023) (non-precedential)
The case involves Universal Life Church Monastery’s (ULC Monastery) trademark application for the mark GET ORDAINED covering both online retail store services (Class 35) and ecclesiastical services (Class 45) like ordaining ministers. American Marriage Ministries (AMM) filed an opposition asserting that the mark was merely descriptive and failed to function as a mark for both classes of services. However, AMM’s briefing focused solely on the ecclesiastical services and did not present any argument about the online retail store services.

Despite the failure of briefing, the TTAB sustained AMM’s opposition as to both classes of services without addressing ULC Monastery’s argument that AMM waived its claims regarding the online retail services by not briefing them.  On appeal, the Federal Circuit has vacated and remanded, holding that the TTAB acted arbitrarily and capriciously by failing to explain why it did not deem certain unargued claims to be waived.
The TTAB has a set of current practices and procedures set out in its Trademark Trial and Appeal Board Manual of Procedure  (TBMP).  The TBMP provides that ‘[i]f a party fails to reference a pleaded claim or affirmative defense in its brief, the Board will deem the claim or affirmative defense to have been waived.”  In this case, the Board decided the unargued claim without identifying its reasoning.  On appeal, the Federal Circuit held this was arbitrary and capricious:
When the Board ‘departs from [its] established precedent without a reasoned explanation, its decision will be vacated as arbitrary and capricious.’ … The Board may not depart from its prior procedures ‘sub silentio.’
Opinion at 7. On remand, the TTAB will need to explain its waiver decision.  This non-precedential decision confirms that the TTAB must follow its own rules and procedures regarding waiver.
This decision underscores the Federal Circuit’s continued scrutiny of USPTO tribunals’ reasoning and explanations. Yet at the same time, the Federal Circuit frequently issues Rule 36 judgments affirming lower tribunal decisions without any opinion or reasoning. This dichotomy highlights a double standard — while the Federal Circuit demands detailed explanations from the USPTO, the court does not hold itself to that same standard. The court could improve perception of fairness by limiting no-opinion affirmances or providing short explanations of basis. Until then, the court’s warnings about silent departure from past practice ring hollow.