United States District Court, W.D. North Carolina, Charlotte Division
Kenneth D. Bell United States District Judge.
case is before the Court sua sponte to consider
whether this Court has subject matter jurisdiction over this
dispute. The issue before the Court, which appears to be a
matter of first impression in this Circuit and perhaps
nationally, is whether Plaintiffs have the right to file a
civil action in District Court to appeal an adverse remand
decision of the Trademark Trial and Appeal Board
(“TTAB”) after Plaintiffs already appealed the
TTAB's initial ruling that their trademark is generic to
the United States Court of Appeals for the Federal Circuit.
After a full review of the relevant proceedings in the TTAB
and the Federal Circuit, the governing statute and the
parties' arguments, the Court finds that Plaintiffs
waived their right to proceed in District Court by initially
taking their appeal to the Federal Circuit. Therefore, this
action will be dismissed without prejudice for lack of
subject matter jurisdiction.
the parties raised the issue of subject matter jurisdiction
in this action. However, because it defines a court's
power to adjudicate cases and controversies, whether a court
has subject matter jurisdiction is a “threshold
matter” that a court must consider prior to reaching
the merits of a dispute. See Steel Co. v. Citizens for a
Better Env't, 523 U.S. 83, 94-95 (1998);
Sucampo Pharmaceuticals, Inc. v. Astellas
Pharma, Inc., 471 F.3d 544, 548 (4th Cir. 2006).
“Federal courts are not courts of general jurisdiction;
they have only the power that is authorized by Article III of
the Constitution and the statutes enacted by Congress
pursuant thereto.” Bender v. Williamsport Area Sch.
Dist., 475 U.S. 534, 541 (1986). No. other matter can be
decided without subject matter jurisdiction. See United
States v. Cotton, 535 U.S. 625, 630 (2002); U.S. v.
Wilson, 699 F.3d 789, 793 (4th Cir. 2012).
jurisdiction cannot be conferred by the parties, nor can a
defect in subject-matter jurisdiction be waived or forfeited
by the parties. Id. Accordingly, questions of
subject-matter jurisdiction may be raised at any point during
the proceedings and indeed must be raised sua sponte
by the court when it appears that the court may lack
jurisdiction. See Wilson, 699 F.3d at 793;
Brickwood Contractors, Inc. v. Datanet Engineering,
Inc., 395 F.3d 385, 390 (4th Cir. 2004). A
court must dismiss an action pursuant to Federal Rule of
Civil Procedure 12(h)(3) “if the court determines at
any time that it lacks subject matter jurisdiction.”
See Fed.R.Civ.P. 12(h)(3). The plaintiff bears the
burden of proving subject matter jurisdiction. Richmond,
F. & P.R. Co. v. United States, 945 F.2d 765, 768
(4th Cir. 1991).
FACTS AND PROCEDURAL HISTORY
stated, in this action the parties dispute whether Plaintiff
Princeton Vanguard, LLC is entitled to register the trademark
PRETZEL CRISPS with the United States Patent and Trademark
Office (“USPTO”). More specifically, Defendant
Frito-Lay North America, Inc. (“Frito-Lay”)
asserts that the trademark is not entitled to registration
because it is a generic mark or, in the alternative, lacks
secondary meaning. See Frito-Lay N. Am., Inc. v.
Princeton Vanguard, LLC, 109 U.S.P.Q.2d (BNA) 1949, 1950
2010, Frio-Lay filed its opposition to the registration of
the mark with the USPTO. An extensive record of documents,
declarations, expert witness testimony and other evidence was
developed by the parties and was submitted by agreement to
the TTAB for a trial on the papers. On February 28, 2014, the
TTAB ruled in favor of Frio-Lay, finding that the mark was
generic and cancelling the registration of the mark on the
Supplemental Register and denying Princeton Vanguard's
application to register the mark on the Principal Register.
appealed that ruling to the Federal Circuit pursuant to 15
U.S.C. § 1071(a). The Federal Circuit, in a thorough,
published opinion, considered the evidence and proceedings in
the TTAB and determined that the TTAB applied the incorrect
legal standard in evaluating whether the mark was generic.
Accordingly, the Federal Circuit vacated the TTAB decision
and remanded the case for “application of the correct
legal test.” Princeton Vanguard, LLC v Frito-Lay N.
Am., Inc., 786 F.3d 960, 970 (Fed. Cir. 2015). In its
opinion, the Federal Circuit plainly envisioned that it would
be reviewing the case again after remand. Id.
(declining to analyze all the parties' arguments with
respect to the evidence of record “[g]iven … our
decision to remand, ” but describing the nature of the
Federal Circuit's future appellate review for
“substantial evidence” and noting “[o]ur
review under [the substantial evidence] standard ‘can
only take place when the agency explains its decisions with
sufficient precision, including the underlying factfindings
and the agency's rationale.' (citation
remand, neither party sought to introduce new or additional
evidence into the record. The TTAB ordered the parties to
rebrief the case on the original record, and the case was
then considered on remand based on that record. See
Frito-Lay N. Am., Inc. v. Princeton Vanguard,
LLC, 124 U.S.P.Q.2d 1184, 1204-06 (T.T.A.B. 2017).
In its opinion on remand, the TTAB sought to follow the
Federal Circuit's directions and issued a lengthier, more
detailed opinion describing its analysis of the parties'
factual contentions and legal claims. Ultimately, however,
the TTAB reached the same conclusion that the mark PRETZEL
CRISPS was generic and, in the alternative, concluded that
the mark was descriptive and had not acquired secondary
Plaintiffs did not appeal the TTAB's opinion on remand to
the Federal Circuit. Instead, on November 6, 2017, Plaintiffs
filed a civil action in this Court seeking review of the
TTAB's remand opinion pursuant to 15 U.S.C. §
1071(b). This matter was reassigned to the undersigned judge
on June 14, 2019. In the course of reviewing the parties'
respective motions for summary judgment, the Court determined
that the issue of subject matter jurisdiction needed to be
considered, and on September 27, 2019 asked the parties to
file memoranda of law addressing jurisdiction. The parties filed
their memoranda on October 10, 2019 and the matter is ripe
appears that the issue before the Court has not previously
been decided. Therefore, the proper place for the Court
to start its analysis of whether it has subject matter
jurisdiction is with 15 U.S.C. § 1071, the statute under
which Plaintiffs claim jurisdiction. If Plaintiffs do not
have the right to appeal to the District Court under that
statute, then the parties concede that this Court does not
have subject matter jurisdiction to review the TTAB remand
relevant part, 15 U.S.C. §1071 provides:
(a) Persons entitled to appeal; United States Court of
Appeals for the Federal Circuit; waiver of civil action;
election of civil ...