Snyder's-Lance, Inc. v. Frito-Lay North America, Inc.

991 F.3d 512

• Court: Court of Appeals for the Fourth Circuit
• Decided: March 17, 2021
• Docket: 19-2316
• Status: Published

Opinion

PUBLISHED

UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT

No. 19-2316

SNYDER’S-LANCE, INC.; PRINCETON VANGUARD, LLC,

Plaintiffs - Appellants,

v.

FRITO-LAY NORTH AMERICA, INC.,

Defendant - Appellee.

Appeal from the United States District Court for the Western District of North Carolina, at Charlotte. Kenneth D. Bell, District Judge. (3:17−cv−00652−KDB−DSC)

Argued: January 28, 2021 Decided: March 17, 2021

Before NIEMEYER, WYNN, and FLOYD, Circuit Judges.

Reversed and remanded by published opinion. Judge Wynn wrote the opinion, in which Judge Niemeyer and Judge Floyd joined.

ARGUED: Paul D. Clement, KIRKLAND & ELLIS LLP, Washington, D.C., for Appellants. William G. Barber, PIRKEY BARBER PLLC, Austin, Texas, for Appellee. ON BRIEF: David H. Bernstein, James J. Pastore, DEBEVOISE & PLIMPTON LLP, New York, New York; George W. Hicks, Jr., Julie M.K. Siegal, KIRKLAND & ELLIS LLP, Washington, D.C., for Appellants. David E. Armendariz, PIRKEY BARBER PLLC, Austin, Texas, for Appellee. WYNN, Circuit Judge:

This case presents a narrow question of statutory interpretation: whether a party to

a trademark dispute who appeals a decision of the Patent and Trademark Office’s

Trademark Trial and Appeal Board (“Trademark Board”) to the Federal Circuit may, after

vacatur and remand by the Federal Circuit and the issuance of a new decision by the

Trademark Board, seek review of that second decision in federal district court.

The district court answered this question in the negative and dismissed the case for

lack of jurisdiction. But we reach a different conclusion. In this matter of first impression

for our Circuit, we join our sister circuits that have considered this question and hold that

a district court may review a subsequent decision of the Trademark Board in such

circumstances.

Accordingly, we reverse the district court’s judgment dismissing the case for lack

of subject matter jurisdiction and remand for further proceedings.

I.

The Lanham Act is the United States’ federal trademark law. Under the Lanham

Act, trademarks that are “distinctive”—“those that are arbitrary (‘Camel’ cigarettes),

fanciful (‘Kodak’ film), or suggestive (‘Tide’ laundry detergent)”—are entitled to the

“valuable benefits” of registration on the principal register. U.S. Pat. & Trademark Off. v.

Booking.com B. V., 140 S. Ct. 2298, 2302 (2020) (most internal quotation marks omitted).

These benefits include “a presumption that the mark is valid.” Id.

By contrast, trademarks that are merely “descriptive”—such as “‘Park ’N Fly’

airport parking”—generally may only be registered on the supplemental register, which

2 “accords more modest benefits.” Id. (citing Park ’N Fly, Inc. v. Dollar Park & Fly, Inc.,

718 F.2d 327, 331 (9th Cir. 1983), rev’d on other grounds, 469 U.S. 189 (1985)). There is

an exception for descriptive terms which have “acquired distinctiveness” by “achiev[ing]

significance in the minds of the public as identifying the applicant’s goods or services,” id.

at 2303 (internal quotation marks omitted), such as “American Airlines,” OBX-Stock, Inc.

v. Bicast, Inc., 558 F.3d 334, 340 (4th Cir. 2009) (capitalization modified). Such

trademarks are eligible for registration on the principal register. Booking.com, 140 S. Ct.

at 2303. Finally, generic terms are not eligible for registration on either register because

“[t]he name of the good itself (e.g., ‘wine’) is incapable of distinguishing one producer’s

goods from the goods of others.” Id. (alterations and most internal quotation marks

omitted).

In 2004, Plaintiff Princeton Vanguard, LLC 1 sought to register the mark “PRETZEL

CRISPS” in reference to one of its products, flat pretzel crackers. The trademark examiner

denied registration on the principal register as a distinctive mark but allowed registration

on the supplemental register as a descriptive mark.

In 2009, Plaintiffs reapplied for registration on the principal register, believing that

the mark had by that time acquired distinctiveness. However, Defendant Frito-Lay North

America, Inc. opposed registration, arguing that “PRETZEL CRISPS” was “generic for

pretzel crackers and thus . . . not registrable,” or alternatively, that it was “highly descriptive

of a type of cracker product and has not acquired distinctiveness.” Princeton Vanguard,

1 Co-Plaintiff Snyder’s-Lance, Inc., acquired Princeton Vanguard, LLC in 2012.

3 LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 963 (Fed. Cir. 2015). The dispute went before

the Trademark Board, where the parties developed an extensive factual record before fact

discovery closed in 2012. The Trademark Board sided with Defendant in 2014, concluding

that “PRETZEL CRISPS” was generic. Frito-Lay N. Am., Inc. v. Princeton Vanguard,

LLC, 109 U.S.P.Q.2d 1949, 1960 (T.T.A.B. 2014). It did not reach the acquired-

distinctiveness question. Id. at 1960 n.13.

Plaintiffs then faced a choice. Under the Lanham Act, they could seek review of the

Trademark Board’s 2014 decision in either the Federal Circuit (pursuant to 15 U.S.C.

§ 1071(a)) or a district court (pursuant to § 1071(b)). The two paths have distinctive

features. The Federal Circuit path generally provides for faster resolution of the appeal and

restricts the record to that developed before the Trademark Board. See 15 U.S.C.

§ 1071(a)(4). Additionally, the Federal Circuit “review[s] the [Trademark] Board’s factual

findings for substantial evidence.” In re St. Helena Hosp., 774 F.3d 747, 750 (Fed. Cir.

2014). By contrast, the district court path allows for additional development of the record

and de novo review—but it opens the appellant up to counterclaims by the other party. See

B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 144 (2015); 3 J. Thomas

McCarthy, Trademarks and Unfair Competition § 21:20 (5th ed. 2020 & Supp. 2021).

If the appellant elects Federal Circuit review under § 1071(a), the appellee can

choose instead to have the case proceed in district court pursuant to § 1071(b). See 15

U.S.C. § 1071(a)(1). But the reverse is not true. In other words, either party can force

selection of § 1071(b) (district court) review, but neither can force selection of § 1071(a)

4 (Federal Circuit) review. Federal Circuit review occurs only when the appellant selects it

and the appellee acquiesces in that selection.

