Order of interest – Sua sponte panel reversal and causes of action to appeal from the TTAB

Federal Circuitry tracks important unreported orders and highlights those that may be of interest to practitioners before the Court.

Case:  Kaszuba v. Iancu, No. 20-1208

Originating tribunal:  Trademark Trial and Appeal Board

Dates:  May 5, 2020; June 19, 2020

Panel:  Lourie, Dyk, Reyna (per curiam)

Result:  Appeal dismissed; appeal later reinstated and summarily affirmed instead

These recent orders in Kaszuba v. Iancu caught our eye because they involve a motions panel sua sponte reversing its own prior order and addressing an interesting statutory question about causes of action to appeal from the TTAB under 15 U.S.C. § 1071(a)(1).

Appellant Kaszuba owns a registered word mark to “COYOTE MOTORCYCLES.”  But he failed to file a required declaration and renewal application by the deadline.  Kazuba blamed this failure on problems with the PTO’s electronic filing system, which prevented him from filing until after the midnight Eastern Time cutoff.  After the PTO cancelled his registration, he petitioned the Director to reinstate it, arguing that the PTO discriminates against those outside the Eastern Time Zone.  The Director dismissed his petition, and Kaszuba appealed.

On appeal, the PTO filed a notice that it was not filing a certified list because it believed that the Court lacked jurisdiction over the appeal.  As one ground for that, the PTO argued that 15 U.S.C. § 1071(a)(1), in relevant part, authorizes only “a registrant who has filed an affidavit” or “an applicant for renewal” to appeal, but Kaszuba never successfully filed an affidavit or renewal application.  Presumably in response to that, the Court issued a show cause order directing Kaszuba to explain the basis for the Court’s jurisdiction.

After briefing on the show cause order, a motions panel ordered the appeal dismissed.  The panel’s order explained that the issue was not one of jurisdiction—which goes to court power to hear a case—but one of cause of action—which goes to whether a particular plaintiff can invoke a court’s power.  The order concluded that Kaszuba lacked a cause of action because the ordinary meaning of “an applicant for renewal” in Section 1071(a)(1) excludes a person “who merely attempted or prospectively wants to file an application.”

Yet that was not the end of the appeal.  Roughly six weeks after dismissing the appeal but before the mandate issued, the same motions panel issued two new orders, apparently sua sponte.  One order vacated the prior order and reinstated the appeal, and the other summarily affirmed (rather than dismissed) the appeal.

The new summary affirmance order, critically, interpreted Section 1701(a)(1) differently and concluded that Kaszuba did have a cause of action.  This time, the Court held that the statutory term “applicant for renewal” is “broad enough to encompass someone who formally applied as well as someone who was in the process of completing the renewal application but was unlawfully denied the opportunity to file it.”  Because Kaszuba alleged that included him, he had a cause of action and could appeal.  In the end, though, the Court saw no merit to Kaszuba’s appeal and so summarily disposed of the case without any briefing beyond the show cause order.

One interesting question about this case is what led to the sua sponte change.  One possibility is that a colleague within the Court raised an issue about the original order, leading the panel to reconsider.  Because the original dismissal order was nonprecedential, the clerk’s office likely issued it under the Court’s internal operating proceedings without circulating it to the entire Court.  Fed. Circuit IOP #10.5.  That means the first chance other judges would have to consider the panel’s interpretation of 15 U.S.C. § 1071(a)(1) was after the order issued.  It’s thus possible one or more judges could have approached the panel after the order issued.  Although we’ll likely never know because such deliberations are not public, if that did happen here it would be part of a great tradition of collegiality at the Federal Circuit.