Snyder's-Lance, Inc. v. Frito-Lay North America, Inc. ( 2021 )

PUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
No. 19-2316
SNYDER’S-LANCE, INC.; PRINCETON VANGUARD, LLC,
Plaintiffs - Appellants,
v.
FRITO-LAY NORTH AMERICA, INC.,
Defendant - Appellee.
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)
Argued: January 28, 2021 Decided: March 17, 2021
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.
WYNN, Circuit Judge:
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 Circuit may, after
vacatur and remand by the Federal Circuit and the issuance of a new decision by the
Trademark Board, seek review of that second decision in federal district court.
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
2
“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, LLC 1 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,
1
Co-Plaintiff Snyder’s-Lance, Inc., acquired Princeton Vanguard, LLC in 2012.
3
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 (BNA) 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 15 U.S.C.
§ 1071(a)) or a district court (pursuant to § 1071(b)). The two paths have distinctive
features. The Federal Circuit path generally provides for faster resolution of the appeal and
restricts the record to that developed before the Trademark Board. See 15 U.S.C.
§ 1071(a)(4). Additionally, the Federal Circuit “review[s] the [Trademark] Board’s factual
findings for substantial evidence.” In re St. Helena Hosp., 774 F.3d 747, 750 (Fed. Cir.
2014). By contrast, the district court path allows for additional development of the record
and de novo review—but it opens the appellant up to counterclaims by the other party. See
B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 144 (2015); 3 J. Thomas
McCarthy, Trademarks and Unfair Competition § 21:20 (5th ed. 2020 & Supp. 2021).
If the appellant elects Federal Circuit review under § 1071(a), the appellee can
choose instead to have the case proceed in district court pursuant to § 1071(b). See 15
U.S.C. § 1071(a)(1). But the reverse is not true. In other words, either party can force
selection of § 1071(b) (district court) review, but neither can force selection of § 1071(a)
4
(Federal Circuit) review. Federal Circuit review occurs only when the appellant selects it
and the appellee acquiesces in that selection.
Plaintiffs opted for the § 1071(a) route and appealed the Trademark Board’s 2014
decision to the Federal Circuit. They assert that they made this choice because they wished
to raise only a legal issue and believed the Federal Circuit would be the more efficient
route. Defendant did not elect to force § 1071(b) review in district court instead.
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 (BNA) 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 § 1071(b). They assert that they opted for district court
5
review of the Trademark Board’s second decision because they wished to expand the
record to include additional evidence of acquired distinctiveness that had arisen in the
intervening years—something they could only do in district court.
The case proceeded for two years in district court. The parties cross-moved for
summary judgment and introduced new evidence. But before the district court could rule
on the motions, the case was reassigned to a different judge. The court then raised for the
first time the question of whether it had jurisdiction to review the Trademark Board’s 2017
decision in light of Plaintiffs’ earlier election of Federal Circuit review of the Trademark
Board’s 2014 decision. The parties briefed the issue, with Plaintiffs arguing for jurisdiction
and Defendant arguing against.
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 § 1071(a) path meant that they could only appeal subsequent decisions by
the Trademark Board to the Federal Circuit. Princeton Vanguard, LLC v. Frito-Lay N. Am.,
Inc., 414 F. Supp. 3d 822, 824 (W.D.N.C. 2019). This appeal followed.
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 28 U.S.C. § 1295, “the Federal Circuit shall have exclusive jurisdiction” of
appeals from decisions of the Trademark Board. 28 U.S.C. § 1295(a)(4)(B). Accordingly,
6
the question of whether § 1071(b) applies—thus modifying § 1295’s otherwise bright-line
rule and permitting review by the district court—implicates our jurisdiction and that of the
court below.
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.
....
7
[(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.
15 U.S.C. § 1071(a)(1), (b)(1).
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 § 1071(a).
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 Id. § 1071(a)(4); see Gillette Co. v. “42” Prods. Ltd.,
435 F.2d 1114, 1117 (9th Cir. 1970) (interpreting § 1071(a)(4) in this way). Put another
2
Plaintiffs suggest that this provision may apply solely to bind the Trademark
Board, not other federal courts. See Opening Br. at 37; Oral Arg. at 18:29–57; cf. Hoover
Co. v. Coe, 325 U.S. 79, 83 (1945) (appearing to endorse this interpretation in the patent
context). We need not decide this question for purposes of this appeal.
