Snyder's-Lance, Inc. v. Frito-Lay North America, Inc.
Published Opinion (2021)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
A party appealing a decision of the Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) that has been vacated and remanded by the Federal Circuit may elect to seek review of the subsequent TTAB decision in federal district court under 15 U.S.C. § 1071(b), even if the initial appeal was taken to the Federal Circuit under § 1071(a).
Facts:
- In 2004, Princeton Vanguard, LLC sought to register the mark “PRETZEL CRISPS” for its flat pretzel cracker product.
- A trademark examiner denied registration on the principal register but allowed registration on the supplemental register as a descriptive mark.
- In 2009, Princeton Vanguard reapplied for registration on the principal register, believing the mark had by that time acquired distinctiveness.
- Frito-Lay North America, Inc. opposed the registration, arguing “PRETZEL CRISPS” was generic for pretzel crackers or, alternatively, highly descriptive and had not acquired distinctiveness.
- The Trademark Board sided with Frito-Lay in 2014, concluding that “PRETZEL CRISPS” was generic and did not reach the acquired-distinctiveness question.
- The Federal Circuit reversed the Trademark Board's 2014 decision in 2015, concluding the Board had applied an incorrect legal standard and disregarded survey evidence, then vacated and remanded for further proceedings.
- On remand, the Trademark Board again concluded in a 2017 decision that “PRETZEL CRISPS” was generic and, in the alternative, lacked acquired distinctiveness.
- Plaintiffs desired to expand the record to include additional evidence of acquired distinctiveness that had arisen in the intervening years, which could only be done in a federal district court.
Procedural Posture:
- Frito-Lay North America, Inc. opposed Princeton Vanguard, LLC's trademark registration application before the Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB).
- The Trademark Board sided with Frito-Lay in 2014, concluding that “PRETZEL CRISPS” was generic.
- Plaintiffs (Snyder’s-Lance, Inc.; Princeton Vanguard, LLC) appealed the Trademark Board’s 2014 decision to the Federal Circuit under 15 U.S.C. § 1071(a).
- The Federal Circuit reversed the Trademark Board’s decision in 2015, vacating and remanding the case for further proceedings.
- On remand, the Trademark Board again concluded in a 2017 decision that “PRETZEL CRISPS” was generic and, in the alternative, lacked acquired distinctiveness.
- Plaintiffs then sought review of the Trademark Board’s 2017 decision in federal district court (U.S. District Court for the Western District of North Carolina) pursuant to 15 U.S.C. § 1071(b).
- The district court, sua sponte, raised the question of its jurisdiction and, after briefing, dismissed the case without prejudice for lack of subject matter jurisdiction, concluding Plaintiffs’ initial election of the Federal Circuit path meant they could only appeal subsequent Trademark Board decisions to the Federal Circuit.
- Plaintiffs appealed the district court's dismissal to the Fourth Circuit Court of Appeals.
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 that appealed an initial Trademark Trial and Appeal Board decision to the Federal Circuit, which then vacated and remanded, retain the right under 15 U.S.C. § 1071(b) to seek review of the Trademark Board's subsequent decision in federal district court?
Opinions:
Majority - Wynn, Circuit Judge
Yes, a party that initially appealed a Trademark Board decision to the Federal Circuit, which then vacated and remanded, retains the right to seek review of the subsequent Trademark Board decision in federal district court under 15 U.S.C. § 1071(b). The statutory text of the Lanham Act, particularly 15 U.S.C. § 1071(a)(1) and (b)(1), while somewhat ambiguous, supports the interpretation that the waiver of district court review applies 'per decision' and not 'per case' or 'per proceeding.' The court reasoned that interpreting 'the decision' to refer to each distinct Trademark Board adjudication, rather than a singular initial decision, avoids a tortured reading of the statute and aligns with common sense that waivers typically apply to specific proceedings. Legislative history, derived from analogous patent provisions, suggests Congress intended to prevent redundant appeals of the same decision, not to permanently bind a party to a forum choice across multiple distinct decisions in a complex, multi-stage proceeding. The court found further support in the Seventh Circuit's decision in Tibbetts Industries v. Knowles Electronics and the Ninth Circuit's decision in Gillette Co. v. "42" Products Ltd., both of which interpreted parallel patent and trademark statutes to allow a new election of remedies for subsequent board decisions. Policy considerations, such as allowing litigants to adapt their strategy as new issues or evidence arise and promoting judicial efficiency by not forcing an initial district court election 'in pure prophecy,' also weighed in favor of permitting a new election for each new Trademark Board decision. The requirement that a Federal Circuit opinion 'govern the further proceedings in the case' means that issues decided are binding as law of the case, not that all future appeals must return to the Federal Circuit.
Analysis:
This decision clarifies the scope of the 'election of remedies' provision under the Lanham Act, ensuring that parties in trademark disputes are not permanently bound to an initial appellate forum choice following a remand from the Federal Circuit. It grants litigants greater flexibility to adapt their strategy, particularly when new issues or evidence emerge after an intermediate appellate review and remand to the TTAB. The ruling prevents a rigid application of statutory waiver, promoting more nuanced and effective litigation by allowing parties to choose the most appropriate forum—district court for de novo review and new evidence, or Federal Circuit for quicker appellate review on a closed record—for each distinct Trademark Board decision. This approach could lead to more efficient and equitable resolution of complex trademark registration disputes.
