SNYDER‘S-LANCE, INC.; PRINCETON VANGUARD, LLC v. FRITO-LAY NORTH AMERICA, INC.
No. 19-2316
UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT
March 17, 2021
PUBLISHED. Argued: January 28, 2021. Appeal from the United States District Court for the Western District of North Carolina, at Charlotte. Kenneth D. Bell, District Judge. (3:17-cv-00652-KDB-DSC)
Before NIEMEYER, WYNN, and FLOYD, Circuit Judges.
Reversed and remanded by published opinion. Judge Wynn wrote the opinion, in which Judge Niemeyer and Judge Floyd joined.
ARGUED: Paul D. Clement, KIRKLAND & ELLIS LLP, Washington, D.C., for Appellants. William G. Barber, PIRKEY BARBER PLLC, Austin, Texas, for Appellee. ON BRIEF: David H. Bernstein, James J. Pastore, DEBEVOISE & PLIMPTON LLP, New York, New York; George W. Hicks, Jr., Julie M.K. Siegal, KIRKLAND & ELLIS LLP, Washington, D.C., for Appellants. David E. Armendariz, PIRKEY BARBER PLLC, Austin, Texas, for Appellee.
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 (“Trademark Board“) to the Federal
The district court answered this question in the negative and dismissed the case for lack of jurisdiction. But we reach a different conclusion. In this matter of first impression for our Circuit, we join our sister circuits that have considered this question and hold that a district court may review a subsequent decision of the Trademark Board in such circumstances.
Accordingly, we reverse the district court‘s judgment dismissing the case for lack of subject matter jurisdiction and remand for further proceedings.
I.
The Lanham Act is the United States’ federal trademark law. Under the Lanham Act, trademarks that are “distinctive“—“those that are arbitrary (‘Camel’ cigarettes), fanciful (‘Kodak’ film), or suggestive (‘Tide’ laundry detergent)“—are entitled to the “valuable benefits” of registration on the principal register. U.S. Pat. & Trademark Off. v. Booking.com B. V., 140 S. Ct. 2298, 2302 (2020) (most internal quotation marks omitted). These benefits include “a presumption that the mark is valid.” Id.
By contrast, trademarks that are merely “descriptive“—such as “‘Park ‘N Fly’ airport parking“—generally may only be registered on the supplemental register, which “accords more modest benefits.” Id. (citing Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 718 F.2d 327, 331 (9th Cir. 1983), rev‘d on other grounds, 469 U.S. 189 (1985)). There is an exception for descriptive terms which have “acquired distinctiveness” by “achiev[ing] significance in the minds of the public as identifying the applicant‘s goods or services,” id. at 2303 (internal quotation marks omitted), such as “American Airlines,” OBX-Stock, Inc. v. Bicast, Inc., 558 F.3d 334, 340 (4th Cir. 2009) (capitalization modified). Such trademarks are eligible for registration on the principal register. Booking.com, 140 S. Ct. at 2303. Finally, generic terms are not eligible for registration on either register because “[t]he name of the good itself (e.g., ‘wine‘) is incapable of distinguishing one producer‘s goods from the goods of others.” Id. (alterations and most internal quotation marks omitted).
In 2004, Plaintiff Princeton Vanguard, LLC1 sought to register the mark “PRETZEL CRISPS” in reference to one of its products, flat pretzel crackers. The trademark examiner denied registration on the principal register as a distinctive mark but allowed registration on the supplemental register as a descriptive mark.
In 2009, Plaintiffs reapplied for registration on the principal register, believing that the mark had by that time acquired distinctiveness. However, Defendant Frito-Lay North America, Inc. opposed registration, arguing that “PRETZEL CRISPS” was “generic for pretzel crackers and thus . . . not registrable,” or alternatively, that it was “highly descriptive of a type of cracker product and has not acquired distinctiveness.” Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 963 (Fed. Cir. 2015). The dispute went before the Trademark Board, where the parties developed an extensive factual record before fact discovery closed in 2012. The Trademark Board sided with Defendant in 2014, concluding that “PRETZEL CRISPS” was generic. Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 109 U.S.P.Q.2d 1949, 1960 (T.T.A.B. 2014). It did not reach the acquired-distinctiveness question. Id. at 1960 n.13.
