In a trademark dispute over the brand-name ROGUE, the United States District Court of the Southern District of New York ruled that Excelled Sheepskin & Leather Coat Corp. (Excelled) cannot appropriate Oregon Brewing Company’s (OBC) right to utilize the ROGUE mark because OBC is the senior user of the name.
OBC, a commercial brewery founded in 1988, has sold ROGUE branded clothing and other merchandise, including t-shirts, hats, sweatshirts, and aprons, throughout the United States, including in its pubs, brewery, bed and breakfasts, and hop farm. Since the mid-1990s, OBC has sold ROGUE clothing at beer festivals across the country and via mail order nationwide. In 1995, OBC began distributing its ROGUE clothing through third-party retailers Fred Meyer and Cost Plus. In 2011, OBC began selling its own ROGUE-branded apparel in department stores, including Urban Outfitters, Nordstrom, and Sears.
Excelled, a leather and apparel manufacturer founded in 1927, has sold clothing bearing the ROGUE mark since January 2000. Excelled also marketed and sold its ROGUE-branded apparel in department stores such as Nordstrom, Saks, Macy’s, and Neiman Marcus since January 2000.
Conflicting Rogue Trademarks
In 2004 and 2005 respectively, Excelled and OBC both applied to the United States Patent and Trademark Office (PTO) to register the ROGUE mark. As part of its application to register ROGUE, Excelled submitted a sworn declaration that as of 2004, it was using ROGUE on “men’s, ladies’ and children’s clothing, namely coats, jackets, vests, shirts and pants.” OBC applied to register with the USPTO the word mark ROGUE in connection with “clothing, namely, t-shirts, sweatshirts, polo shirts, turtlenecks, aprons, hats.” The USPTO refused OBC’s application due to a likelihood of confusion with Excelled’s earlier applications for “potentially conflicting marks.”
After the PTO expressed concern about a likelihood of confusion from both parties’ uses of the ROGUE mark, Excelled and OBC entered into a Settlement and Trademark Consent Agreement in 2007, requiring each to delete certain items of clothing from their pending applications. Excelled consented to OBC’s registration of ROGUE for all clothing “excluding jackets, coats and skirts,” and OBC consented to Excelled’s registration of ROGUE for “jackets, coats and skirts…and/or footwear.” The Agreement asserted the parties’ belief that, “so long as the respective marks are used in the manner set forth in this Agreement there will be no likelihood of confusion between the respective marks.”
The USPTO granted OBC a trademark registration for the ROGUE word mark on January 8, 2008, after OBC further limited its trademark application to “clothing, namely, t-shirts, sweatshirts, polo shirts, turtlenecks, aprons, hats, and not including jackets, coats and skirts, sold primarily in the trademark owner’s brewpubs and website.” However, Excelled never amended its trademark applications to reflect the 2007 Settlement Agreement.
The United States District Court, S.D. New York, adhered to the mandate rule and accepted the Second Circuit’s ruling that OBC has priority use of the ROGUE mark as a matter of law. The Second Circuit held, and the U.S. District Court upheld, that OBC has national priority for the ROGUE word mark in connection with “ROGUE clothing in department or clothing-only stores.” TheSecond Circuit explained that OBC made “bona fide continuous nationwide sales” starting in 1989, which “were sufficient to establish a protectable priority in use of the mark for the sale of such goods.”
Additionally, the Second Circuit held that OBC’s “continuous nationwide use of the trademark since 1989” gave it priority over each of Excelled’s federal registrations for the ROGUE mark. Moreover, Excelled was prevented from challenging OBC’s nationwide priority for the ROGUE mark on t-shirts, sweatshirts, and hats on remand from the Second Circuit due to the mandate rule. The mandate rule compels compliance on remand with the dictates of the superior court and forecloses re-litigation of issues expressly or impliedly decided by the appellate court, effectively preventing the U.S. District Court from reexamining litigation concerning OBC’s nationwide priority. 1
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1 Farnum Place, LLC v. Krys, (In re Fairfield Sentry Ltd.), 690 F. App’x 761, 764–65 (2d Cir. 2017) (quoting United States v. Ben Zvi, 242 F.3d 89, 95 (2d Cir. 2001).