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CFA Institute a Virginia Non-Stock Corp. v. American Society of Pension Professionals & Actuaries

United States District Court, W.D. Virginia, Charlottesville Division

May 3, 2019

CFA INSTITUTE a Virginia Non-Stock Corporation, Plaintiff,


          Joel C. Hoppe United States Magistrate Judge.

         This matter is before the Court on Defendant American Society of Pension Professionals & Actuaries's (“ASPPA”) Motion to Stay. ECF No. 16. The parties have briefed the issues, see ECF Nos. 16, 23, and the Court held a hearing on April 12, 2019, ECF No. 29. Based on the parties' written submissions, oral arguments, and the relevant law, I find that ASPPA's Motion to Stay will be denied.

         I. Background and Procedural History

         This case concerns allegations by Plaintiff CFA Institute (“CFA”) that ASPPA infringed various trademarks held by CFA. CFA is not-for-profit association of investment professionals that offers educational and certification services to various entities. See Compl. ¶¶ 10, 13, ECF No. 1. It has applied for and obtained a series of registered trademarks, including CFA CHARTERED FINANCIAL ANALYST; C.F.A.; and CFA INSTITUTE. (collectively, the “CFA Marks”). Id. ¶ 13; see also Def.'s Mot. to Stay, Ex. 2 (“Notice of Opp'n”), ECF No. 16-2. It uses some of these marks in connection with its CFA Program through which investment professionals can become certified by CFA, be awarded the right to use the professional CFA or “Chartered Financial Analyst” designation, and become eligible for CFA membership. Compl. ¶ 29. CFA also offers various educational programs for its “members, program candidates, investors, employers, institutions, and the press.” Id. ¶ 30.

         ASPPA is a non-profit professional organization that offers educational and credentialing programs in the field of employer-based retirement plans. Def.'s Mot. to Stay 1, ECF No. 16. Specifically, ASPPA offers a program in which retirement plan advisors can earn the right to use the ASPPA designation, “CPFA, ” or “Certified Plan Fiduciary Advisor.” See id. at 2-3. In July 2016, ASPPA applied for trademark protection for the mark, NAPA CPFA CERTIFIED PLAN FIDUCIARY ADVISER (the “ASPPA Mark”). See id. at 2. This mark was published in the Federal Register on August 15, 2017. See Notice of Publication, United States Patent and Trademark Office, Serial No. 87-103, 390 (July 26, 2017).[1]

         On February 12, 2018, CFA filed a Notice of Opposition against ASPPA with the United States Trademark Trial and Appeal Board (“TTAB”), pursuant to 15 U.S.C. § 1063, alleging that it was or would be damaged by registration of the ASPPA Mark (the “Opposition Proceeding”). Pl.'s Notice of Opp'n 1, ECF No. 16-2. In March 2018, ASPPA filed a counterclaim to restrict the registration of the CFA Marks to reflect that CFA does not direct its goods and services specifically or exclusively to professionals in the field of retirement financial planning. See ASPPA Answer & Countercl., CFA Inst. v. Am. Soc'y of Pension Prof'ls & Actuaries, Opp'n No. 91239462 (T.T.A.B. 2018), Filing No. 5. ASPPA similarly alleged in an affirmative defense that because the uses of the ASPPA Mark were directed toward retirement-based financial planning or investments, the distinction between the services offered was sufficient to avoid likelihood-of- confusion between the parties' marks. Id. ¶¶ 51-57. In September 2018, the TTAB granted CFA's motion to dismiss ASPPA's counterclaim, finding that ASPPA's proposed restriction of CFA's mark was “ambiguous.” TTAB Order of Sept. 27, 2018, Opp. No. 91239462, Filing No. 12. ASPPA filed an amended counterclaim in October 2018 similarly seeking to restrict the registration of the CFA Marks to services “offered primarily to professionals outside the field of retirement financial planning.” ASPPA Am. Answer & Countercl., Opp'n No. 91239462, Filing No. 13. In November, CFA again moved to dismiss ASPPA's counterclaim, CFA Mot. to Dismiss, Opp'n No. 91239462, Filing No. 14, and the TTAB suspended proceedings pending the resolution of CFA's motion, TTAB Order of Nov. 20, 2018, Opp'n No. 91239462, Filing No. 15. In March 2019, CFA moved to suspend the Opposition Proceeding pending the disposition of the matter pending before this Court. CFA Mot. to Suspend, Opp'n No. 91239462, Filing No. 18.