Plaintiffs then faced a choice. Under the Lanham Act, they could seek review of the Trademark Board‘s 2014 decision in either the Federal Circuit (pursuant to
If the appellant elects Federal Circuit review under
Plaintiffs opted for the
Accordingly, the case proceeded before the Federal Circuit, which agreed with Plaintiffs in 2015. The Federal Circuit concluded that the Trademark Board had “applied the incorrect legal standard in evaluating whether the mark [wa]s generic.” Princeton Vanguard, 786 F.3d at 962. Specifically, the court concluded the Trademark Board had erroneously evaluated the terms “PRETZEL” and “CRISPS” separately, rather than the complete phrase “PRETZEL CRISPS.” Id. at 969. Moreover, the court noted that the Trademark Board could not “disregard the results of survey evidence without explanation,” as its decision appeared to do. Id. at 970. Accordingly, the Federal Circuit “vacate[d] and remand[ed to the Trademark Board] for further proceedings.” Id. at 962.
On remand, in a 2017 decision, the Trademark Board again concluded that “PRETZEL CRISPS” was generic. Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 124 U.S.P.Q.2d 1184, 1204 (T.T.A.B. 2017). However, the Trademark Board also concluded, in the alternative, that “PRETZEL CRISPS” lacked acquired distinctiveness. Id. at 1206.
This time, Plaintiffs sought review of the Trademark Board‘s 2017 decision in federal district court pursuant to
The case proceeded for two years in district court. The parties cross-moved for summary judgment and introduced new
After considering the parties’ arguments, the court dismissed the case without prejudice for lack of subject matter jurisdiction. The court concluded that Plaintiffs’ initial election of the
II.
This Court “reviews a dismissal for lack of subject matter jurisdiction and questions of statutory interpretation de novo.” United States ex rel. Carson v. Manor Care, Inc., 851 F.3d 293, 302 (4th Cir. 2017).
III.
Under
In cases involving statutory interpretation, “we begin our analysis with the text of the governing statute[]. Only when statutory text is ambiguous do we consider ‘other indicia of congressional intent such as the legislative history.‘” Copley v. United States, 959 F.3d 118, 123 (4th Cir. 2020) (citation omitted) (quoting Lee v. Norfolk S. Ry. Co., 802 F.3d 626, 631 (4th Cir. 2015)).
We conclude that the statutory text of the Lanham Act, while ambiguous, favors Plaintiffs’ argument in favor of jurisdiction. This conclusion is further bolstered by legislative history, our sister circuits’ holdings in similar cases, and policy considerations. Accordingly, we hold that the district court erred in dismissing the case for lack of jurisdiction.
A.
The statutory text of the Lanham Act provides in relevant part that:
[(a)] An applicant for registration of a mark ... who is dissatisfied with the decision of the... [Trademark] Board, may appeal to the . . . Federal Circuit thereby waiving his right to proceed under subsection (b) of this section: Provided, That such appeal shall be dismissed if any adverse party to the proceeding . . . within twenty days after the appellant has filed notice of appeal . . ., files notice with the Director that he elects to have all further proceedings conducted as provided in subsection (b) of this section. Thereupon the appellant shall have thirty days thereafter within which to file a civil action under subsection (b) of this section, in default of which the decision appealed from shall govern the further proceedings in the case. . . .
[(b)] Whenever a person authorized by subsection (a) of this section to appeal to the . . . Federal Circuit . . . is dissatisfied with the decision of the ... [Trademark] Board, said person may, unless
appeal has been taken to . . . the Federal Circuit, have remedy by a civil action if commenced within such time after such decision, not less than sixty days, as the Director appoints or as provided in subsection (a) of this section.
