The U.S. District Court for the Western District of North Carolina dismissed Princeton Vanguard's civil action seeking review of the TTAB's September 6, 2017 decision finding PRETZEL CRISPS to be generic for pretzel crackers. [TTABlogged here]. That 2017 Board decision was issued after the CAFC in May 2015 reversed Board's original 2014 decision and remanded the case with instructions to apply the correct genericness standard. [TTABlogged here]. Judge Kenneth D. Bell, considering the issue of subject matter sua sponte, ruled that because Princeton Vanguard had appealed the first Board decision to the CAFC under Section 1071(a) of the Lanham Act, it had waived its right to proceed in the district court (rather than the CAFC) as to the second Board decision. Therefore, the district court lacked subject matter jurisdiction over the action. Princeton Vanguard, LLC and Snyder's Lance, Inc. v. Frito-Lay North America, Inc., 2019 USPQ2d 401574 (W.D.N.C. 2019).
The court observed that it must dismiss an action under FRCP 12(b)(3) if it determines at any time that it lacks subject matter jurisdiction. Plaintiffs filed this action on November 6, 2017. When Judge Bell, newly assigned to the case, reviewed the parties' summary judgment motions he concluded that the issue of subject matter jurisdiction needed to be addressed. The parties filed memoranda regarding the issue on October 10, 2019. The court dismissed the case, without prejudice, on October 21, 2019.
The court saw the issue as one of first impression. It began its analysis with the wording of Section 1071 of the Lanham Act, observing that Section 1071 provides two avenues for appeal: to the CAFC under Section 1071(a) or by way of civil action in a district court under 1071(b).
However, the statute makes clear-twice-that a dissatisfied party may not do both. In §1071(a), the statute says that a party who files an appeal with the Federal Circuit waives his right to seek District Court review under §1071(b),and then in §1071(b) the statute again specifically prohibits parties who have taken an appeal to the Federal Circuit from filing a...