8
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, § 1071(a) instructs that when a party elects to appeal
to the Federal Circuit, that party “thereby waiv[es] his right to proceed under subsection
(b) of this section.” 15 U.S.C. § 1071(a)(1). Moreover, § 1071(b) provides that a party
3
The district court concluded that “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
in this Court.” Princeton Vanguard, 414 F. Supp. 3d at 830. Similarly, Defendant argues
that “allowing Princeton Vanguard to pursue its appeal in district court would give it
multiple bites at the same apple.” Response Br. at 26–27. This argument misunderstands
the nature of this case. Plaintiffs may not—as they acknowledge—seek reconsideration of
the Federal Circuit’s original decision, which acts as the law of the case. Nor may they now
seek review of the Trademark Board’s original decision; the Federal Circuit already
reviewed it. They seek only to choose a different venue for review of the unresolved aspects
of the new decision. There is no second bite at the apple.
9
dissatisfied with a Trademark Board decision “may, unless appeal has been taken to . . .
the Federal Circuit, have remedy by a civil action.” Id. § 1071(b)(1). At first blush, that
language suggests that where a party selects Federal Circuit review, it may not then select
district court review. 4
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
4
One interesting question is what would happen if a party first selected district court
review, and later sought Federal Circuit review. The statutory language is silent on this
issue. Defendant suggested at oral argument that such a situation could never arise, as the
case would not return to the Trademark Board from the district court, and accordingly there
would never be a subsequent Trademark Board decision to appeal to the Federal Circuit.
Oral Arg. at 28:00–29:55. There is some statutory language to support that view. See 15
U.S.C. § 1071(b)(1). But see In Re Booking.com B.V., No. 79122365, 2017 WL 6033941,
at *1 (T.T.A.B. Nov. 16, 2017) (on remand from district court). In any event, this question
is not before us in this appeal.
10
“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 § 1071(a)(1) indicates that a party “dissatisfied with the
[Trademark Board’s] decision . . . may appeal [that decision] to the . . . Federal Circuit
thereby waiving his right to proceed under subsection (b) [for that decision].” By contrast,
according to Defendant, a party “dissatisfied with the [Trademark Board’s] decision . . .
may appeal [that decision] to the . . . Federal Circuit thereby waiving his right to proceed
under subsection (b) [for that and all future decisions in the same proceeding].” Plaintiffs’
interpretation carries the same meaning forward throughout the sentence; Defendant asks
us to switch gears halfway through. We think it plain that the former is preferable. See
Tibbetts Indus., Inc. v. Knowles Elecs., Inc., 386 F.2d 209, 212 (7th Cir. 1967) (“No
violence is done to [a similar patent-law statute] by reading the word ‘decision’ to refer to
every independent adjudication made by the Board [of Patent Interferences].” (quoting
Tibbetts Indus., Inc. v. Knowles Elecs., Inc., 263 F. Supp. 275, 278 (N.D. Ill. 1966))); cf.
IBP, Inc. v. Alvarez, 546 U.S. 21, 34 (2005) (noting that “identical words used in different
parts of the same statute are generally presumed to have the same meaning”).
This problem is even more apparent in § 1071(b)(1). According to Plaintiffs, a party
“dissatisfied with the decision” of the Trademark Board “may, unless appeal [of that
decision] has been taken to” the Federal Circuit, pursue a remedy in district court, as long
as the action is “commenced within [a certain] time after such decision.” But per Defendant
11
and the district court, a party “dissatisfied with the decision” of the Trademark Board “may,
unless appeal [of that or any earlier decision in the same proceeding] has [ever] been taken
to” the Federal Circuit, pursue a remedy in district court, as long as the action is
“commenced within [a certain] time after [this particular] decision.” This interpretation
asks the reader to switch back and forth between meanings twice in a single sentence.
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.” 15 U.S.C. § 1071(a)(1).