Plaintiffs opted for the § 1071(a) route and appealed the Trademark Board’s 2014

decision to the Federal Circuit. They assert that they made this choice because they wished

to raise only a legal issue and believed the Federal Circuit would be the more efficient

route. Defendant did not elect to force § 1071(b) review in district court instead.

Accordingly, the case proceeded before the Federal Circuit, which agreed with

Plaintiffs in 2015. The Federal Circuit concluded that the Trademark Board had “applied

the incorrect legal standard in evaluating whether the mark [wa]s generic.” Princeton

Vanguard, 786 F.3d at 962. Specifically, the court concluded the Trademark Board had

erroneously evaluated the terms “PRETZEL” and “CRISPS” separately, rather than the

complete phrase “PRETZEL CRISPS.” Id. at 969. Moreover, the court noted that the

Trademark Board could not “disregard the results of survey evidence without explanation,”

as its decision appeared to do. Id. at 970. Accordingly, the Federal Circuit “vacate[d] and

remand[ed to the Trademark Board] for further proceedings.” Id. at 962.

On remand, in a 2017 decision, the Trademark Board again concluded that

“PRETZEL CRISPS” was generic. Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC,

124 U.S.P.Q.2d 1184, 1204 (T.T.A.B. 2017). However, the Trademark Board also

concluded, in the alternative, that “PRETZEL CRISPS” lacked acquired distinctiveness.

Id. at 1206.

This time, Plaintiffs sought review of the Trademark Board’s 2017 decision in

federal district court pursuant to § 1071(b). They assert that they opted for district court

5 review of the Trademark Board’s second decision because they wished to expand the

record to include additional evidence of acquired distinctiveness that had arisen in the

intervening years—something they could only do in district court.

The case proceeded for two years in district court. The parties cross-moved for

summary judgment and introduced new evidence. But before the district court could rule

on the motions, the case was reassigned to a different judge. The court then raised for the

first time the question of whether it had jurisdiction to review the Trademark Board’s 2017

decision in light of Plaintiffs’ earlier election of Federal Circuit review of the Trademark

Board’s 2014 decision. The parties briefed the issue, with Plaintiffs arguing for jurisdiction

and Defendant arguing against.

After considering the parties’ arguments, the court dismissed the case without

prejudice for lack of subject matter jurisdiction. The court concluded that Plaintiffs’ initial

election of the § 1071(a) path meant that they could only appeal subsequent decisions by

the Trademark Board to the Federal Circuit. Princeton Vanguard, LLC v. Frito-Lay N. Am.,

Inc., 414 F. Supp. 3d 822, 824 (W.D.N.C. 2019). This appeal followed.

II.

This Court “reviews a dismissal for lack of subject matter jurisdiction and questions

of statutory interpretation de novo.” United States ex rel. Carson v. Manor Care, Inc., 851

F.3d 293, 302 (4th Cir. 2017).

III.

Under 28 U.S.C. § 1295, “the Federal Circuit shall have exclusive jurisdiction” of

appeals from decisions of the Trademark Board. 28 U.S.C. § 1295(a)(4)(B). Accordingly,

6 the question of whether § 1071(b) applies—thus modifying § 1295’s otherwise bright-line

rule and permitting review by the district court—implicates our jurisdiction and that of the

court below.

In cases involving statutory interpretation, “we begin our analysis with the text of

the governing statute[]. Only when statutory text is ambiguous do we consider ‘other

indicia of congressional intent such as the legislative history.’” Copley v. United States,

959 F.3d 118, 123 (4th Cir. 2020) (citation omitted) (quoting Lee v. Norfolk S. Ry. Co., 802

F.3d 626, 631 (4th Cir. 2015)).

We conclude that the statutory text of the Lanham Act, while ambiguous, favors

Plaintiffs’ argument in favor of jurisdiction. This conclusion is further bolstered by

legislative history, our sister circuits’ holdings in similar cases, and policy considerations.

Accordingly, we hold that the district court erred in dismissing the case for lack of

jurisdiction.

A.

The statutory text of the Lanham Act provides in relevant part that:

[(a)] An applicant for registration of a mark . . . who is dissatisfied with the decision of the . . . [Trademark] Board, may appeal to the . . . Federal Circuit thereby waiving his right to proceed under subsection (b) of this section: Provided, That such appeal shall be dismissed if any adverse party to the proceeding . . . , within twenty days after the appellant has filed notice of appeal . . . , files notice with the Director that he elects to have all further proceedings conducted as provided in subsection (b) of this section. Thereupon the appellant shall have thirty days thereafter within which to file a civil action under subsection (b) of this section, in default of which the decision appealed from shall govern the further proceedings in the case.

....

7 [(b)] Whenever a person authorized by subsection (a) of this section to appeal to the . . . Federal Circuit . . . is dissatisfied with the decision of the . . . [Trademark] Board, said person may, unless appeal has been taken to . . . the Federal Circuit, have remedy by a civil action if commenced within such time after such decision, not less than sixty days, as the Director appoints or as provided in subsection (a) of this section.

15 U.S.C. § 1071(a)(1), (b)(1).

The parties agree that, by the plain language of the statute, an applicant dissatisfied

with the initial decision of the Trademark Board may seek review of that decision via either

avenue, subject to the opposing party’s right to elect district court review. In other words,

there is no dispute that, in 2014, Plaintiffs properly exercised their right to appeal to the

Federal Circuit under § 1071(a).

Additionally, the parties agree that issues decided by the Federal Circuit in its

review cannot subsequently be relitigated. Plaintiffs acknowledged in briefing before the

district court that the Federal Circuit’s holding on certain points of law was binding as the

law of the case. And beyond general law-of-the-case principles, this rule may be mandated

by the statute itself, which provides that the Federal Circuit’s “opinion . . . shall govern the

further proceedings in the case.” 2 Id. § 1071(a)(4); see Gillette Co. v. “42” Prods. Ltd.,

435 F.2d 1114, 1117 (9th Cir. 1970) (interpreting § 1071(a)(4) in this way). Put another

2 Plaintiffs suggest that this provision may apply solely to bind the Trademark Board, not other federal courts. See Opening Br. at 37; Oral Arg. at 18:29–57; cf. Hoover Co. v. Coe, 325 U.S. 79, 83 (1945) (appearing to endorse this interpretation in the patent context). We need not decide this question for purposes of this appeal.

8 way, a party may not take a second bite at the apple by seeking re-review in district court

of issues already decided by the Federal Circuit. 3

Further, the parties agree that the Trademark Board’s decisions in 2014 and 2017

were unique “decisions.” While Defendant argues that the decisions were nearly identical,

it agreed at oral argument that they were, indeed, separate decisions.

