Wednesday, November 11, 2015

Recommended Reading: McCarthy and Roumiantseva, "Divert All Trademark Appeals to the Federal Circuit? We Think Not"

Professor J. Thomas McCarthy and Dina Roumiantseva consider the wisdom of having the CAFC handle all appeals in trademark cases in their recent Trademark Reporter Commentary entitled "Divert All Trademark Appeals to the Federal Circuit? We Think Not," 105 TMR 1275 (September-October 2015).

With some regularity over the years, a proposal is made to change the Lanham Act so that appeals in all Lanham Act trademark and false advertising cases from district courts across the United States will be diverted from the regional circuit courts of appeal to the Court of Appeals for the Federal Circuit. We think it is time to discuss this proposal head on and hopefully to convince the reader that this diversion is not a good idea and should never be implemented. Advocates of this proposal claim that trademark law would benefit from the consistency that a single appeals court could provide and that the Federal Circuit has exceptional expertise in trademark law. We believe, however, that trademark law does not suffer from the kind of circuit conflict that led to the channeling of all patent appeals to the Federal Circuit in 1982. Moreover, our review of case law suggests that some regional circuits have a comparable or greater experience with trademark law. We argue that no change in the present system of trademark appeals is needed.

Read comments and post your comment here.

TTABlog notes:  I thank The Trademark Reporter for granting permission to provide a link to this article, which is Copyright © 2015 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 105 TMR 1275 (2015).

Text Copyright John L. Welch 2015.


At 8:04 AM, Anonymous Anonymous said...

Very good read; Professor McCarthy at his blunt, honest best!

At 10:54 AM, Anonymous joe dreitler said...

Is there really some "movement" and, if so, why at this particular time? There was nominal discussion at the time the CAFC was created and it was not even a trial balloon. At that time the CAFC was supposed to be comprised of experienced patent lawyers to decide patent cases. We know how that played out.
The CAFC's record on its decisions in patent cases being reversed by the Supreme Court is bad and gets worse each year. So why would anyone think that this court would do better than a circuit court dealing with infringement, false advertising, cybersquatting and all the pendant state claims that go along with a trademark suit?
If we had a circuit that was truly filled with judges who have practiced intellectual property law (like most countries) for years and hear only intellectual property cases, this would make sense. But, if we simply have a single circuit with political appointees from Congress, the majority of whom have little or no background in this area, I see no advantage to the public.

How many years and how much pain would there be for parties and their lawyers to get the Federal Circuit to determine the most basic issues, like the fact that likelihood of confusion is a mixed question of law and fact in the 6th Circuit (and 9th I believe) while others view it very differently?

Are we now going to conflate the right to register with the right to use and adopt registrability standards for cases seeking injunctions?

An idea only a politician would like.

At 2:40 PM, Anonymous Anonymous said...

Absolutely not, the CAFC is a joke and their trademark decisions seem to read as though they have no more knowledge of the subject matter than a local district court judge! Say what you will about the TTAB, they know the subject matter.


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