But, under the reading of § 1071(b)(1) favored by Defendant and the district court,
Bob’s Burgers cannot “file a civil action under subsection (b)” because “appeal has been
taken” to the Federal Circuit. Defendant rejects this interpretation, arguing that the statute
“explicitly provides authorization for the original dissatisfied party [Bob’s Burgers] to file
a civil action in that situation.” Response Br. at 23. True, § 1071(a)(1) provides that
12
authorization—but § 1071(b)(1) does not. And § 1071(a)(1) does not provide standalone
authorization; rather, it allows the appellant “to file a civil action under subsection (b).” 15
U.S.C. § 1071(a)(1) (emphasis added).
Accordingly, for Defendant’s reading to work, we have to read even more language
into § 1071(b)(1). The tortured result: a party “dissatisfied with the decision” of the
Trademark Board “may, unless appeal [of that or any earlier decision in the same
proceeding] has [ever] been taken to” the Federal Circuit (except that such prior appeal
does not act as a bar if the appellee has exercised its right for district court review under
§ 1071(a)(1)), pursue a remedy in district court, as long as the action is “commenced within
[a certain] time after [this particular] decision.”
Further, Defendant’s argument rests, in part, on interpreting § 1071(b)(1)’s “unless
appeal has been taken” language to apply to different decisions across time in the same
way that, in its view, § 1071(a)(1)’s waiver language applies across time. See Response Br.
at 20, 23, 43; Oral Arg. at 38:54–39:21; see also Princeton Vanguard, 414 F. Supp. 3d at
827 (district court taking this view). Yet Defendant simultaneously takes the contradictory
stance that its interpretation is the better one because it avoids rendering part of the statute
superfluous—an argument that rests on interpreting the relevant waiver language in the
two subsections differently.
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 subsection (b)’ would be mere surplusage.” Response Br. at 18
13
(alteration in original). Defendant’s argument appears to be that the “waiver” language in
subsection (a) is broader than the “appeal has been taken” language in subsection (b), with
the latter being sufficient to establish mutual exclusivity of the options for each decision,
and the former being required to establish that the choice of Federal Circuit review waives
district court review throughout the proceedings. See Oral Arg. at 23:57–27:15.
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
14
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 15 U.S.C. § 1071(a)(1) (a party “dissatisfied with the decision” of the Trademark Board
may appeal to the Federal Circuit (emphasis added)); id. § 1071(b)(1) (a party “dissatisfied
with the decision” of the Trademark Board may “have remedy by a civil action” (emphasis
added)). Yet the statutory text—not to mention common sense—makes clear that parties
may seek review of multiple Trademark Board decisions. See id. § 1071(b)(1) (“Whenever
a[n authorized] person . . . 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 . . . .” (emphases added)); Hoover Co. v. Coe, 325 U.S. 79, 84 (1945) (noting
that, in the parallel patent provision, the use of the word “[w]henever” “states a case where
the examiner’s decision may be only one of a series of rulings in the Patent Office prior to
issue of a patent”); see also 15 U.S.C. § 1071(a)(2) (“[W]hen an appeal is taken to the . . .
Federal Circuit, the appellant shall file . . . a written notice of appeal . . . within such time
15
after the date of the decision from which the appeal is taken as the Director prescribes, but
in no case less than 60 days after that date.” (emphasis added)). We cannot ignore these
other statutory provisions in seeking to understand the relevant text. See Sijapati v. Boente,
848 F.3d 210, 215 (4th Cir. 2017) (“[I]n construing the statute’s plain language, we must
consider the context in which the statutory words are used because we do not construe
statutory phrases in isolation; we read statutes as a whole.” (internal quotation marks and
alterations omitted)).
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 § 1071(a)(4). As noted, that subsection provides
that, where the option of Federal Circuit review is selected, the Federal Circuit must review
the case and, “[u]pon its determination[,] the court shall issue its mandate and opinion . . . ,
which shall . . . govern the further proceedings in the case.” 15 U.S.C. § 1071(a)(4). The
district court found that this provision requires that if Federal Circuit review has once
occurred, a district court may not review the case, concluding that this was “[t]he only
interpretation of the statute that gives full effect to the mandated primacy of a Federal
Circuit opinion under § 1071(a)(4), and avoids the conflict of one Court of Appeals being
‘bound’ by the decision of another Court of Appeals in an appeal from one of its District
Courts.” Princeton Vanguard, 414 F. Supp. 3d at 827–28. We disagree.