But the parties part ways on the question of whether Plaintiffs had the same choice

of review options in 2017 as they did in 2014. Essentially, Defendant claims that Plaintiffs’

decision to appeal to the Federal Circuit in 2014 binds them to that choice for the remainder

of this case. By contrast, Plaintiffs argue that they may make a new election for each new

decision by the Trademark Board. While we find the statutory language somewhat

ambiguous, we conclude that Plaintiffs have the better interpretation.

Admittedly, some aspects of the plain language appear to favor Defendant’s

interpretation of the statute. After all, § 1071(a) instructs that when a party elects to appeal

to the Federal Circuit, that party “thereby waiv[es] his right to proceed under subsection

(b) of this section.” 15 U.S.C. § 1071(a)(1). Moreover, § 1071(b) provides that a party

3 The district court concluded that “Plaintiffs took their one bite at the proverbial apple when they opted for a Federal Circuit appeal and are not entitled to take another one in this Court.” Princeton Vanguard, 414 F. Supp. 3d at 830. Similarly, Defendant argues that “allowing Princeton Vanguard to pursue its appeal in district court would give it multiple bites at the same apple.” Response Br. at 26–27. This argument misunderstands the nature of this case. Plaintiffs may not—as they acknowledge—seek reconsideration of the Federal Circuit’s original decision, which acts as the law of the case. Nor may they now seek review of the Trademark Board’s original decision; the Federal Circuit already reviewed it. They seek only to choose a different venue for review of the unresolved aspects of the new decision. There is no second bite at the apple.

9 dissatisfied with a Trademark Board decision “may, unless appeal has been taken to . . .

the Federal Circuit, have remedy by a civil action.” Id. § 1071(b)(1). At first blush, that

language suggests that where a party selects Federal Circuit review, it may not then select

district court review. 4

On closer inspection, however, Defendant’s interpretation leads to difficulties.

While the statute speaks of “waiving [one’s] right” to district court proceedings and refers

to an “appeal [that] has been taken” to the Federal Circuit, it says nothing about how long

a choice of forum remains in effect, or whether it can bind a party across appeals from

related, but distinct “decisions.”

Common sense, however, suggests that there must be some limitation. After all, in

most circumstances, waivers apply only to the proceedings in question. Defendant wisely

does not argue that the waiver applies for the rest of time, including in another proceeding

altogether or regarding a different trademark. We think it plain that we must avoid an

interpretation with such farcical results.

Perhaps unsurprisingly, then, both parties suggest that we read some implicit

limitation into the literal language of the text. Defendant suggests the waiver is limited to

4 One interesting question is what would happen if a party first selected district court review, and later sought Federal Circuit review. The statutory language is silent on this issue. Defendant suggested at oral argument that such a situation could never arise, as the case would not return to the Trademark Board from the district court, and accordingly there would never be a subsequent Trademark Board decision to appeal to the Federal Circuit. Oral Arg. at 28:00–29:55. There is some statutory language to support that view. See 15 U.S.C. § 1071(b)(1). But see In Re Booking.com B.V., No. 79122365, 2017 WL 6033941, at *1 (T.T.A.B. Nov. 16, 2017) (on remand from district court). In any event, this question is not before us in this appeal.

10 “any subsequent decision in the same proceeding,” Response Br. at 19, whereas Plaintiffs

argue the waiver applies “per decision, [but] not per case,” Opening Br. at 17 (internal

quotation marks omitted). We think Plaintiffs’ reading is more persuasive.

To see why, consider the relevant sentences as a whole. Under Plaintiffs’

interpretation, the text of § 1071(a)(1) indicates that a party “dissatisfied with the

[Trademark Board’s] decision . . . may appeal [that decision] to the . . . Federal Circuit

thereby waiving his right to proceed under subsection (b) [for that decision].” By contrast,

according to Defendant, a party “dissatisfied with the [Trademark Board’s] decision . . .

may appeal [that decision] to the . . . Federal Circuit thereby waiving his right to proceed

under subsection (b) [for that and all future decisions in the same proceeding].” Plaintiffs’

interpretation carries the same meaning forward throughout the sentence; Defendant asks

us to switch gears halfway through. We think it plain that the former is preferable. See

Tibbetts Indus., Inc. v. Knowles Elecs., Inc., 386 F.2d 209, 212 (7th Cir. 1967) (“No

violence is done to [a similar patent-law statute] by reading the word ‘decision’ to refer to

every independent adjudication made by the Board [of Patent Interferences].” (quoting

Tibbetts Indus., Inc. v. Knowles Elecs., Inc., 263 F. Supp. 275, 278 (N.D. Ill. 1966))); cf.

IBP, Inc. v. Alvarez, 546 U.S. 21, 34 (2005) (noting that “identical words used in different

parts of the same statute are generally presumed to have the same meaning”).

This problem is even more apparent in § 1071(b)(1). According to Plaintiffs, a party

“dissatisfied with the decision” of the Trademark Board “may, unless appeal [of that

decision] has been taken to” the Federal Circuit, pursue a remedy in district court, as long

as the action is “commenced within [a certain] time after such decision.” But per Defendant

11 and the district court, a party “dissatisfied with the decision” of the Trademark Board “may,

unless appeal [of that or any earlier decision in the same proceeding] has [ever] been taken

to” the Federal Circuit, pursue a remedy in district court, as long as the action is

“commenced within [a certain] time after [this particular] decision.” This interpretation

asks the reader to switch back and forth between meanings twice in a single sentence.

Defendant’s interpretation is complicated even further when one considers the

appellee’s option to force district court review. Imagine Bob’s Burgers loses before the

Trademark Board and selects Federal Circuit review, and Shirley’s Sandwiches does not

object. The Federal Circuit reviews the case and remands. Bob’s Burgers loses a second

time before the Trademark Board, and again selects Federal Circuit review. This time,

Shirley’s Sandwiches would like to select district court review instead—as is its right—

perhaps because it lost before the Federal Circuit the first time and thinks history is likely

to repeat itself, or because some circumstance has changed to alter its calculus. Under the

statute, Shirley’s Sandwiches selects district court review by filing notice to that effect, at

which point “the appellant [Bob’s Burgers] shall have thirty days thereafter within which

to file a civil action under subsection (b) of this section, in default of which the decision

appealed from shall govern the further proceedings in the case.” 15 U.S.C. § 1071(a)(1).