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 avenue, 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 under
Additionally, the parties agree that issues decided by the Federal Circuit in its review cannot subsequently be relitigated. Plaintiffs acknowledged in briefing before the district court that the Federal Circuit‘s holding on certain points of law was binding as the law of the case. And beyond general law-of-the-case principles, this rule may be mandated by the statute itself, which provides that the Federal Circuit‘s “opinion . . . shall govern the further proceedings in the case.”2
way, a party may not take a second bite at the apple by seeking re-review in district court of issues already decided by the Federal Circuit.3
Further, the parties agree that the Trademark Board‘s decisions in 2014 and 2017 were unique “decisions.” While Defendant argues that the decisions were nearly identical, it agreed at oral argument that they were, indeed, separate decisions.
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 we find the statutory language somewhat ambiguous, we conclude that Plaintiffs have the better interpretation.
Admittedly, some aspects of the plain language appear to favor Defendant‘s interpretation of the statute. After all,
On closer inspection, however, Defendant‘s interpretation leads to difficulties. While the statute speaks of “waiving [one‘s] right” to district court proceedings and refers to an “appeal [that] has been taken” to the Federal Circuit, it says nothing about how long a choice of forum remains in effect, or whether it can bind a party across appeals from related, but distinct “decisions.”
Common sense, however, suggests that there must be some limitation. After all, in most circumstances, waivers apply only to the proceedings in question. Defendant wisely does not argue that the waiver applies for the rest of time, including in another proceeding altogether or regarding a different trademark. We think it plain that we must avoid an interpretation with such farcical results.
Perhaps unsurprisingly, then, both parties suggest that we read some implicit limitation into the literal language of the text. Defendant suggests the waiver is limited to “any subsequent decision in the same proceeding,” Response Br. at 19, whereas Plaintiffs argue the waiver applies “per decision, [but] not per case,” Opening Br. at 17 (internal quotation marks omitted). We think Plaintiffs’ reading is more persuasive.
To see why, consider the relevant sentences as a whole. Under Plaintiffs’ interpretation, the text of
This problem is even more apparent in
Defendant‘s interpretation is complicated even further when one considers the appellee‘s option to force district court review. Imagine Bob‘s Burgers loses before the Trademark Board and selects Federal Circuit review, and Shirley‘s Sandwiches does not object. The Federal Circuit reviews the case and remands. Bob‘s Burgers loses a second time before the Trademark Board, and again selects Federal Circuit review. This time, Shirley‘s Sandwiches would like to select district court review instead—as is its right—perhaps because it lost before the Federal Circuit the first time and thinks history is likely to repeat itself, or because some circumstance has changed to alter its calculus. Under the statute, Shirley‘s Sandwiches selects district court review by filing notice to that effect, at which point “the appellant [Bob‘s Burgers] shall have thirty days thereafter within which to file a civil action under subsection (b) of this section, in default of which the decision appealed from shall govern the further proceedings in the case.”
But, under the reading of
Accordingly, for Defendant‘s reading to work, we have to read even more language into
Further, Defendant‘s argument rests, in part, on interpreting
Specifically, in Defendant‘s view, if Congress merely aimed to make clear that the options were mutually exclusive for each Trademark Board decision, “then the language in subsection (a) providing that a party that appeals to the Federal Circuit ‘thereby waiv[es] his right to proceed under
Putting aside the contradiction in Defendant‘s interpretations, there is some appeal to this argument. After all, the fact that Congress used different terminology in the two subsections could well be significant.