16
First, the plain language of § 1071(a)(4) may actually cut the other way: there would
be no reason to specify that the Federal Circuit’s decision would “govern the further
proceedings in the case” if all future appeals would, of necessity, be returning to the Federal
Circuit. 5
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 § 1071(a)(4) means that the
Federal Circuit, having once reviewed the case, must hear all future appeals in the
proceedings—would eliminate the right of the winner before the Trademark Board to elect
proceedings before the district court if the initial review had been before the Federal
Circuit. To return to our earlier example, if Shirley’s Sandwiches won against Bob’s
Burgers before the Trademark Board and Bob’s Burgers appealed to the Federal Circuit,
then Shirley’s Sandwiches’ choice not to force district court review of that first decision
would forever bind it to Federal Circuit review of future decisions—even if it continued to
win before the Trademark Board. Yet the waiver in § 1071(a)(1)—the same subsection as
5
That is, unless this provision is directed only at the Trademark Board. See supra
note 2.
17
the “further proceedings” language of § 1071(a)(4)—refers only to a waiver made by the
aggrieved party. 6 See 15 U.S.C. § 1071(a)(1) (party dissatisfied with Trademark Board’s
decision may appeal to Federal Circuit, “thereby waiving his right to proceed under
subsection (b)” (emphasis added)). And, other than deadlines, § 1071(a)(1) does not
contain any limiting language on the appellee’s right to force district court review.
We think the better interpretation of § 1071(a)(4), to the extent it is relevant at all, 7
is that it incorporates a strict version of the “law of the case” rule in the event that the
Federal Circuit renders a decision and, later, the case comes before a different circuit
court. 8 Again, the parties do not dispute that the Federal Circuit’s earlier decision in this
case is binding as to the issues it decided. And, of course, it is not unheard of for one
appellate court to need to apply another’s prior decision as the law of the case. E.g.,
Christianson v. Colt Indus. Operating Corp., 486 U.S. 800, 816 (1988) (noting, in a case
involving decisions by both the Seventh and Federal Circuits, that the law of the case
6
Admittedly, the waiver language in § 1071(b)(1) is not so limited. See § 1071(b)(1)
(district court review permitted “unless appeal has been taken to” the Federal Circuit). But
the right of the appellee to force district court review is given in § 1071(a)(1), so the
appropriate waiver language to consider is that in that same subsection.
7
See supra note 2.
8
By itself, the law of the case doctrine is “‘discretionary’ rather than ‘mandatory,’
and admits of a variety of exceptions.” Owens v. Stirling, 967 F.3d 396, 425 (4th Cir. 2020)
(quoting CNF Constructors, Inc. v. Donohoe Constr. Co., 57 F.3d 395, 397 n.1 (4th Cir.
1995)). By contrast, the use of the word “shall” in § 1071(a)(4) indicates that its limitation
is mandatory.
18
“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 § 1071 itself. However, § 1071 originally “incorporated by reference the procedures for
appellate review of patent application denials,” and Congress later “eliminated the cross-
reference” to the patent statute “and, in its place, added . . . language substantially similar
to the language pertaining to the procedures for review of patent denials.” Shammas v.
Focarino, 784 F.3d 219, 226–27 (4th Cir. 2015) (internal quotation marks and alterations
omitted); see B & B Hardware, 575 U.S. at 144 (describing the patent-law scheme as
“analogous”). For that reason, this Court has looked to the legislative history of the patent
provisions, 35 U.S.C. §§ 141 and 145, for insight into Congress’s intent in enacting § 1071.
E.g., Shammas, 784 F.3d at 226–27; cf. Swatch AG v. Beehive Wholesale, LLC, 739 F.3d
150, 155 (4th Cir. 2014) (in a case involving § 1071(b), relying on Supreme Court
precedent interpreting the patent statute).
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 for the same decision in district court. 325
U.S. at 84–88. But in the hearings for a 1927 act of Congress that created the modern
19
structure, see Act of Mar. 2, 1927, ch. 273, 44 Stat. 1335, 1336, “it was proposed that
Congress eliminate either the appeal or the bill in equity,” with “some interested parties”
suggesting dropping one or the other remedy. Hoover Co., 325 U.S. at 86–87. Ultimately,
“Congress decided not to do away with either, but to allow an applicant to have the decision
of the Patent Office reviewed either by the court of appeals or by filing a bill in equity, but
not both.” Id. at 87 (internal quotation marks omitted).