But, under the reading of § 1071(b)(1) favored by Defendant and the district court,

Bob’s Burgers cannot “file a civil action under subsection (b)” because “appeal has been

taken” to the Federal Circuit. Defendant rejects this interpretation, arguing that the statute

“explicitly provides authorization for the original dissatisfied party [Bob’s Burgers] to file

a civil action in that situation.” Response Br. at 23. True, § 1071(a)(1) provides that

12 authorization—but § 1071(b)(1) does not. And § 1071(a)(1) does not provide standalone

authorization; rather, it allows the appellant “to file a civil action under subsection (b).” 15

U.S.C. § 1071(a)(1) (emphasis added).

Accordingly, for Defendant’s reading to work, we have to read even more language

into § 1071(b)(1). The tortured result: a party “dissatisfied with the decision” of the

Trademark Board “may, unless appeal [of that or any earlier decision in the same

proceeding] has [ever] been taken to” the Federal Circuit (except that such prior appeal

does not act as a bar if the appellee has exercised its right for district court review under

§ 1071(a)(1)), pursue a remedy in district court, as long as the action is “commenced within

[a certain] time after [this particular] decision.”

Further, Defendant’s argument rests, in part, on interpreting § 1071(b)(1)’s “unless

appeal has been taken” language to apply to different decisions across time in the same

way that, in its view, § 1071(a)(1)’s waiver language applies across time. See Response Br.

at 20, 23, 43; Oral Arg. at 38:54–39:21; see also Princeton Vanguard, 414 F. Supp. 3d at

827 (district court taking this view). Yet Defendant simultaneously takes the contradictory

stance that its interpretation is the better one because it avoids rendering part of the statute

superfluous—an argument that rests on interpreting the relevant waiver language in the

two subsections differently.

Specifically, in Defendant’s view, if Congress merely aimed to make clear that the

options were mutually exclusive for each Trademark Board decision, “then the language

in subsection (a) providing that a party that appeals to the Federal Circuit ‘thereby waiv[es]

his right to proceed under subsection (b)’ would be mere surplusage.” Response Br. at 18

13 (alteration in original). Defendant’s argument appears to be that the “waiver” language in

subsection (a) is broader than the “appeal has been taken” language in subsection (b), with

the latter being sufficient to establish mutual exclusivity of the options for each decision,

and the former being required to establish that the choice of Federal Circuit review waives

district court review throughout the proceedings. See Oral Arg. at 23:57–27:15.

Putting aside the contradiction in Defendant’s interpretations, there is some appeal

to this argument. After all, the fact that Congress used different terminology in the two

subsections could well be significant.

But at least as plausible is the argument that the different language was simply

necessitated by the structure of the statute: the choice of (a) waives the choice of (b); (b)

may be chosen unless it has been waived by the choice of (a). And, to the extent “that this

interpretation does not eliminate all superfluity between” the two sections, “there is a ready

explanation for the redundancy that remains”: in a statute providing two different options

for review, it makes sense that Congress reinforced the same idea by repeating it in each

subsection. Lockhart v. United States, 136 S. Ct. 958, 966 (2016); see also United States v.

Atl. Rsch. Corp., 551 U.S. 128, 137 (2007) (“[O]ur hesitancy to construe statutes to render

language superfluous does not require us to avoid surplusage at all costs.”); N.H. Lottery

Comm’n v. Rosen, 986 F.3d. 38, 60 (1st Cir. 2021) (“[W]hile avoiding surplusage is

definitely preferred, avoiding surplusage at all costs is not, particularly where, as is the case

here, syntax offers a good reason for why the qualifier was repeated[.]” (internal quotation

marks and alterations omitted)); United States v. Enrique-Ascencio, 857 F.3d 668, 675 (5th

Cir. 2017) (“[T]he surplusage canon ‘cannot always be dispositive because (as with most

14 canons) the underlying proposition is not invariably true. Sometimes drafters do repeat

themselves . . . .’” (quoting Antonin Scalia & Bryan A. Garner, Reading Law: The

Interpretation of Legal Texts 176–77 (1st ed. 2012))).

Further, the district court relied too heavily on the statute’s use of the definite article

to support its interpretation. The court concluded that, “by using the words ‘the decision’

instead of ‘a decision,’ the statute suggests that there is only one, rather than a possible

series of decisions, to which the statutory choice between a Federal Circuit and a District

Court appeal applies.” Princeton Vanguard, 414 F. Supp. 3d at 827.

That plainly cannot be right. If “the decision” necessarily refers only to the

Trademark Board’s first decision, there is no right to review of any subsequent decisions.

See 15 U.S.C. § 1071(a)(1) (a party “dissatisfied with the decision” of the Trademark Board

may appeal to the Federal Circuit (emphasis added)); id. § 1071(b)(1) (a party “dissatisfied

with the decision” of the Trademark Board may “have remedy by a civil action” (emphasis

added)). Yet the statutory text—not to mention common sense—makes clear that parties

may seek review of multiple Trademark Board decisions. See id. § 1071(b)(1) (“Whenever

a[n authorized] person . . . is dissatisfied with the decision of the . . . [Trademark] Board,

said person may, unless appeal has been taken to . . . the Federal Circuit, have remedy by

a civil action . . . .” (emphases added)); Hoover Co. v. Coe, 325 U.S. 79, 84 (1945) (noting

that, in the parallel patent provision, the use of the word “[w]henever” “states a case where

the examiner’s decision may be only one of a series of rulings in the Patent Office prior to

issue of a patent”); see also 15 U.S.C. § 1071(a)(2) (“[W]hen an appeal is taken to the . . .

Federal Circuit, the appellant shall file . . . a written notice of appeal . . . within such time

15 after the date of the decision from which the appeal is taken as the Director prescribes, but

in no case less than 60 days after that date.” (emphasis added)). We cannot ignore these

other statutory provisions in seeking to understand the relevant text. See Sijapati v. Boente,

848 F.3d 210, 215 (4th Cir. 2017) (“[I]n construing the statute’s plain language, we must

consider the context in which the statutory words are used because we do not construe

statutory phrases in isolation; we read statutes as a whole.” (internal quotation marks and

alterations omitted)).

To be clear, we do not understand the district court to have been asserting that there

was no review right of subsequent Trademark Board decisions in any forum. We simply

note that that would be the result of applying literally the district court’s understanding of

Congress’s use of the definite article in this statute.

The district court also relied on § 1071(a)(4). As noted, that subsection provides

that, where the option of Federal Circuit review is selected, the Federal Circuit must review

the case and, “[u]pon its determination[,] the court shall issue its mandate and opinion . . . ,

which shall . . . govern the further proceedings in the case.” 15 U.S.C. § 1071(a)(4). The

district court found that this provision requires that if Federal Circuit review has once

occurred, a district court may not review the case, concluding that this was “[t]he only

interpretation of the statute that gives full effect to the mandated primacy of a Federal

Circuit opinion under § 1071(a)(4), and avoids the conflict of one Court of Appeals being

‘bound’ by the decision of another Court of Appeals in an appeal from one of its District

Courts.” Princeton Vanguard, 414 F. Supp. 3d at 827–28. We disagree.

