Wednesday, March 10, 2010

Appellee Removes CAFC Appeal to Federal District Court Under 15 USC 1071

A party who is dissatisfied with a decision of the TTAB may, of course, appeal to the U.S. Court of Appeals for the Federal Circuit pursuant to 15 USC Sec. 1071(a). That party thereby waives its right to seek review by way of civil action in a federal district court under 1071(b). But the appellee has the right, within 20 days of the notice of appeal, to invoke 1071(b) by giving notice to the USPTO that it wishes to have all further proceedings conducted in a district court. The appellant then has thirty days to commence a civil action. Why, you might ask, would an appellee (who won at the TTAB level) remove the appeal from the CAFC?

That's what happened in Snowizard's appeal from the Board's decision in Southern Snow Manufacturing, Inc. v. Snowizard Holdings, Inc., Cancellation No. 92044522 (December 10, 2009) [not precedential]. [TTABlogged here]. Southern Snow, who successfully cancelled Snowizard's registration for the mark ORCHID CREAM VANILLA on mere descriptiveness grounds, took the case out of the CAFC [notice here].

The petition for cancellation was filed by Southern Snow in 2005. In 2006, Southern Snow commenced a civil action for unfair trade practices in Louisiana state court, but that case was then removed to the federal district court in New Orleans. The federal judge stayed the district court action pending the outcome of the cancellation proceeding. [The opposite of what usually happens].

Mark Edward Andrews, counsel for Southern Snow, reports that the federal judge has agreed that the new complaint to be filed by Snowizard, seeking review of the TTAB judgment, will be consolidated with one of several now-pending lawsuits between the parties. It seems that the Battle of New Orleans involves many flavors of snowballs, not just the ORCHID CREAM VANILLA one.

Text Copyright John L. Welch 2010.


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