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.
20
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 of invention, and
Knowles appealed to the Court of Customs and Patent Appeals (the Federal Circuit’s
predecessor). Id. Tibbetts, too, “filed a protective appeal seeking affirmance and preserving
alternate grounds for affirmance.” Id.
9
The Board of Patent Appeals and Interferences was the predecessor to the modern
Patent Trial and Appeals Board. Immunex Corp. v. Sandoz Inc., 964 F.3d 1049, 1058 (Fed.
Cir. 2020). The Patent Board plays a role in patent proceedings similar to that played by
the Trademark Board in trademark proceedings. Patent applications are first reviewed by
patent examiners, just as trademark registration applications are initially reviewed by
trademark examiners. See Kappos v. Hyatt, 566 U.S. 431, 434 (2012) (patents); B & B
Hardware, 575 U.S. at 143 (trademarks). Denied applications may be appealed to the
Patent Board or Trademark Board, respectively. See Kappos, 566 U.S. at 434 (Patent
Board); 3 McCarthy, supra, § 21:1 (Trademark Board). Similarly, disgruntled third parties
may dispute a granted application before either the Patent Board or Trademark Board. See
Thryv, Inc v. Click-To-Call Techs., LP, 140 S. Ct. 1367, 1370 (2020) (“Inter partes review
is an administrative process in which a patent challenger may ask the U.S. Patent and
Trademark Office . . . to reconsider the validity of earlier granted patent claims.”); B & B
Hardware, 575 U.S. at 143 (“If a trademark examiner believes that registration is
warranted, the mark is published in the Official Gazette of the [Patent and Trademark
Office]. At that point, any person who believes that he would be damaged by the
registration may file an opposition.” (citations, internal quotation marks, and alterations
omitted)). A party dissatisfied with the result before either the Patent Board or Trademark
Board has the same options for review at issue in this appeal: Federal Circuit review or
district court review. See Kappos, 566 U.S. at 434 (discussing review options for Patent
Board decision).
21
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 28
U.S.C. § 1292(b).
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 § 1071—the Seventh Circuit concluded that “[t]he statutory language does not preclude
and slightly favors Tibbetts’ right to sue here” because “[n]o violence is done to [the
statute] by reading the word ‘decision’ to refer to every independent adjudication made by
22
the [Patent] Board,” and “[i]t can hardly be debated that the [Patent] Board made two
‘decisions’ in this case.” Id. (quoting Tibbetts, 263 F. Supp. at 278).
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 be read to give a waiver made in one
set of circumstances on one decision, binding effect in new, radically different
circumstances on another decision.” 10 Id. (quoting Tibbetts, 263 F. Supp. at 278).
10
Indeed, as in our case, the Seventh Circuit noted that “it appears that Tibbetts may
have need to resort to evidence now relevant in a de novo hearing in the district court and
could not make such showing on appeal on a closed record in the [Court of Customs and
23
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 § 1071(a), a party selecting Federal Circuit review waives “his
right” to proceed before the district court. Accordingly, “[b]ecause the waiver explicitly
applies to the appellant and not to the appellee,” the Seventh Circuit’s decision in Tibbetts
“is entirely consistent with the text of Section 1071.” Response Br. at 41–42. That is, in
Defendant’s view, only Knowles waived district court review when Knowles appealed to
the Court of Customs and Patent Appeals.
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 § 1071(a) parallel provision should have applied to
him as well. See Tibbetts, 386 F.2d at 211 (citing 28 U.S.C. § 1542 (1964)). And second,
under the patent provision parallel to § 1071(b), a party dissatisfied with the decision of
Patent Appeals]. What may be readily apparent now was not apparent prior to the second
decision of the [Patent] Board.” Tibbetts, 386 F.2d at 213.
24
the Patent Board could file suit in district court “unless he has appealed to the United States
Court of Customs and Patent Appeals.” Id. (emphasis added) (quoting 35 U.S.C. § 146
(1964)). Again, Tibbetts had appealed to that court. Id. at 210. Nevertheless, the Seventh
Circuit concluded that the language created a waiver only for each individual decision.
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
§ 1292(b). Id. at 1114–15.
