Intellectual Property Law

Chapter 6 Putting It Into Words Solution

A client has lost a petition to cancel a trademark registration. Draft a paragraph
describing to the client the alternatives available to appeal this decision.

A party who receives an unfavorable determination by the Trademark Trial
and Appeal Board (TTAB) has two, mutually exclusive alternatives. You
may appeal the decision refusing to cancel the ____________ registration to
the U.S. Court of Appeals for the Federal Circuit, located in Washington,
D.C. This court will set aside the TTAB’s findings only when the findings are
arbitrary, capricious, an abuse of discretion, or unsupported by substantial
evidence. No new evidence is permitted, and the court makes a determination
solely on the basis of evidence introduced at the TTAB.

Alternatively, you may file a civil action in the appropriate U.S. District
Court, which will consider your objections to registration of the __________
mark de novo, meaning that this court can determine the issues anew, and
you would be able to introduce new evidence and assert new claims.

In any event, you must either file the appeal or institute the court action in
the U.S. District Court within sixty (60) days of the adverse decision by the
TTAB.