Tuesday, May 04, 2021

Schwimmer and Welch: "Where to appeal a TTAB decision? The choice is complicated"

Martin B. "Marty" Schwimmer and Yours Truly co-authored an article recently published by the World Trademark Review, entitled "Where to appeal a TTAB decision? The choice is complicated." [pdf here]. The springboard for the article was the Fourth Circuit's ruling in the long-running PRETZEL CRISPS case in which the court ruled that Snyder's/Princeton Vanguard, by appealing a TTAB decision to the CAFC under Section 1071(a) of the Trademark Act, did not waive its right to appeal to the district court, under Section 1071(b), from a subsequent TTAB decision in the same case.

A party appealing an adverse TTAB decision has two options: appeal to the US Court of Appeals for the Federal Circuit (CAFC) or commence a civil action in US district court. In this guest piece, Leason Ellis LLP’s Martin Schwimmer and Wolf, Greenfield & Sacks, PC’s John L Welch unpick the recent Fourth Circuit decision in the PRETZEL CRISPS genericness case to examine the practical factors at play when making that decision.

Author Schwimmer provided this flowchart to illustrate how Section 1071 of the Trademark Act works (click on the picture for a larger image): 


Read comments and post your comment here.

TTABlogger comment: We thank the World Trademark Review for granting us permission to distribute copies of this article.  

Text Copyright John L. Welch 2021.


At 9:41 AM, Blogger Ratty said...

The football team in Pro Football Inc. v. Blackhorse et al, 112 F.Supp.3d 439, 2015 WL 4096277 (ED Va 2015) might have been better off going directly to the Federal Circuit like In Re Tam, 808 F.3d 1321 (Fed. Cir. 2015) No. 14-1203 (Fed Cir 2015) instead of waiting for Tam to win.


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