But at least as plausible is the argument that the different language was simply necessitated by the structure of the statute: the choice of (a) waives the choice of (b); (b) may be chosen unless it has been waived by the choice of (a). And, to the extent “that this interpretation does not eliminate all superfluity between” the two sections, “there is a ready explanation for the redundancy that remains“: in a statute providing two different options for review, it makes sense that Congress reinforced the same idea by repeating it in each subsection. Lockhart v. United States, 136 S. Ct. 958, 966 (2016); see also United States v. Atl. Rsch. Corp., 551 U.S. 128, 137 (2007) (“[O]ur hesitancy to construe statutes to render language superfluous does not require us to avoid surplusage at all costs.“); N.H. Lottery Comm‘n v. Rosen, 986 F.3d 38, 60 (1st Cir. 2021) (“[W]hile avoiding surplusage is definitely preferred, avoiding surplusage at all costs is not, particularly where, as is the case here, syntax offers a good reason for why the qualifier was repeated[.]” (internal quotation marks and alterations omitted)); United States v. Enrique-Ascencio, 857 F.3d 668, 675 (5th Cir. 2017) (“[T]he surplusage canon ‘cannot always be dispositive because (as with most canons) the underlying proposition is not invariably true. Sometimes drafters do repeat themselves . . . .‘” (quoting Antonin Scalia & Bryan A. Garner, Reading Law: The Interpretation of Legal Texts 176–77 (1st ed. 2012))).
Further, the district court relied too heavily on the statute‘s use of the definite article to support its interpretation. The court concluded that, “by using the words ‘the decision’ instead of ‘a decision,’ the statute suggests that there is only one, rather than a possible series of decisions, to which the statutory choice between a Federal Circuit and a District Court appeal applies.” Princeton Vanguard, 414 F. Supp. 3d at 827.
That plainly cannot be right. If “the decision” necessarily refers only to the Trademark Board‘s first decision, there is no right to review of any subsequent decisions. See
To be clear, we do not understand the district court to have been asserting that there was no review right of subsequent Trademark Board decisions in any forum. We simply note that that would be the result of applying literally the district court‘s understanding of Congress‘s use of the definite article in this statute.
The district court also relied on
First, the plain language of
Second, the reference to “further proceedings in the case” makes clear that Congress knows how to refer to the whole case when it wants to—reinforcing that “the decision” refers to each individual Trademark Board decision and that the waiver applies only to any given decision, not to the full proceedings. See Tibbetts, 386 F.2d at 212 (“The statute speaks solely in terms of ‘decisions,’ not interferences or proceedings.” (quoting Tibbetts, 263 F. Supp. at 278)).
And third, the district court‘s interpretation—that
We think the better interpretation of
“doctrine applies as much to the decisions of a coordinate court in the same case as to a court‘s own decisions,” and collecting cases).
We conclude that the statutory language, while not free from ambiguity, supports Plaintiffs’ interpretation. And other sources of authority largely support that reading. We turn to those other sources next, beginning with legislative history.
B.
The parties do not cite, and research has not revealed, relevant legislative history for
In Hoover Co. v. Coe, the Supreme Court explained the origin of those parallel patent provisions. For many years, a party who lost in one of the Federal Circuit‘s predecessor courts could then seek a remedy
This legislative history does not directly speak to the question at hand: whether this choice—review by the Federal Circuit or a district court, “but not both“—can only be made once, or whether the option becomes newly available with each Trademark Board decision. However, it provides context for why the statute includes the waiver language at all. After all, even in the face of the elements of the plain language that favor Plaintiffs’ interpretation, a reasonable reader might wonder why Congress bothered with waiver language if the choice could be made anew after each decision. Why did Congress not simply use “either / or” language and call it a day?
This legislative history provides the answer. Given the historical backdrop—in which the options were not mutually exclusive—Congress wanted to make abundantly clear that the choice of one path of review of a decision of the Trademark Board precluded the other.
For that reason, while the legislative history does not directly support either party‘s interpretation, we conclude that it indirectly lends support to Plaintiffs’ reading.
C.
We are further persuaded to adopt Plaintiffs’ reading because it is in accord with that of our only two sister circuits to have considered the issue, the Seventh and Ninth.