         In February 2019, CFA filed the present infringement action in this Court alleging that the ASPPA Mark infringed the CFA Marks and asserting claims under federal and state law for trademark infringement, unfair competition, and accounting. See generally Compl. 3-24. The following month, CFA filed a motion with the TTAB seeking to suspend the Opposition Proceeding pending the outcome of the present civil action. See Def.'s Mot. to Stay Ex. 1, ECF No. 16-1. Several days later, ASPPA filed its Motion to Stay, asking this Court to stay the case pending the outcome of the Opposition Proceeding. On April 26, 2019, the TTAB issued an order granting CFA's Motion to Suspend and denying, without prejudice, CFA's Motion to Dismiss. TTAB Order of Apr. 26, 2019, Opp'n No. 91239462, Filing No. 21. It found that this civil action “involves the same parties and marks at issue in the opposition proceeding, and the same issues, namely, which party has priority and whether there is a likelihood of confusion between the parties' marks.” Id. at 4. Thus, the TTAB suspended the Opposition Proceeding “pending final disposition of the Civil Action” and noted, “[i]f the District Court grants [CFA's] motion to stay the Civil Action in favor of [the Opposition Proceeding], the [TTAB] will resume [the Opposition Proceeding].” Id. at 5. For the reasons that follow, I find that the circumstances of this case do not merit a stay of the proceedings in this Court.

         II. Discussion

         Under the Lanham Act, a person who “believes that he would be damaged by the registration of a mark upon the principal register” may “file an opposition” with the United States Patent and Trademark Office (“USPTO”) to challenge the proposed registration. 15 U.S.C. § 1063(a). This filing gives rise to an opposition proceeding before the TTAB. See 15 U.S.C. § 1067; Lodestar Anstalt v. Bacardi & Co., No. CV-16-06411, 2016 U.S. Dist. LEXIS 167983, at *2 (C.D. Cal. Nov. 16, 2016). Opposition proceedings under § 1063(a) are similar to civil actions in federal district court. See TTAB Manual of Procedure § 102.03 (2018) (“TBMP”). The proceedings are largely governed by the Federal Rules of Civil Procedure, and they permit discovery and depositions. See B&B Hardware, Inc. v. Hargis Indus., 135 S.Ct. 1293, 1300 (2015) (citing 37 C.F.R. §§ 2.116(a), 2.120, 2.122(a), 2.123(a)). The party opposing registration bears the burden of proof. Id.

         A party seeking review of the TTAB's decision may appeal to the United States Court of Appeals for the Federal Circuit. 15 U.S.C. § 1071(a). Alternatively, a party may seek review in federal district court, id. § 1071(b), at which time the parties may conduct additional discovery, and the judge resolves the registration dispute de novo. B&B Hardware, 135 S.Ct. at 1301. Notwithstanding these options, the Lanham Act also provides for a civil cause of action for trademark infringement that may be filed, in the first instance, with the district court. See 15 U.S.C. §§ 1114 (registered marks), § 1125 (unregistered marks). Unlike with opposition proceedings under § 1063(a), a district court in infringement litigation “considers the full range of a mark's usages, not just those in the application.” B&B Hardware, 135 S.Ct. at 1301.

