Intellectual Property – Trademark Board appeal process clarified

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Where a party can appeal an initial decision of the Patent and Trademark Office’s Trademark Trial and Appeal Board to either the Federal Circuit or district court, and the Federal Circuit remands to the Trademark Board which issues a second decision, there is legislative history, circuit precedent and policy that supports allowing that second decision to be appealed to district court.

Background

This case presents a narrow question of statutory interpretation: whether a party to a trademark dispute who appeals a decision of the Patent and Trademark Office’s Trademark Trial and Appeal Board to the Federal Circuit may, after vacatur and remand by the Federal Circuit and the issuance of a new decision by the Trademark Board, seek review of that second decision in federal district court. The district court answered this question in the negative and dismissed the case for lack of jurisdiction.

Analysis

The parties agree that, by the plain language of the statute, an applicant dissatisfied with the initial decision of the Trademark Board may seek review of that decision via either the Federal Circuit or district court, subject to the opposing party’s right to elect district court review. In other words, there is no dispute that, in 2014, plaintiffs properly exercised their right to appeal to the Federal Circuit. Additionally, the parties agree that issues decided by the Federal Circuit in its review cannot subsequently be relitigated.

But the parties part ways on the question of whether plaintiffs had the same choice of review options in 2017 as they did in 2014. Essentially, defendant claims that plaintiffs’ decision to appeal to the Federal Circuit in 2014 binds them to that choice for the remainder of this case. By contrast, plaintiffs argue that they may make a new election for each new decision by the Trademark Board.

While the statutory language is somewhat ambiguous, plaintiffs have the better interpretation. This conclusion is further bolstered by legislative history, is in accord with the two sister circuits to have considered the issue, the Seventh and Ninth, and is supported by policy considerations.

The court holds the waiver language in § 1071 relates only to the choice of review options for the decision appealed from. In other words, a party seeking review of a subsequent Trademark Board decision may seek review in either the Federal Circuit or the district court, even if the Trademark Board’s initial decision was reviewed by the Federal Circuit. Therefore, the district court erred in dismissing this case for lack of subject matter jurisdiction.

Reversed and remanded.

Snyder’s-Lance Inc. v. Frito-Lay North America Inc. (Lawyers Weekly No. 001-055-21, 32 pp.) (James A. Wynn, Jr.) Case No. 19-2316. March 17, 2021. From W.D.N.C. (Kenneth D. Bell, J.) Paul D. Clement for Appellants. William G. Barber for Appellee.