16 First, the plain language of § 1071(a)(4) may actually cut the other way: there would

be no reason to specify that the Federal Circuit’s decision would “govern the further

proceedings in the case” if all future appeals would, of necessity, be returning to the Federal

Circuit. 5

Second, the reference to “further proceedings in the case” makes clear that Congress

knows how to refer to the whole case when it wants to—reinforcing that “the decision”

refers to each individual Trademark Board decision and that the waiver applies only to any

given decision, not to the full proceedings. See Tibbetts, 386 F.2d at 212 (“The statute

speaks solely in terms of ‘decisions,’ not interferences or proceedings.” (quoting Tibbetts,

263 F. Supp. at 278)).

And third, the district court’s interpretation—that § 1071(a)(4) means that the

Federal Circuit, having once reviewed the case, must hear all future appeals in the

proceedings—would eliminate the right of the winner before the Trademark Board to elect

proceedings before the district court if the initial review had been before the Federal

Circuit. To return to our earlier example, if Shirley’s Sandwiches won against Bob’s

Burgers before the Trademark Board and Bob’s Burgers appealed to the Federal Circuit,

then Shirley’s Sandwiches’ choice not to force district court review of that first decision

would forever bind it to Federal Circuit review of future decisions—even if it continued to

win before the Trademark Board. Yet the waiver in § 1071(a)(1)—the same subsection as

5 That is, unless this provision is directed only at the Trademark Board. See supra note 2.

17 the “further proceedings” language of § 1071(a)(4)—refers only to a waiver made by the

aggrieved party. 6 See 15 U.S.C. § 1071(a)(1) (party dissatisfied with Trademark Board’s

decision may appeal to Federal Circuit, “thereby waiving his right to proceed under

subsection (b)” (emphasis added)). And, other than deadlines, § 1071(a)(1) does not

contain any limiting language on the appellee’s right to force district court review.

We think the better interpretation of § 1071(a)(4), to the extent it is relevant at all, 7

is that it incorporates a strict version of the “law of the case” rule in the event that the

Federal Circuit renders a decision and, later, the case comes before a different circuit

court. 8 Again, the parties do not dispute that the Federal Circuit’s earlier decision in this

case is binding as to the issues it decided. And, of course, it is not unheard of for one

appellate court to need to apply another’s prior decision as the law of the case. E.g.,

Christianson v. Colt Indus. Operating Corp., 486 U.S. 800, 816 (1988) (noting, in a case

involving decisions by both the Seventh and Federal Circuits, that the law of the case

6 Admittedly, the waiver language in § 1071(b)(1) is not so limited. See § 1071(b)(1) (district court review permitted “unless appeal has been taken to” the Federal Circuit). But the right of the appellee to force district court review is given in § 1071(a)(1), so the appropriate waiver language to consider is that in that same subsection. 7 See supra note 2. 8 By itself, the law of the case doctrine is “‘discretionary’ rather than ‘mandatory,’ and admits of a variety of exceptions.” Owens v. Stirling, 967 F.3d 396, 425 (4th Cir. 2020) (quoting CNF Constructors, Inc. v. Donohoe Constr. Co., 57 F.3d 395, 397 n.1 (4th Cir. 1995)). By contrast, the use of the word “shall” in § 1071(a)(4) indicates that its limitation is mandatory.

18 “doctrine applies as much to the decisions of a coordinate court in the same case as to a

court’s own decisions,” and collecting cases).

We conclude that the statutory language, while not free from ambiguity, supports

Plaintiffs’ interpretation. And other sources of authority largely support that reading. We

turn to those other sources next, beginning with legislative history.

B.

The parties do not cite, and research has not revealed, relevant legislative history

for § 1071 itself. However, § 1071 originally “incorporated by reference the procedures for

appellate review of patent application denials,” and Congress later “eliminated the cross-

reference” to the patent statute “and, in its place, added . . . language substantially similar

to the language pertaining to the procedures for review of patent denials.” Shammas v.

Focarino, 784 F.3d 219, 226–27 (4th Cir. 2015) (internal quotation marks and alterations

omitted); see B & B Hardware, 575 U.S. at 144 (describing the patent-law scheme as

“analogous”). For that reason, this Court has looked to the legislative history of the patent

provisions, 35 U.S.C. §§ 141 and 145, for insight into Congress’s intent in enacting § 1071.

E.g., Shammas, 784 F.3d at 226–27; cf. Swatch AG v. Beehive Wholesale, LLC, 739 F.3d

150, 155 (4th Cir. 2014) (in a case involving § 1071(b), relying on Supreme Court

precedent interpreting the patent statute).

In Hoover Co. v. Coe, the Supreme Court explained the origin of those parallel

patent provisions. For many years, a party who lost in one of the Federal Circuit’s

predecessor courts could then seek a remedy for the same decision in district court. 325

U.S. at 84–88. But in the hearings for a 1927 act of Congress that created the modern

19 structure, see Act of Mar. 2, 1927, ch. 273, 44 Stat. 1335, 1336, “it was proposed that

Congress eliminate either the appeal or the bill in equity,” with “some interested parties”

suggesting dropping one or the other remedy. Hoover Co., 325 U.S. at 86–87. Ultimately,

“Congress decided not to do away with either, but to allow an applicant to have the decision

of the Patent Office reviewed either by the court of appeals or by filing a bill in equity, but

not both.” Id. at 87 (internal quotation marks omitted).

This legislative history does not directly speak to the question at hand: whether this

choice—review by the Federal Circuit or a district court, “but not both”—can only be made

once, or whether the option becomes newly available with each Trademark Board decision.

However, it provides context for why the statute includes the waiver language at all. After

all, even in the face of the elements of the plain language that favor Plaintiffs’

interpretation, a reasonable reader might wonder why Congress bothered with waiver

language if the choice could be made anew after each decision. Why did Congress not

simply use “either / or” language and call it a day?

This legislative history provides the answer. Given the historical backdrop—in

which the options were not mutually exclusive—Congress wanted to make abundantly

clear that the choice of one path of review of a decision of the Trademark Board precluded

the other.

For that reason, while the legislative history does not directly support either party’s

interpretation, we conclude that it indirectly lends support to Plaintiffs’ reading.