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’ waived its right to bring a civil action in all further
proceedings in this trademark registration dispute.” Id. at 1115. “42” responded that “its
earlier election was binding only as to the appeal from the first [Trademark Board]
decision, and that it did not waive its right to make an election by appealing, when it was
first a dissatisfied party, from the second [Trademark Board] decision.” Id. at 1116.
11
The language of the relevant provisions of § 1071 was substantively the same at
the time of Gillette as it is now.
25
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.” 15 U.S.C. § 1071(a)(4); see
Gillette, 435 F.2d at 1117.
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
26
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
appellate jurisdiction. 12
12
The district court below concluded that Beaudet was directly on point because
here, “the Federal Circuit plainly envisioned that it would be reviewing the case again after
remand.” Princeton Vanguard, 414 F. Supp. 3d. at 825. Thus, “[w]hile Beaudet might
arguably be distinguished . . . because [in Beaudet] the Federal Circuit only asked the
[Patent] Board for clarification (rather than[, as here,] ordering a reconsideration [by the
Trademark Board] under a different legal standard), the Federal Circuit in this case as
in Beaudet expressed its intention to reach the full merits of the appeal after remand.” Id.
27
 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.
at 828 n.10. But see Gillette, 435 F.2d at 1118, 1120 (majority finding jurisdiction to be
appropriate in the district court over dissent’s objection that the Court of Customs and
Patent Appeals had “impliedly” retained jurisdiction (emphasis added)).
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.
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 § 1071.
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. Indeed, Plaintiffs provide a ready explanation for why
Federal Circuit review made sense initially and district court review made sense following
the Trademark Board’s second decision: they believed the Trademark Board’s first
decision erroneously applied the law, and they believed (correctly) that the Federal Circuit
would swiftly correct that error; but, after the Trademark Board’s second decision years
later, they believed further factfinding would support their case. Their need for such
additional factfinding after a second Trademark Board decision years down the road “could
not have been discerned, except in pure prophecy,” at the time of the first Trademark Board
decision. Id. And of course, it is up to parties to choose their own litigation strategies.
13
We note that secondary sources are of little help on this question, as they appear
merely to describe the current state of the law. See 3 McCarthy, supra, § 21:20 (citing
Gillette, 435 F.2d 1114; Princeton Vanguard, 414 F. Supp. 3d 822); 15B Federal
Procedural Forms § 64:421 (2020) (citing Gillette, 435 F.2d 1114).
29
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 . . .
30
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, Ҥ 1071(b)(3) plainly incentivizes trademark applicants to appeal routine
trademark denials to the Federal Circuit.” Shammas, 784 F.3d at 226. And such an
interpretation would also detract from judicial efficiency, with more appellants seeking the
more drawn-out proceedings in district court rather than a quicker review by the Federal
Circuit. 14
14
This case provides a good illustration. Defendant argues that Plaintiffs’
“challenges across multiple tribunals over nearly a decade have come at great expense to
the parties and the courts” and that “efficiency and judicial economy” favor continuing
Federal Circuit review. Response Br. at 32. Certainly, had Plaintiffs elected Federal Circuit
review of both the 2014 and 2017 Trademark Board decisions, this case may have already
been resolved. But that is not the proper counterfactual. Rather, had Plaintiffs thought in
2014 that their election of Federal Circuit review was final, they likely would have chosen
district court review instead in order to maintain their ability to further develop the record,
which had closed before the Trademark Board two years earlier. Initial review of the 2014
decision by the district court would almost certainly have taken longer than the review by
the Federal Circuit did—and would have been subject to appeal to this Court, further
prolonging the proceedings. And then, after those initial questions related to the 2014
decision were resolved, there would have been further litigation. In other words, we think
it highly likely that an initial choice of district court review would have lengthened these
proceedings even more.
31
IV.
For the above reasons, we conclude that the waiver language in § 1071 relates only
to the choice of review options for the decision appealed from. In other words, a party
seeking review of a subsequent Trademark Board decision may seek review in either the
Federal Circuit or the district court, even if the Trademark Board’s initial decision was
reviewed by the Federal Circuit. Therefore, the district court erred in dismissing this case
for lack of subject matter jurisdiction. We reverse the dismissal and remand for further
proceedings consistent with this opinion.
REVERSED AND REMANDED
32