United States District Court, E.D. Virginia, Alexandria Division
For Timex Group USA, Inc., Plaintiff: Carl Edward Jennison, Jennison & Shultz PC, Arlington, VA; John Nolan Jennison, Law Offices Jennison & Shultz, P.C., Arlington, VA.
For Margaret A. Focarino, Commissioner of Patents, Defendant: Bernard G. Kim, David Moskowitz, Yiris E. Cornwall, LEAD ATTORNEYS, U.S. Attorney's Office (Alexandria-NA), Alexandria, VA.
ADDENDUM TO DECEMBER 17, 2013 MEMORANDUM OPINION
T. S. Ellis, III, United States District Judge.
On December 17, 2013, an Order and Memorandum issued granting summary judgment for plaintiff Timex Group USA, Inc. (" Timex" ) and denying defendant Margaret A. Focarino's motion for summary judgment. Timex v. Focarino, 1:13-cv-1080, (E.D. Va., Dec. 17, 2013) (Order); Timex v. Focarino, 1:13-cv-1080, (E.D. Va., Dec. 17, 2013) (Mem. Op.). On December 18, 2013, judgment for plaintiff was entered accordingly. Timex v. Focarino, 1:13-cv-1080 (E.D. Va., Dec. 18, 2013) (Order).
On January 7, 2014, the Fourth Circuit clarified the standard of review that district courts must apply to decisions by the Trademark Trial and Appeal Board (" TTAB" ) in actions brought under 15 U.S.C. § 1071(b) in Swatch AG v. Beehive Wholesale, LLC, 12-2126, 739 F.3d 150, 2014 WL 46454 (4th Cir. Jan. 7, 2014). Swatch held that " where new evidence is submitted, de novo review of the entire record is required because the district court 'cannot meaningfully defer to the PTO's factual findings if the PTO considered a different set of facts.'" 12-2126, 2014 WL 46454 at *3 (quoting Kappos v. Hyatt, 132 S.Ct. 1690, 1700, 182 L.Ed.2d 704 (2012)). In so holding, the Fourth Circuit implicitly overruled its per curiam affirmance of the district court's decision in Skippy Inc. v. Lipton Investments, in which the district court held that:
In reviewing a case under 15 U.S.C. § 1071(b), the court sits in a dual capacity. On the one hand, the court is an appellate reviewer of facts found by the TTAB. On the other hand, the court is a fact-finder based on new evidence introduced to the court. Review of new evidence is de novo.
Skippy, Inc. v. Lipton Invs., Inc., 345 F.Supp.2d 585, 586 (E.D. Va. 2002), aff'd sub nom. Skippy Inc. v. Lipton Investments, Inc., 74 F.Appx. 291 (4th Cir. 2003).
Because summary judgment in this case issued three weeks prior to the Fourth Circuit's Swatch opinion, it is understandable that the summary judgment opinion relied on the Fourth Circuit's unpublished opinion approving of the Skippy standard. Accordingly, while the new evidence in this case submitted to the district court was reviewed de novo, the TTAB's findings of fact based on the administrative record were reviewed under the more deferential substantial evidence standard. Under the former Skippy standard, the December 17, 2013 Memorandum Opinion concluded that (i) the TTAB erred in denying
registration to plaintiff because its findings were not supported by substantial evidence, (ii) a de novo review of the new evidence submitted to the district court compelled the conclusion that the mark INTELLIGENT QUARTZ is suggestive rather than descriptive, and (iii) " plaintiff's evidence [was] sufficient to establish by a preponderance of the evidence, based on the record as a whole, including the administrative record, that the proffered mark warrant[ed] trademark protection." Timex v. Focarino, 1:13-cv-1080, (E.D. Va., Dec. 17, 2013) (Mem. Op.) at 6.
Given that there was not substantial evidence in the administrative record to support the TTAB's denial of trademark registration, it should come as no surprise that the same result obtains if the Swatch standard is applied and the administrative record is reviewed de novo. A brief review of the administrative ...