No stay of action in PODFITNESS trademark case

Apple Computer, Inc. v. Podfitness, Inc., No. 06-5805, 2007 WL 1378020 (N.D. Cal. May 10, 2007)

Podfitness.com provides a service whereby users can download workout routines onto their iPods. When Podfitness filed trademark applications for PODFITNESS, PODFITNESS.COM, PODPOCKET, and PODWORKOUT with the United States Patent and Trademark Office, Apple filed notices of opposition with the Trademark Trial and Appeal Board (“TTAB”), seeking to prevent the marks from registering. Apple also filed a federal lawsuit against Podfitness, alleging that the company’s “entire marketing strategy appears to consist of hitching its wagon to Apple’s star.”

Defendant Podfitness moved to stay the proceedings pending the outcome of the oppositions before the TTAB. The court denied the motion to stay.

Podfitness provided two arguments why a stay would be appropriate. First, it argued that since the question of likelihood of confusion would be central to all of Apple’s claims, the court should wait to see how the TTAB rules on that point. Second, Podfitness claimed that Apple has initiated numerous other oppositions before the TTAB seeking to preclude others from registering trademarks containing word combinations which include the term “POD,” and therefore a stay would further the interests of judicial economy because the TTAB’s decision would comprehensively adjudicate Apple’s right to preclude others from using POD-formative marks.

In denying the motion for a stay, the court looked to the doctrine of “primary jurisdiction.” Under this doctrine, a court should stay proceedings which are properly within the jurisdiction of, and are in fact presently under consideration by, an agency with extensive regulatory powers over the subject matter and the parties involved.

Podfitness argued that a stay of the action pending the TTAB’s decision would promote a uniform and efficient adjudication of the parties’ rights, while, at the same time, avoiding the potential for inconsistent judicial determinations concerning Apple’s rights to preclude others from using POD-formative marks. Apple countered that since the TTAB’s decision would only determine the registrability of Podfitness’s marks, the Court would still have to adjudicate its claims for trademark infringement, dilution, false advertising and unfair competition regardless of the substance of the TTAB’s determinations. Accordingly, Apple argued, a stay would only serve to delay the resolution of the issues, perhaps for years.

The court agreed with Apple’s arguments, observing that the TTAB would be incapable of resolving all of the issues between the parties. Granting a stay would only serve to postpone resolution of the issues, forcing the court to eventually adjudicate what would inevitably be stale factual claims. And in the interim, Podfitness would be able to continue its allegedly infringing activity unfettered.

So the benefit of prompt adjudication won out.