Philip Morris v. Sycuan: the TTAB holds tribal sovereign immunity cannot be asserted in Board inter partes proceedings

The ruling

On September 18, 2026, a Board panel of Administrative Trademark Judges Heasley, Elgin, and O'Connor issued a precedential order in Cancellation No. 92063134, Philip Morris USA Inc. v. IP Services International Inc. and Sycuan Tribal Development Corporation. The Board denied Sycuan's motion to dismiss for lack of subject matter jurisdiction on the basis of tribal sovereign immunity, which it called a question of first impression before the Board, and held "that tribal sovereign immunity cannot be asserted in inter partes proceedings before the Board." Sycuan had styled the motion as one for summary judgment. The Board construed it as a motion to dismiss under Fed. R. Civ. P. 12(b)(1) because the immunity question is jurisdictional.

How the registrations reached a tribal entity

Philip Morris filed the petition on February 8, 2016 against four registrations then owned by IP Services International Inc.: NYC CLASSIC (Reg. No. 3140971), CROSSROADS (Reg. No. 3172861), and CARPE DIEM (Reg. Nos. 4218677 and 4261884), for cigarettes and other tobacco products. The petition alleges that the marks were abandoned through nonuse or, alternatively, through naked licensing, and IP Services denies the salient allegations. According to the order, IP Services argued in 2017 that it should not have to comply with its discovery obligations because it intended to sell the registrations to Sycuan, which would be able to assert tribal sovereign immunity. IP Services assigned the registrations to Sycuan on March 23, 2018, and the Board joined Sycuan as a respondent on September 25, 2018. IP Services remains a respondent.

The Board's reasoning

The Board drew on two Federal Circuit decisions holding that sovereign immunity does not apply to inter partes review before the Patent Trial and Appeal Board: St. Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., 896 F.3d 1322 (Fed. Cir. 2018), on tribal immunity, and Regents of the University of Minnesota v. LSI Corp., 926 F.3d 1327 (Fed. Cir. 2019), on state immunity. It found that tribal immunity does not apply to Board inter partes proceedings "in the first instance" and that the respondents' attempt to invoke it "would contravene the very letter and purpose of the federal Trademark Act." The Board added that under the respondents' position, non-tribal entities "could also use the doctrine to insulate invalid registrations from removal from the register by assigning them to a tribe or an arm of the tribe," and said that "[t]he danger of such gamesmanship is plainly evidenced by Respondents' conduct here."

The Board did not decide whether Sycuan is an "arm of the tribe," whether dismissing Sycuan would require dismissing IP Services, or whether Sycuan waived immunity by acquiring the registrations after learning they were subject to this proceeding.

Where the case stands

The order does not decide the cancellation claims, and no registration has been cancelled. It states that proceedings remain suspended, gave the parties until October 16, 2026 to report on outstanding discovery responses and a deposition, and said proceedings will resume with reset dates after that response. The TTABVUE docket shows a motion for an extension of time without consent filed by the respondents on October 16, 2026.