In Tibbetts Industries v. Knowles Electronics, the Seventh Circuit confronted a similar situation in the patent context. Plaintiff George Tibbetts and defendant Hugh Knowles each filed for patents related to the same idea. Tibbetts, 386 F.2d at 210. The Board of Patent Interferences (“Patent Board“)9 awarded Tibbetts priority
The Court of Customs and Patent Appeals reversed the Patent Board on one issue and remanded on another. This time, on remand, the Patent Board awarded priority to Knowles. Id.
Tibbetts then sought review of the Patent Board‘s second decision in district court. Knowles “filed an emergency motion” in the Court of Customs and Patent Appeals “asking that court to confirm its sole jurisdiction in th[e] matter,” which that court “summarily denied.” Id. at 211. Knowles then moved the district court to dismiss the case for lack of jurisdiction, arguing that “Tibbetts waived his right to institute the present action by filing a notice of appeal [to the Court of Customs and Patent Appeals] from the first decision.” Id. The district court, too, denied the motion but certified the issue for appeal under
The Seventh Circuit concluded that the issue resolved by the Court of Customs and Patent Appeals had been “finally determined,” and therefore that issue was “no longer before” the Seventh Circuit. Id. But as to the remanded issue, the question was “whether, when the [Patent] Board makes two separate decisions at different times involving different issues, a waiver of a [district court] suit as to the first [Patent] Board decision constitutes a waiver as to the second decision as well.” Id. at 212 (quoting Tibbetts, 263 F. Supp. at 278). The Seventh Circuit held it did not.
Reviewing the statutory text in the patent context—which, as noted, is quite similar to
Moreover, the Seventh Circuit pointed out that “[t]he legislative history favors Tibbetts’ right to sue here” because “[t]he purpose of requiring an election of remedies was to foreclose redundant appeals“—appeals of the same decision in different forums—not to prevent appeals of subsequent decisions in different forums. Id. (quoting Tibbetts, 263 F. Supp. at 278 (citing Hoover Co., 325 U.S. at 86–87)). In other words, “[p]ermitting Tibbetts to sue here on the [Patent] Board‘s second decision does not proliferate appeals since there is certainly a right to one more appeal in this case in some forum.” Id. (quoting Tibbetts, 263 F. Supp. at 278).
The Seventh Circuit also held that policy considerations favored Tibbetts’ interpretation of the statute. Because “Tibbetts’ need for this forum became clear only later, after the [Patent] Board‘s second decision[,] such a need could not have been discerned, except in pure prophecy, prior to that time. It is unreasonable to attribute to Congress the intention to force a litigant to make his choice not only on the basis of present facts, but on uncertain future ones as well.” Id. (quoting Tibbetts, 263 F. Supp. at 278). Accordingly, the Seventh Circuit concluded, “[t]he statute cannot
Defendant argues that Tibbetts is inapposite because the party seeking district court review (Tibbetts) was the Patent Board winner when the original election of Federal Circuit review was made, whereas here, Plaintiffs have lost both times before the Trademark Board. But nothing in the Tibbetts analysis rested on that point. The Seventh Circuit mentioned those facts as an explanation for why Tibbetts did not initially see a need for pursuing district court review, but the court‘s actual legal analysis rested on the statutory language, legislative history, and policy considerations.
