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By Anandashankar Mazumdar
Nov. 24 — A Maryland mobile application developer cannot pursue a trademark infringement claim against PNC Bank for its use of the term “Spendology” because the issue has already been decided by an administrative tribunal, the U.S. District Court for the District of Maryland ruled (Ashe v. PNC Fin. Servs. Grp., Inc., 2015 BL 378075, D. Md., No. PWG-15-144, 11/17/15).
The court determined Nov. 17 that a claim by K. Alexander Ashe of Bethesda, Md., is barred under the doctrine of collateral estoppel, also known as issue preclusion, because an administrative trademark tribunal has already determined that PNC had been using the term longer than Ashe.
At issue is a website operated by Ashe under the name Spendology LLC that promotes Instant Budget, a mobile application that assist users with financial planning.
In 2011, Ashe filed an application to register “Spendology” with the Patent and Trademark Office. Soon after, PNC Financial Services Group Inc. of Pittsburgh, which operates 2,700 consumer banking branches in about 20 states, filed an application to register “Spendology.” PNC also filed an opposition to Ashe's application.
In October 2013, the Trademark Trial and Appeal Board found that PNC had used the term in connection with online money management before Ashe had done so, and refused Ashe's application. More than a year later, after the deadline to appeal the TTAB's ruling had passed, Ashe filed the instant trademark infringement claim against PNC.
Charles L. Gholz of Oblon, McClelland, Maier & Neustadt LLP, Alexandria, Va., told Bloomberg BNA that he had “been predicting results such as this one for some time” as precipitating from the Supreme Court's ruling in B&B Hardware, Inc. v. Hargis Industries, Inc., 113 U.S.P.Q.2d 2015 (U.S. March 24, 2015)(57 PTD, 3/25/15).
B&B Hardware ruled that the TTAB's rulings on registration might trigger preclusion in some infringement cases.
Gholz predicted in an article written for Bloomberg BNA in June that this would create “a significant redistribution” of trademark work from district courts to TTAB proceedings(105 PTD, 6/2/15).
The court's ruling was issued by Judge Paul W. Grimm.
Ashe represented himself. PNC was represented by Finnegan Henderson Farabow Garrett & Dunner LLP, Washington.
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