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Court Holds that TTAB Appellant Gets Only One Bite at the Apple When Selecting Forum for Appeal

The loser of a trademark opposition or cancellation proceeding at the United States Trademark Trial and Appeal Board (TTAB) has two avenues for appealing the decision: (1) to the United States Court of Appeals for the Federal Circuit, or (2) to a United States federal district court. In what is likely a case of first impression, the United States District Court for the Western District of North Carolina held that once an appellant selects one of those avenues for appeal, it is barred from later moving the appeal to the other forum, even after the case is remanded to the TTAB and the TTAB issues a new decision. Princeton Vanguard, LLC and Snyder's Lance, Inc. v. Frito-Lay North America, Inc., Case No. 3:17-cv-00652-KDB-DSC, 2019 WL 5310697 (W.D.N.C. Oct. 21, 2019).

Plaintiffs, Princeton Vanguard, LLC and Snyder’s-Lance, Inc., obtained a Supplemental Register registration for the trademark PRETZEL CRISPS and filed an application to register that same mark on the Principal Register of the United States Patent and Trademark Office (PTO). Defendant, Frito-Lay North America, Inc., petitioned to cancel the registration and opposed the application on the grounds that the wording PRETZEL CRISPS was generic or, in the alternative, lacked secondary meaning.

The TTAB agreed with Frito-Lay, finding that PRETZEL CRISPS was generic. Plaintiffs then elected to appeal the TTAB’s decision to the Federal Circuit pursuant to 15 U.S.C. § 1071(a), rather than appealing to a federal district court under 15 U.S.C. § 1071(b). The Federal Circuit held that that the TTAB applied the incorrect legal standard for genericness, vacated the decision, and remanded the case to the TTAB with instructions to apply the correct legal standard. On remand, the TTAB followed the legal standard articulated by the Federal Circuit, but reached the same conclusion that the mark PRETZEL CRISPS was generic, or, in the alternative, was descriptive and lacked secondary meaning.

At that point, Plaintiffs appealed the TTAB’s decision not to the Federal Circuit, but to a federal district court, namely, the United States District Court for the Western District of North Carolina. Upon review of the parties’ summary judgment motions, the court raised the issue of subject matter jurisdiction sua sponte and requested that the parties provide briefing on the issue.

The court then held that it lacked subject matter jurisdiction over the action because the Plaintiffs had made their choice of forum in the first instance by appealing the TTAB’s original decision to the Federal Circuit. The court reasoned that under 15 U.S.C. § 1071, a “dissatisfied party” may appeal a TTAB decision either to the Federal Circuit or to a US district court, but it “may not do both.” Accordingly, “the plain language of the statute does not allow a dissatisfied party who has taken an appeal to the Federal Circuit under § 1071(a) to later exercise the option to file a civil action under § 1071(b).” Put another way, “Plaintiffs took their one bite at the proverbial apple when they opted for a Federal Circuit appeal and are not entitled to take another one this Court.” Accordingly, the court dismissed the case for lack of subject matter jurisdiction. 

The court’s holding underscores the critical importance for TTAB appellants to carefully evaluate and select their preferred forum for appeal.

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