Ex Parte Trademark Appeals to District Court — Lessons Learned from the Front Lines

1. Selection of the Forum

Although many parties may initially be inclined to bring ex parte appeals in the U.S. District Court for the Eastern District of Virginia, because the USPTO is domiciled within that district, such appeals also may be brought in any district court in which the appealing party resides. 28 U.S.C. §1391(e)(1)(C). Assuming the party is a domestic applicant, filing the action in a district court in which the appealing party resides may provide a strategic advantage as the judiciary there may have greater (and ideally positive) familiarity with the appealing party and the designation subject to the appeal. This may prove to be important where the issue on appeal is focused on whether a particular designation is understood by the relevant consuming public to be a trademark — that is where trademark eligibility is being challenged by the USPTO on genericness, descriptiveness and/or failure-to-function grounds.

2. The Significance of De Novo Review

A well-recognized benefit of pursuing ex parte appeals in district court is the ability to introduce new evidence, arguments and claims supporting registration of the designation at issue. Indeed, Section 1071(b)(1) instructs district courts to adjudicate such actions "as the facts of the case may appear." 15 U.S.C. §1071(b)(1). The statute contemplates the district court will conduct fact finding based on the administrative record as well as "further cross-examination" of witnesses and "further testimony". 15 U.S.C. §1071(b)(3); see also, Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150, 155 (4th Cir. 2014). The ability to introduce new evidence and claims, however, is a two way street, meaning that the USPTO is entitled to introduce new evidence, arguments and claims as well supporting the refusal to register below — including claims and arguments that may have been abandoned or not fully developed by the examining attorney below.