Credit: md3d/Adobe Stock Ex Parte Trademark Appeals to District Court — Lessons Learned from the Front Lines
Although pursuit of an appeal of an adverse ex parte decision from the Trademark Trial and Appeal Board to the Federal Circuit may under some circumstances prove to be quicker and less expensive, appeals to district courts are becoming increasingly attractive given recent changes in the law and USPTO practice in defending these actions. Based on the authors' recent experience in several such appeals, they can share the following lessons learned.
October 24, 2024 at 03:59 PM
13 minute read
Trademarks
What You Need to Know
- Section 1071 of the Lanham Act provides parties two options for appealing adverse ex parte decisions from the Trademark Trial and Appeal Board (TTAB).
- The dissatisfied party may either appeal to the Federal Circuit or to any U.S. district court.
- the decision must be fact specific, based on the existing record, the opportunities to augment that record, and the relevant case law in the district and/or circuit courts.
Section 1071 of the Lanham Act provides parties two options for appealing adverse ex parte decisions from the Trademark Trial and Appeal Board (TTAB). The dissatisfied party may either appeal to the Federal Circuit under Section 1071(a) or to any U.S. district court under Section 1071(b). 15 U.S.C. §1071(a)-(b). Although pursuit of an appeal to the Federal Circuit may under some circumstances prove to be quicker and less expensive, appeals to district courts are becoming increasingly attractive given recent changes in the law and USPTO practice in defending these actions. Based on the authors' recent experience in several such appeals, they can share the following lessons learned.
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