Defendant further argues that which party won before the Trademark Board at each step matters because under
This argument is unpersuasive for two related reasons. First, as noted, Tibbetts also appealed to the Court of Customs and Patent Appeals, so, under Defendant‘s reading of the statute, the “waiver” language in the
A few years later, in Gillette Co. v. “42” Products Ltd., the Ninth Circuit confronted a very similar situation in the trademark context.11 Gillette, 435 F.2d 1114. A company called “42” Products sought to register a mark. Gillette opposed registration. The Trademark Board dismissed Gillette‘s opposition, and Gillette appealed to the Court of Customs and Patent Appeals. That court concluded that the Trademark Board had erred and remanded. This time, the Trademark Board found in favor of Gillette. “42” then filed an action in district court. Id. at 1115. Gillette moved to dismiss for lack of jurisdiction. As in Tibbetts, the district court denied the motion, but certified the issue for appeal under
Before the Ninth Circuit, “Gillette argue[d] that because ‘42’ did not elect a civil action when Gillette was the dissatisfied party taking an appeal to the [Court of Customs and Patent Appeals], appellee ‘42’
The Ninth Circuit concluded that “42” had the better interpretation of the “bare statutory language,” although it was “not conclusive.” Id. Moreover, “42” had Tibbetts on its side. And the court noted that while Gillette cited various cases for the proposition “that once an election is made, the alternative remedy is waived,” none of those cases went “so far as to stand for the principle that the dissatisfied party cannot elect the other tribunal in an appeal from a second and later decision.” Id. Rather, “[t]he cited cases only teach that the two remedies are intended to be alternative and not successive. Once the dissatisfied party has chosen a path of appeal from a particular decision, he cannot seek to pursue the other.” Id. (emphasis added).
The Ninth Circuit was careful to note that “[t]his interpretation fully protects the integrity of the earlier decision of the [Court of Customs and Patent Appeals]. The district court must and will recognize that the [Court of Customs and Patent Appeals‘] opinion foreclosed all points which it decided.” Id. at 1117. And the court further recognized that this interpretation would satisfy the statutory requirement that the Federal Circuit‘s decision “shall govern the further proceedings in the case.”
Defendant argues that Gillette is inapposite because, like in Tibbetts, the party seeking district court review was the winner before the Trademark Board when the original election of Federal Circuit review was made. The district court below agreed. Princeton Vanguard, 414 F. Supp. 3d at 829. But again, we do not read the Gillette analysis to have rested on that point. As the Seventh Circuit had in Tibbetts, the Ninth Circuit mentioned those facts as an explanation for why “42” did not initially see a need for pursuing district court review. But its analysis hinged instead on the statutory language, Tibbetts, and legislative history, all of which supported jurisdiction. See Gillette, 435 F.2d at 1116–18.
Against this significant authority, Defendant has produced only dicta from a single, out-of-circuit district court decision. In Beaudet v. Quigg, plaintiff Leo Beaudet applied for a patent. Beaudet v. Quigg, No. Civ. A. 86-2876, 1987 WL 16329, at *1 (D.D.C. Aug. 14, 1987). The patent examiner rejected the application. Beaudet appealed to the Patent Board, which upheld the examiner‘s decision. Beaudet then appealed to the Federal Circuit, which remanded to the Patent Board “for clarification.” Id. The Patent Board issued the clarifying opinion, at which point Beaudet sought review in district court.
The Commissioner of Patents and Trademarks moved to dismiss for lack of jurisdiction. The district court agreed, concluding that “the [Patent] Board‘s clarification opinion” was not “a second, distinct ‘decision‘” because the Federal Circuit “did not direct the [Patent] Board to conduct any further proceedings or provide any additional support for its decision,” and instead “merely asked the [Patent] Board to clarify ambiguous language so that the basis for its decision could be fully understood.” Id. Accordingly, the Patent Board had not issued a new decision, and the Federal Circuit had not surrendered
In footnoted dicta, the Beaudet court went on to muse that, “[i]ndeed, the statutory language involved casts doubt on whether, under any circumstances, there can be multiple ‘decisions’ on an applicant‘s appeal of the rejection of a particular application.” Id. at *1 n.2. The court noted that the statute referred to “the” decision, not “a” decision, and drew from this the puzzling inference that “the [Patent] Board‘s initial affirmance of an examiner‘s decision . . ., as well as any subsequent reconsideration, should be considered a single decision of the [Patent] Board.” Id. We find that counterintuitive reading of the plain language of the statute to be quite a stretch from the mere use of the definite article.
