Friday, January 21, 2022

Anne Gilson LaLonde Agrees with Professor McCarthy's Criticism of CAFC's Brooklyn Brewery Decision and Adds Her Own

Trademark expert Anne Gilson LaLonde, author of Gilson on Trademarks, has provided her comments on the CAFC's recent Brooklyn Brewery decision [here], with errata [here], agreeing with Professor J. Thomas McCarthy's criticism of the court's view on standing [TTABlogged here] and adding her own criticism regarding the CAFC's misinterpretation of its role in reviewing a TTAB decision.

I agree with Professor McCarthy’s sound objections to this "unprecedented and alarming" decision but would add that it is also incorrect based on both the role of the Federal Circuit and its precedent on standing.

First, the Federal Circuit reviews the TTAB's decisions on appeal, asking, essentially, whether the TTAB was correct. Therefore, its task is to determine whether the TTAB properly followed the law as it applies in Board proceedings. The Federal Circuit should be asking whether an opposer or cancellation petitioner was entitled to bring its case to the Board, not whether it is entitled to bring its case before an Article III court. See, e.g., Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1303 (Fed. Cir. 2020) (“In this appeal, we review de novo whether SFM pleaded sufficient facts to establish entitlement to challenge Corcamore's registered trademark under § 1064. . . . To be clear, this appeal does not involve the traditional legal notions of Article III standing. This appeal focuses instead on the requirements that a party must satisfy to bring or maintain a statutory cause of action, such as a petition to cancel a registered trademark under 15 U.S.C. § 1064.”).

Second, this decision marks a big shift from the Federal Circuit's precedent on standing in TTAB appeals. It fails to mention any of the relevant case law that the Federal Circuit commonly relies on when reviewing a TTAB decision: Opposers and cancellation petitioners must have a belief in damage that has a reasonable basis, as well as having a real interest in the proceedings. See, e.g., Ghomeshi v. StrongVolt, Inc., 851 Fed. Appx. 193, 196 n.5 (Fed. Cir. 2021) (unpublished) (“To be clear, the issue in front of the Board was not whether StrongVolt had Article III standing, but whether it had satisfied the statutory requirements of 15 U.S.C. § 1064 to pursue a cancellation proceeding.”); Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 1376 (Fed. Cir. 2012) (“The ‘case’ and ‘controversy’ restrictions do not . . . apply to matters before administrative agencies. Instead, for an agency such as the PTO, standing is conferred by statute. Here, standing is conferred by Section 13 of the Lanham Act. . . .”); Cunningham v. Laser Golf Corp., 222 F.3d 943, 945 (Fed. Cir. 2000) (“Standing . . . requires only that the party seeking cancellation believe that it is likely to be damaged by the registration.”).

The question the Federal Circuit should have answered was whether the opposer had established a statutory cause of action under Section 13, pursuant to the Supreme Court’s guidance in Lexmark. Instead, it went beyond its remit, answering the wrong question and ending up with the wrong answer.


Read comments and post your comment here.

TTABlogger comment: The TTABlog post of Professor McCarthy's criticism was cited to the CAFC in a supplement to the appellant's petition for reconsideration en banc.

Text Copyright John L. Welch 2022.


At 4:13 PM, Anonymous Anonymous said...

On Jan. 18, the Court denied rehearing. Just before doing so, it changed one sentence in the opinion, adding the word "typically":

"Thus, the test for likelihood-of-confusion or descriptiveness purposes is typically whether the challenger and registrant compete in the same line of business and failure to cancel an existing mark, or to refuse registration of a new mark, would be likely to cause the opposer competitive injury."

Does that additional word alter the meaning of the sentence from a legal pronouncement to simply saying that competing is the typical fact-pattern, and, if so, does that obviate Prof. McCarthy's legal concern?

At 7:33 AM, Blogger John L. Welch said...

I asked that same question of the two experts. None of us believed it made a substantive difference. The court still said appellant lacked standing. Moreover, even in the case of direct competition, the opinion still says "To be clear, an opposer cannot show standing by merely showing the registrant competes with the opposer and receives a benefit from an unlawful trademark."

At 7:45 AM, Blogger John L. Welch said...

Actually, the CAFC made another change, replacing the word "test" with the word "issue."


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