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Lanham Act Case Study

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I. Introduction
The Lanham Act provides two avenues for a dissatisfied party, e.g., a dissatisfied trademark applicant, to appeal a final Trademark Trial and Appeal Board decision. Although some similarities may exist between the two available avenues, this article examines the advantages and disadvantages facing litigants in their venue determination for appeals involving ex parte proceedings, while briefly outlining significant distinctions for appeals involving inter partes proceedings.
II. Forum Selection: The Federal Circuit versus Federal District Courts
Dissatisfied parties are afforded the right to appeal a final decision by the Trademark Trial and Appeal Board by either appealing the decision to the Court of Appeals for the Federal …show more content…

In appeals involving ex parte proceedings, the dissatisfied party must initiate the civil against the Director of the United States Patent and Trademark Office. As a result, the appeal must be filed in the jurisdiction in which the USPTO maintains its principal office, which is the Eastern District of Virginia. To the contrary, for appeals involving an inter partes proceeding, a civil action under Trademark Act § 21(b), 15 U.S.C. § 1071(b), may generally be brought in any federal district court which has jurisdiction over the adverse party to the proceeding. The District Court for the Eastern District of Virginia, however, retains jurisdiction for appeals involving inter partes proceedings where there are adverse parties residing in multiple districts or an adverse party residing in a foreign country. It is important to note that unlike appeals involving ex parte proceedings, the Director of the United States Patent and Trademark Office cannot be made a party in an inter partes proceeding. Despite this fact, the Director retains the right …show more content…

Thus, the Federal Circuit will uphold the Trademark Trial and Appeal Board’s factual findings, unless they are unsupported by substantial evidence. Questions of fact include whether a trademark is descriptive ; whether a trademark is generic ; whether a trademark has been abandoned ; and whether a trademark has acquired inherent distinctiveness . To the contrary, legal conclusions by the Trademark Trial and Appeal Board are reviewed by de novo. The overall legal conclusion of a likelihood of confusion is a legal determination that is reviewed de novo. This legal determination is based on underlying factual findings of the Board’s application of some or all of the thirteen factors set forth in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357 (CCPA 1973). These factual findings will be evaluated under a substantial evidence standard of review. Thus, the Federal Circuit will uphold the Trademark Trial and Appeal Board’s factual findings, unless they are unsupported by substantial evidence. Although the DuPont factors are reviewed for substantial evidence, the Trademark Trial and Appeal Board’s overall determination of likelihood of confusion is reviewed without

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