Moreover, on that shaky basis alone (and without acknowledging Tibbetts or Gillette), the Beaudet court deduced a general “rule that when the Federal Circuit reverses a decision of the [Patent] Board and remands for further proceedings, any subsequent appeals must be directed to the court which has already developed the ‘law of the case.‘” Id.
We disagree. Even if the Beaudet court was correct that the Federal Circuit could retain appellate jurisdiction, thereby rendering the first and second decisions one single decision—a question we need not reach—there is no doubt that the Federal Circuit did not retain jurisdiction here. True, its opinion might be read to evince a vague assumption that the case would return to it in the future. E.g., Princeton Vanguard, 786 F.3d at 970 (“Our review under [the substantial evidence] standard can only take place when the agency explains its decisions with sufficient precision, including the underlying factfindings and the agency‘s rationale.” (internal quotation marks omitted)). But that is not the same as deliberately retaining appellate jurisdiction. The second decision by the Trademark Board here is plainly a separate decision, as Defendant concedes. See Oral Arg. at 36:25–28.
We do not find this conclusion compelling when its questionable underpinnings are stacked up against the plain language, legislative history, and case law favoring Plaintiffs’ position. Rather, we are persuaded to join our sister circuits in holding that each separate “decision” by the Trademark Board affords the parties a new opportunity to choose between the review options presented in
D.
Finally, we turn to policy considerations.13 We agree with our sister circuits that such considerations favor Plaintiffs’ view of the statute.
As the Seventh Circuit noted, in cases such as this one, a party‘s “need for [district court review] [may] bec[o]me clear only later, after the [reviewing] Board‘s second decision.” Tibbetts, 386 F.2d at 212.
Plaintiffs’ interpretation furthers this principle by allowing the parties to reassess the review options after each Trademark Board decision.
For its part, the district court‘s decision appears to have rested in part on concerns about judicial economy. We do not find this view persuasive.
First, the district court noted that the Federal Circuit has “extensive expertise” in the area of trademark law. Princeton Vanguard, 414 F. Supp. 3d at 829; see also id. at 830 (noting that the Federal Circuit is “ideally fitted by its expertise and experience for a complete decision in this matter” (quoting Gillette, 435 F.2d at 1120 (Carter, J., dissenting))). That is certainly true. Yet Congress, in its policy judgment, has unambiguously allowed for district court review in at least some instances. So the Federal Circuit‘s expertise, while undeniable, cannot tip the scales in our analysis.
Second, the district court concluded that “[t]he Federal Circuit, rather than this Court, is far better suited . . . to determine if the [Trademark Board] has faithfully followed its earlier ruling.” Id. at 829. But, as noted, federal courts are perfectly capable of applying the law of the case doctrine. Of course, federal appellate judges are occasionally brought into cases that are already underway and must apply the earlier decisions within that case of panels on which they did not sit. Sometimes they must even apply decisions within the same case from other circuits. See Christianson, 486 U.S. at 816 (collecting cases). Indeed, it is hard to see how this is any different from applying Supreme Court or circuit precedent to a new set of circumstances, which, of course, all federal courts do routinely.
Finally, the district court found that “[a]llowing Plaintiffs—having already voluntarily chosen to proceed in the Federal Circuit—to appeal de novo to this Court . . . would be wasteful in terms of judicial economy.” Princeton Vanguard, 414 F. Supp. 3d at 830. But judicial economy actually favors Plaintiffs’ view. After all, as Plaintiffs note, if an appellant can only ever obtain the benefits of district court review by choosing it initially, their counsel may feel obligated to pursue that route most of the time so as not to foreclose the possibility of being able to further develop the record in light of the precarity of future events—even in the face of the drawbacks of that form of review.
An interpretation of the statute that encourages parties to choose district court review of all Trademark Board decisions would counteract congressional intent. As this Court has noted, ”
IV.
For the above reasons, we conclude that the waiver language in
REVERSED AND REMANDED