20 C.

We are further persuaded to adopt Plaintiffs’ reading because it is in accord with

that of our only two sister circuits to have considered the issue, the Seventh and Ninth.

In Tibbetts Industries v. Knowles Electronics, the Seventh Circuit confronted a

similar situation in the patent context. Plaintiff George Tibbetts and defendant Hugh

Knowles each filed for patents related to the same idea. Tibbetts, 386 F.2d at 210. The

Board of Patent Interferences (“Patent Board”) 9 awarded Tibbetts priority of invention, and

Knowles appealed to the Court of Customs and Patent Appeals (the Federal Circuit’s

predecessor). Id. Tibbetts, too, “filed a protective appeal seeking affirmance and preserving

alternate grounds for affirmance.” Id.

9 The Board of Patent Appeals and Interferences was the predecessor to the modern Patent Trial and Appeals Board. Immunex Corp. v. Sandoz Inc., 964 F.3d 1049, 1058 (Fed. Cir. 2020). The Patent Board plays a role in patent proceedings similar to that played by the Trademark Board in trademark proceedings. Patent applications are first reviewed by patent examiners, just as trademark registration applications are initially reviewed by trademark examiners. See Kappos v. Hyatt, 566 U.S. 431, 434 (2012) (patents); B & B Hardware, 575 U.S. at 143 (trademarks). Denied applications may be appealed to the Patent Board or Trademark Board, respectively. See Kappos, 566 U.S. at 434 (Patent Board); 3 McCarthy, supra, § 21:1 (Trademark Board). Similarly, disgruntled third parties may dispute a granted application before either the Patent Board or Trademark Board. See Thryv, Inc v. Click-To-Call Techs., LP, 140 S. Ct. 1367, 1370 (2020) (“Inter partes review is an administrative process in which a patent challenger may ask the U.S. Patent and Trademark Office . . . to reconsider the validity of earlier granted patent claims.”); B & B Hardware, 575 U.S. at 143 (“If a trademark examiner believes that registration is warranted, the mark is published in the Official Gazette of the [Patent and Trademark Office]. At that point, any person who believes that he would be damaged by the registration may file an opposition.” (citations, internal quotation marks, and alterations omitted)). A party dissatisfied with the result before either the Patent Board or Trademark Board has the same options for review at issue in this appeal: Federal Circuit review or district court review. See Kappos, 566 U.S. at 434 (discussing review options for Patent Board decision).

21 The Court of Customs and Patent Appeals reversed the Patent Board on one issue

and remanded on another. This time, on remand, the Patent Board awarded priority to

Knowles. Id.

Tibbetts then sought review of the Patent Board’s second decision in district court.

Knowles “filed an emergency motion” in the Court of Customs and Patent Appeals “asking

that court to confirm its sole jurisdiction in th[e] matter,” which that court “summarily

denied.” Id. at 211. Knowles then moved the district court to dismiss the case for lack of

jurisdiction, arguing that “Tibbetts waived his right to institute the present action by filing

a notice of appeal [to the Court of Customs and Patent Appeals] from the first decision.”

Id. The district court, too, denied the motion but certified the issue for appeal under 28

U.S.C. § 1292(b).

The Seventh Circuit concluded that the issue resolved by the Court of Customs and

Patent Appeals had been “finally determined,” and therefore that issue was “no longer

before” the Seventh Circuit. Id. But as to the remanded issue, the question was “whether,

when the [Patent] Board makes two separate decisions at different times involving different

issues, a waiver of a [district court] suit as to the first [Patent] Board decision constitutes a

waiver as to the second decision as well.” Id. at 212 (quoting Tibbetts, 263 F. Supp. at 278).

The Seventh Circuit held it did not.

Reviewing the statutory text in the patent context—which, as noted, is quite similar

to § 1071—the Seventh Circuit concluded that “[t]he statutory language does not preclude

and slightly favors Tibbetts’ right to sue here” because “[n]o violence is done to [the

statute] by reading the word ‘decision’ to refer to every independent adjudication made by

22 the [Patent] Board,” and “[i]t can hardly be debated that the [Patent] Board made two

‘decisions’ in this case.” Id. (quoting Tibbetts, 263 F. Supp. at 278).

Moreover, the Seventh Circuit pointed out that “[t]he legislative history favors

Tibbetts’ right to sue here” because “[t]he purpose of requiring an election of remedies was

to foreclose redundant appeals”—appeals of the same decision in different forums—not to

prevent appeals of subsequent decisions in different forums. Id. (quoting Tibbetts, 263 F.

Supp. at 278 (citing Hoover Co., 325 U.S. at 86–87)). In other words, “[p]ermitting Tibbetts

to sue here on the [Patent] Board’s second decision does not proliferate appeals since there

is certainly a right to one more appeal in this case in some forum.” Id. (quoting Tibbetts,

263 F. Supp. at 278).

The Seventh Circuit also held that policy considerations favored Tibbetts’

interpretation of the statute. Because “Tibbetts’ need for this forum became clear only later,

after the [Patent] Board’s second decision[,] such a need could not have been discerned,

except in pure prophecy, prior to that time. It is unreasonable to attribute to Congress the

intention to force a litigant to make his choice not only on the basis of present facts, but on

uncertain future ones as well.” Id. (quoting Tibbetts, 263 F. Supp. at 278). Accordingly,

the Seventh Circuit concluded, “[t]he statute cannot be read to give a waiver made in one

set of circumstances on one decision, binding effect in new, radically different

circumstances on another decision.” 10 Id. (quoting Tibbetts, 263 F. Supp. at 278).

10 Indeed, as in our case, the Seventh Circuit noted that “it appears that Tibbetts may have need to resort to evidence now relevant in a de novo hearing in the district court and could not make such showing on appeal on a closed record in the [Court of Customs and

23 Defendant argues that Tibbetts is inapposite because the party seeking district court

review (Tibbetts) was the Patent Board winner when the original election of Federal Circuit

review was made, whereas here, Plaintiffs have lost both times before the Trademark

Board. But nothing in the Tibbetts analysis rested on that point. The Seventh Circuit

mentioned those facts as an explanation for why Tibbetts did not initially see a need for

pursuing district court review, but the court’s actual legal analysis rested on the statutory

language, legislative history, and policy considerations.

Defendant further argues that which party won before the Trademark Board at each

step matters because under § 1071(a), a party selecting Federal Circuit review waives “his

right” to proceed before the district court. Accordingly, “[b]ecause the waiver explicitly

applies to the appellant and not to the appellee,” the Seventh Circuit’s decision in Tibbetts

“is entirely consistent with the text of Section 1071.” Response Br. at 41–42. That is, in

Defendant’s view, only Knowles waived district court review when Knowles appealed to

the Court of Customs and Patent Appeals.

