Snyder's-Lance, Inc. v. Frito-Lay North America, Inc.
PUBLISHED (2021)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
Under the Lanham Act, 15 U.S.C. § 1071, a party's election to appeal a decision of the Trademark Trial and Appeal Board to the Federal Circuit waives the right to proceed in a district court only for that specific decision. A party is not precluded from seeking review of a subsequent, distinct Board decision in a district court.
Facts:
- In 2004, Princeton Vanguard, LLC sought to register the trademark 'PRETZEL CRISPS' for its flat pretzel cracker product.
- The trademark examiner denied registration on the principal register but allowed registration on the supplemental register, deeming the mark descriptive.
- In 2009, Princeton Vanguard reapplied for registration on the principal register, asserting that the mark had since acquired distinctiveness.
- Frito-Lay North America, Inc. opposed the 2009 application, arguing that 'PRETZEL CRISPS' was a generic term for pretzel crackers and thus unregistrable.
- In 2012, Snyder's-Lance, Inc. acquired Princeton Vanguard.
Procedural Posture:
- Frito-Lay opposed Princeton Vanguard's trademark application in a proceeding before the Patent and Trademark Office’s Trademark Trial and Appeal Board ('Trademark Board').
- In 2014, the Trademark Board ruled in favor of Frito-Lay, finding the mark 'PRETZEL CRISPS' to be generic.
- The Plaintiffs (Snyder's-Lance and Princeton Vanguard) appealed the 2014 decision to the U.S. Court of Appeals for the Federal Circuit.
- In 2015, the Federal Circuit vacated the Trademark Board's decision and remanded the case, holding that the Board had applied the incorrect legal standard.
- On remand, the Trademark Board issued a new decision in 2017, again finding the mark to be generic, and alternatively, to have not acquired distinctiveness.
- The Plaintiffs then filed a civil action in the U.S. District Court for the Western District of North Carolina to seek review of the Trademark Board's 2017 decision.
- After two years of litigation, the district court raised the issue of jurisdiction on its own and dismissed the case, concluding that the Plaintiffs' initial choice to appeal to the Federal Circuit waived their right to later seek review in a district court.
- The Plaintiffs, as Appellants, appealed the district court's dismissal to the U.S. Court of Appeals for the Fourth Circuit, with Frito-Lay as the Appellee.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does a party's initial election to appeal a decision of the Trademark Trial and Appeal Board to the Federal Circuit under 15 U.S.C. § 1071(a) waive their right to seek review of a subsequent Board decision in the same case in a federal district court under § 1071(b)?
Opinions:
Majority - Judge Wynn
No, a party's initial election to appeal a decision of the Trademark Trial and Appeal Board to the Federal Circuit does not waive their right to seek review of a subsequent Board decision in the same case in a federal district court. The statutory text of 15 U.S.C. § 1071, while somewhat ambiguous, is best interpreted to mean that the waiver of the right to proceed in district court applies on a per-decision basis, not for the entire case. The court reasoned that interpreting the word 'decision' to refer to each independent adjudication by the Board is more consistent and logical than the defendant's proposed reading, which would require switching the term's meaning within the same statutory sentence. Legislative history of the analogous patent statutes indicates that Congress's intent was to prevent redundant appeals of the same decision in two different forums, not to lock a party into one forum for all future, distinct decisions. This interpretation aligns with precedent from the Seventh and Ninth Circuits in 'Tibbetts' and 'Gillette', respectively. Finally, policy considerations favor allowing a fresh choice of forum for each new decision, as a party's strategic needs, such as the need to introduce new evidence in a de novo district court proceeding, may only become apparent after a subsequent Board ruling.
Analysis:
This decision provides significant clarity for trademark litigants regarding the procedural options for appealing decisions from the Trademark Trial and Appeal Board. It establishes that the choice of appellate forum under the Lanham Act is not a one-time, irrevocable election but can be made anew for each distinct decision issued by the Board. By aligning with the Seventh and Ninth Circuits, the Fourth Circuit solidifies a consistent national interpretation, enhancing predictability for parties. This holding preserves strategic flexibility, allowing litigants to choose the most appropriate forum—the expert, record-bound Federal Circuit or the de novo district court—based on the specific legal and factual issues at stake at different stages of a lengthy dispute.
