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

Section 1071 of the Lanham Act provides parties two options for appealing adverse ex parte decisions from the Trademark Trial and Appeal Board (TTAB). The dissatisfied party may either appeal to the Federal Circuit under Section 1071(a) or to any U.S. district court under Section 1071(b). 15 U.S.C. §1071(a)-(b). Although pursuit of an appeal to the Federal Circuit may under some circumstances prove to be quicker and less expensive, appeals to district courts are becoming increasingly attractive given recent changes in the law and USPTO practice in defending these actions. Based on the authors' recent experience in several such appeals, they can share the following lessons learned.

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.