This argument is unpersuasive for two related reasons. First, as noted, Tibbetts also

appealed to the Court of Customs and Patent Appeals, so, under Defendant’s reading of the

statute, the “waiver” language in the § 1071(a) parallel provision should have applied to

him as well. See Tibbetts, 386 F.2d at 211 (citing 28 U.S.C. § 1542 (1964)). And second,

under the patent provision parallel to § 1071(b), a party dissatisfied with the decision of

Patent Appeals]. What may be readily apparent now was not apparent prior to the second decision of the [Patent] Board.” Tibbetts, 386 F.2d at 213.

24 the Patent Board could file suit in district court “unless he has appealed to the United States

Court of Customs and Patent Appeals.” Id. (emphasis added) (quoting 35 U.S.C. § 146

(1964)). Again, Tibbetts had appealed to that court. Id. at 210. Nevertheless, the Seventh

Circuit concluded that the language created a waiver only for each individual decision.

A few years later, in Gillette Co. v. “42” Products Ltd., the Ninth Circuit confronted

a very similar situation in the trademark context. 11 Gillette, 435 F.2d 1114. A company

called “42” Products sought to register a mark. Gillette opposed registration. The

Trademark Board dismissed Gillette’s opposition, and Gillette appealed to the Court of

Customs and Patent Appeals. That court concluded that the Trademark Board had erred

and remanded. This time, the Trademark Board found in favor of Gillette. “42” then filed

an action in district court. Id. at 1115. Gillette moved to dismiss for lack of jurisdiction. As

in Tibbetts, the district court denied the motion, but certified the issue for appeal under

§ 1292(b). Id. at 1114–15.

Before the Ninth Circuit, “Gillette argue[d] that because ‘42’ did not elect a civil

action when Gillette was the dissatisfied party taking an appeal to the [Court of Customs

and Patent Appeals], appellee ‘42’ waived its right to bring a civil action in all further

proceedings in this trademark registration dispute.” Id. at 1115. “42” responded that “its

earlier election was binding only as to the appeal from the first [Trademark Board]

decision, and that it did not waive its right to make an election by appealing, when it was

first a dissatisfied party, from the second [Trademark Board] decision.” Id. at 1116.

11 The language of the relevant provisions of § 1071 was substantively the same at the time of Gillette as it is now.

25 The Ninth Circuit concluded that “42” had the better interpretation of the “bare

statutory language,” although it was “not conclusive.” Id. Moreover, “42” had Tibbetts on

its side. And the court noted that while Gillette cited various cases for the proposition “that

once an election is made, the alternative remedy is waived,” none of those cases went “so

far as to stand for the principle that the dissatisfied party cannot elect the other tribunal in

an appeal from a second and later decision.” Id. Rather, “[t]he cited cases only teach that

the two remedies are intended to be alternative and not successive. Once the dissatisfied

party has chosen a path of appeal from a particular decision, he cannot seek to pursue the

other.” Id. (emphasis added).

The Ninth Circuit was careful to note that “[t]his interpretation fully protects the

integrity of the earlier decision of the [Court of Customs and Patent Appeals]. The district

court must and will recognize that the [Court of Customs and Patent Appeals’] opinion

foreclosed all points which it decided.” Id. at 1117. And the court further recognized that

this interpretation would satisfy the statutory requirement that the Federal Circuit’s

decision “shall govern the further proceedings in the case.” 15 U.S.C. § 1071(a)(4); see

Gillette, 435 F.2d at 1117.

Defendant argues that Gillette is inapposite because, like in Tibbetts, the party

seeking district court review was the winner before the Trademark Board when the original

election of Federal Circuit review was made. The district court below agreed. Princeton

Vanguard, 414 F. Supp. 3d at 829. But again, we do not read the Gillette analysis to have

rested on that point. As the Seventh Circuit had in Tibbetts, the Ninth Circuit mentioned

those facts as an explanation for why “42” did not initially see a need for pursuing district

26 court review. But its analysis hinged instead on the statutory language, Tibbetts, and

legislative history, all of which supported jurisdiction. See Gillette, 435 F.2d at 1116–18.

Against this significant authority, Defendant has produced only dicta from a single,

out-of-circuit district court decision. In Beaudet v. Quigg, plaintiff Leo Beaudet applied for

a patent. Beaudet v. Quigg, No. Civ. A. 86-2876, 1987 WL 16329, at *1 (D.D.C. Aug. 14,

1987). The patent examiner rejected the application. Beaudet appealed to the Patent Board,

which upheld the examiner’s decision. Beaudet then appealed to the Federal Circuit, which

remanded to the Patent Board “for clarification.” Id. The Patent Board issued the clarifying

opinion, at which point Beaudet sought review in district court.

The Commissioner of Patents and Trademarks moved to dismiss for lack of

jurisdiction. The district court agreed, concluding that “the [Patent] Board’s clarification

opinion” was not “a second, distinct ‘decision’” because the Federal Circuit “did not direct

the [Patent] Board to conduct any further proceedings or provide any additional support

for its decision,” and instead “merely asked the [Patent] Board to clarify ambiguous

language so that the basis for its decision could be fully understood.” Id. Accordingly, the

Patent Board had not issued a new decision, and the Federal Circuit had not surrendered

appellate jurisdiction. 12

12 The district court below concluded that Beaudet was directly on point because here, “the Federal Circuit plainly envisioned that it would be reviewing the case again after remand.” Princeton Vanguard, 414 F. Supp. 3d. at 825. Thus, “[w]hile Beaudet might arguably be distinguished . . . because [in Beaudet] the Federal Circuit only asked the [Patent] Board for clarification (rather than[, as here,] ordering a reconsideration [by the Trademark Board] under a different legal standard), the Federal Circuit in this case as in Beaudet expressed its intention to reach the full merits of the appeal after remand.” Id.

27 In footnoted dicta, the Beaudet court went on to muse that, “[i]ndeed, the statutory

language involved casts doubt on whether, under any circumstances, there can be multiple

‘decisions’ on an applicant’s appeal of the rejection of a particular application.” Id. at *1

n.2. The court noted that the statute referred to “the” decision, not “a” decision, and drew

from this the puzzling inference that “the [Patent] Board’s initial affirmance of an

examiner’s decision . . . , as well as any subsequent reconsideration, should be considered

a single decision of the [Patent] Board.” Id. We find that counterintuitive reading of the

plain language of the statute to be quite a stretch from the mere use of the definite article.

