TTAB: Tribal Immunity No Bar to Philip Morris TM Cancellation

The Trademark Trial and Appeal Board issued a precedential decision on September 18 holding that tribal sovereign immunity does not protect trademarks transferred to a Native American tribe from cancellation actions. Philip Morris USA sought to cancel registrations allegedly abandoned and later assigned to Sycuan Tribal Development Corp. The board applied reasoning from prior Federal Circuit and Supreme Court cases denying tribal immunity in patent inter partes reviews and state immunity in trademark matters. It found no meaningful distinction in the administrative trademark context. Sycuan argued distinctions in the proceeding type and immunity waiver, but the board rejected those points. The ruling marks the first time the TTAB has addressed tribal immunity in this setting and aligns with broader trends limiting sovereign immunity defenses in intellectual property administrative proceedings.

The decision allows Philip Morris to proceed with its cancellation bid on the merits. It underscores that strategic assignments to tribes or states will not automatically insulate marks from challenge in USPTO proceedings. Practitioners note the outcome may influence future attempts to use sovereign entities as shields in trademark disputes.

Sources: https://news.bloomberglaw.com/ip-law/philip-morris-trademark-attack-not-stymied-by-tribal-immunity https://www.law360.com/articles/2524791