Jonathan Moskin Publishes on Lessons Learned from Ex Parte Trademark Appeals to District Courts

Foley & Lardner LLP partner Jonathan Moskin co-authored the Law.com article, “Ex Parte Trademark Appeals to District Court — Lessons Learned from the Front Lines.”

The authors write that Section 1071 of the Lanham Act offers parties two options for appealing adverse ex parte decisions from the Trademark Trial and Appeal Board: appealing to the Federal Circuit or to any U.S. District Court.

“Although pursuit of an appeal to the Federal Circuit may under some circumstances prove to be quicker and less expensive, appeals to district courts are becoming increasingly attractive given recent changes in the law and USPTO practice in defending these actions,” they explain.

Moskin assesses important considerations when considering an appeal, including the selection of forum, significance of de novo review, development of the appealing party’s case in chief, the USPTO’s increasing pragmatism in defending appeals, and trial of ex parte appeals.

“In sum, there may be considerable benefits to ex parte de novo appeals to the district courts rather than direct appeal to the Federal Circuit,” the authors conclude. “In all instances, the decision must be fact specific, based on the existing record, the opportunities to augment that record, and the relevant case law in the district and/or circuit courts. However, such de novo review can be a vital and expedient means of challenging PTO decisions.”

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