         ASPPA argues that this Court should stay CFA's infringement action pending CFA's Opposition Proceeding against the ASSPA Mark currently pending before the TTAB. It is well-settled that the “power to stay proceedings is incidental to the power inherent in every court to control the disposition of the causes on its docket with economy of time and effort for itself, for counsel, and for litigants.” Derosa v. J.P. Walsh & J.L. Marmo Enters., 541 Fed.Appx. 250, 252 (4th Cir. 2013) (quoting Landis v. N. Am. Co., 299 U.S. 248, 254 (1936)). Accordingly, in determining whether to grant a motion to stay, the Court must exercise its discretion to “balance the various factors relevant to the expeditious and comprehensive disposition of the causes of action on the court's docket.” Maryland v. Universal Elections, 729 F.3d 370, 375 (4th Cir. 2013). The Court considers the following factors: “(1) the length of the stay; (2) the hardship the movant would face if the stay were denied; (3) the burden of the stay on the nonmovant; and (4) whether the stay would promote judicial economy by avoiding duplicative litigation.” City of Galax v. Perdue Pharma, L.P., No. 7:18cv617, 2019 U.S. Dist. LEXIS 24551, at *10 (W.D. Va. Feb. 14, 2019). The moving party bears the burden to show good cause for the stay. See Landis, 229 U.S. at 254-55. I find, on balance, that the relevant factors weigh against granting ASPPA's motion.

         A. Length of the Stay and Judicial Economy

         As to the first and fourth factors, CFA argues that the Opposition Proceeding is in its “early stages” and that this civil action “will proceed more quickly” than the Opposition Proceeding. Pl.'s Br. in Opp'n 4-5, ECF No. 23. ASPPA has not produced any specific evidence that the Opposition Proceeding will necessarily advance at a faster pace than proceedings in this Court, and I am unaware of any reason that this Court could not bring this case to conclusion at least as expeditiously as the TTAB. Indeed, the Court in this case has already issued a preliminary Scheduling Order, ECF No. 15, and the parties are expected to begin discovery shortly. Alternatively, the Opposition Proceeding before TTAB has been pending for over one year and the parties have not exchanged any discovery, nor set a date for trial. Moreover, pursuant to the most recent scheduling order entered in the TTAB proceeding, the parties would not be able to secure a hearing date for trial until at least July 2020, a date that will almost certainly be postponed in light of the fact that the Opposition Proceeding remains suspended. See Order of Sept. 27, 2018, Opp'n No. 91239462, Filing No. 12. At bottom, ASPPA has failed to show any efficiency to be gained by permitting CFA's case to proceed before TTAB rather than this Court.[2]

         I further reject ASPPA's argument that the stay would assist in avoiding duplicative litigation before the TTAB and this Court. The principal dispute between the parties on this issue concerns whether, in light of the Supreme Court's decision in B&B Hardware, the TTAB's decision in the Opposition Proceeding would result in issue preclusion. In B&B Hardware, the Court explained that so long as “the usages adjudicated by the TTAB are materially the same as those before the district court” in a civil infringement action, issue preclusion would bind the district court to the TTAB's decision in an opposition proceeding. 135 S.Ct. at 1310. CFA argues that B&B Hardware is inapposite because the ruling does not apply where “the ordinary elements [of issue preclusion] will not be met” Pl.'s Br. in Opp'n10 (quoting B&B Hardware, 135 S.Ct. at 1306). It is unnecessary for me to reach a conclusion on this point because, irrespective of whether TTAB's decision would result in preclusion before this Court, I find that duplicative litigation can also be avoided-and judicial economy best served-by moving forward with litigation pending before this Court. First, the TTAB has already suspended the Opposition Proceeding pending the outcome of this civil action. Accordingly, any issues that TTAB would have decided that might have lead to issue preclusion in this Court will instead be decided by this Court and may result in issue preclusion at the TTAB. See B&B Hardware, 135 S.Ct. at 1305-06 (“Neither is issue preclusion a one-way street. When a district court, as part of its judgment, decides an issue that overlaps with part of the TTAB's analysis, the TTAB gives preclusive effect to the court's judgment.”); see also TTAB Order of Apr. 26, 2019, Opp'n No. 91239462, Filing No. 21 (“[T]he Civil Action may have a bearing on the [O]pposition [P]roceeding such that proceeding here prior to the resolution of the Civil Action would be inefficient and ...

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