414 F.Supp.3d 822
W.D.N.C.2019Background
- Dispute over registration of the trademark PRETZEL CRISPS: Frito-Lay opposed Princeton Vanguard’s application claiming the mark is generic (TTAB judgment 2014).
- Plaintiffs appealed the TTAB’s 2014 decision to the Federal Circuit under 15 U.S.C. §1071(a).
- The Federal Circuit vacated and remanded, directing the TTAB to apply the correct legal standard (Princeton Vanguard v. Frito-Lay, 786 F.3d 960).
- On remand the TTAB, on the same record, again found the mark generic and also concluded it was descriptive without secondary meaning.
- Rather than re‑appeal to the Federal Circuit, Plaintiffs filed a civil action in the Western District of North Carolina under 15 U.S.C. §1071(b) to review the TTAB’s remand decision.
- The district court held that by first appealing to the Federal Circuit Plaintiffs waived their right to seek district‑court review, and dismissed the case without prejudice for lack of subject matter jurisdiction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether a party who already appealed a TTAB decision to the Federal Circuit may later bring a civil action in district court under §1071(b) to review the TTAB’s remand decision | §1071 allows appeals after each TTAB “decision,” so Plaintiffs may seek district review of the remand opinion | An appeal to the Federal Circuit waives the §1071(b) district remedy; successive appeals are not permitted | Court: Appeal to Federal Circuit waives later district‑court remedy; no jurisdiction |
| Whether the statutory text and §1071(a)(4) (Federal Circuit decision governs further proceedings) permit a later district‑court de novo review without creating conflict among appellate courts | The term “the decision” does not limit waiver; district review after remand is consistent with the statute | Permitting district review would undermine the Federal Circuit’s primacy on matters it already addressed and impair judicial efficiency | Court: Statute read to give effect to the Federal Circuit’s primacy; successive forum election disallowed |
Key Cases Cited
- Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960 (Fed. Cir. 2015) (Federal Circuit vacated TTAB decision and remanded for correct legal standard)
- Gillette Co. v. '42' Products Ltd., 435 F.2d 1114 (9th Cir. 1970) (party not previously appealing to Federal Circuit may choose district forum for first appeal)
- Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150 (4th Cir. 2014) (discussing patent/trademark parallels in forum election and appeals)
- Steel Co. v. Citizens for a Better Environment, 523 U.S. 83 (U.S. 1998) (subject‑matter jurisdiction is threshold issue)
- Sucampo Pharmaceuticals, Inc. v. Astellas Pharma, Inc., 471 F.3d 544 (4th Cir. 2006) (jurisdictional principles)
- Bender v. Williamsport Area School District, 475 U.S. 534 (U.S. 1986) (federal courts have only statutory and constitutional jurisdiction)