Moreover, on that shaky basis alone (and without acknowledging Tibbetts or

Gillette), the Beaudet court deduced a general “rule that when the Federal Circuit reverses

a decision of the [Patent] Board and remands for further proceedings, any subsequent

appeals must be directed to the court which has already developed the ‘law of the case.’”

Id.

at 828 n.10. But see Gillette, 435 F.2d at 1118, 1120 (majority finding jurisdiction to be appropriate in the district court over dissent’s objection that the Court of Customs and Patent Appeals had “impliedly” retained jurisdiction (emphasis added)). We disagree. Even if the Beaudet court was correct that the Federal Circuit could retain appellate jurisdiction, thereby rendering the first and second decisions one single decision—a question we need not reach—there is no doubt that the Federal Circuit did not retain jurisdiction here. True, its opinion might be read to evince a vague assumption that the case would return to it in the future. E.g., Princeton Vanguard, 786 F.3d at 970 (“Our 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.” (internal quotation marks omitted)). But that is not the same as deliberately retaining appellate jurisdiction. The second decision by the Trademark Board here is plainly a separate decision, as Defendant concedes. See Oral Arg. at 36:25–28.

28 We do not find this conclusion compelling when its questionable underpinnings are

stacked up against the plain language, legislative history, and case law favoring Plaintiffs’

position. Rather, we are persuaded to join our sister circuits in holding that each separate

“decision” by the Trademark Board affords the parties a new opportunity to choose

between the review options presented in § 1071.

D.

Finally, we turn to policy considerations. 13 We agree with our sister circuits that

such considerations favor Plaintiffs’ view of the statute.

As the Seventh Circuit noted, in cases such as this one, a party’s “need for [district

court review] [may] bec[o]me clear only later, after the [reviewing] Board’s second

decision.” Tibbetts, 386 F.2d at 212. Indeed, Plaintiffs provide a ready explanation for why

Federal Circuit review made sense initially and district court review made sense following

the Trademark Board’s second decision: they believed the Trademark Board’s first

decision erroneously applied the law, and they believed (correctly) that the Federal Circuit

would swiftly correct that error; but, after the Trademark Board’s second decision years

later, they believed further factfinding would support their case. Their need for such

additional factfinding after a second Trademark Board decision years down the road “could

not have been discerned, except in pure prophecy,” at the time of the first Trademark Board

decision. Id. And of course, it is up to parties to choose their own litigation strategies.

13 We note that secondary sources are of little help on this question, as they appear merely to describe the current state of the law. See 3 McCarthy, supra, § 21:20 (citing Gillette, 435 F.2d 1114; Princeton Vanguard, 414 F. Supp. 3d 822); 15B Federal Procedural Forms § 64:421 (2020) (citing Gillette, 435 F.2d 1114).

29 Plaintiffs’ interpretation furthers this principle by allowing the parties to reassess the

review options after each Trademark Board decision.

For its part, the district court’s decision appears to have rested in part on concerns

about judicial economy. We do not find this view persuasive.

First, the district court noted that the Federal Circuit has “extensive expertise” in the

area of trademark law. Princeton Vanguard, 414 F. Supp. 3d at 829; see also id. at 830

(noting that the Federal Circuit is “ideally fitted by its expertise and experience for a

complete decision in this matter” (quoting Gillette, 435 F.2d at 1120 (Carter, J.,

dissenting))). That is certainly true. Yet Congress, in its policy judgment, has

unambiguously allowed for district court review in at least some instances. So the Federal

Circuit’s expertise, while undeniable, cannot tip the scales in our analysis.

Second, the district court concluded that “[t]he Federal Circuit, rather than this

Court, is far better suited . . . to determine if the [Trademark Board] has faithfully followed

its earlier ruling.” Id. at 829. But, as noted, federal courts are perfectly capable of applying

the law of the case doctrine. Of course, federal appellate judges are occasionally brought

into cases that are already underway and must apply the earlier decisions within that case

of panels on which they did not sit. Sometimes they must even apply decisions within the

same case from other circuits. See Christianson, 486 U.S. at 816 (collecting cases). Indeed,

it is hard to see how this is any different from applying Supreme Court or circuit precedent

to a new set of circumstances, which, of course, all federal courts do routinely.

Finally, the district court found that “[a]llowing Plaintiffs—having already

voluntarily chosen to proceed in the Federal Circuit—to appeal de novo to this Court . . .

30 would be wasteful in terms of judicial economy.” Princeton Vanguard, 414 F. Supp. 3d at

830. But judicial economy actually favors Plaintiffs’ view. After all, as Plaintiffs note, if

an appellant can only ever obtain the benefits of district court review by choosing it

initially, their counsel may feel obligated to pursue that route most of the time so as not to

foreclose the possibility of being able to further develop the record in light of the precarity

of future events—even in the face of the drawbacks of that form of review.

An interpretation of the statute that encourages parties to choose district court

review of all Trademark Board decisions would counteract congressional intent. As this

Court has noted, Ҥ 1071(b)(3) plainly incentivizes trademark applicants to appeal routine

trademark denials to the Federal Circuit.” Shammas, 784 F.3d at 226. And such an

interpretation would also detract from judicial efficiency, with more appellants seeking the

more drawn-out proceedings in district court rather than a quicker review by the Federal

Circuit. 14

14 This case provides a good illustration. Defendant argues that Plaintiffs’ “challenges across multiple tribunals over nearly a decade have come at great expense to the parties and the courts” and that “efficiency and judicial economy” favor continuing Federal Circuit review. Response Br. at 32. Certainly, had Plaintiffs elected Federal Circuit review of both the 2014 and 2017 Trademark Board decisions, this case may have already been resolved. But that is not the proper counterfactual. Rather, had Plaintiffs thought in 2014 that their election of Federal Circuit review was final, they likely would have chosen district court review instead in order to maintain their ability to further develop the record, which had closed before the Trademark Board two years earlier. Initial review of the 2014 decision by the district court would almost certainly have taken longer than the review by the Federal Circuit did—and would have been subject to appeal to this Court, further prolonging the proceedings. And then, after those initial questions related to the 2014 decision were resolved, there would have been further litigation. In other words, we think it highly likely that an initial choice of district court review would have lengthened these proceedings even more.

31 IV.

For the above reasons, we conclude that the waiver language in § 1071 relates only

to the choice of review options for the decision appealed from. In other words, a party

seeking review of a subsequent Trademark Board decision may seek review in either the

Federal Circuit or the district court, even if the Trademark Board’s initial decision was

reviewed by the Federal Circuit. Therefore, the district court erred in dismissing this case

for lack of subject matter jurisdiction. We reverse the dismissal and remand for further

proceedings consistent with this opinion.

REVERSED AND REMANDED