Pay to play – why the USPTO is steering applicants away from federal district court

By H David Starr and Howard W Kline

While recent cost-cutting initiatives may be behind the US Patent and Trademark Office actively steering ex parte appeals of dissatisfied applicants away from federal district court, where does this leave those who are still pursuing a registration?

The Lanham Act provides dissatisfied trademark applicants with the choice of appealing an ex parte ruling issued by the Trademark Trial and Appeal Board (TTAB) to the Court of Appeals for the Federal Circuit (15 USC §1071(a)(1)) or commencing a de novo action in federal district court (§1071(b)(1)). Historically, commencing a de novo action would be considered the prudent move for an applicant looking to conduct further discovery and submit additional testimony and other new evidence.

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Issue 72