In 2008, the United States Court of Appeals for the Federal Circuit issued eight trademark decisions and designated one of those eight decisions as precedential. These numbers are significantly lower than in recent years. The cases consist of appeals from the Trademark Trial and Appeal Board (“TTAB”), the United States Court of International Trade, and the United States Court of Federal Claims. Of the eight trademark decisions, four focused on substantive issues and four primarily involved procedural issues. The Federal Circuit generally adopted the findings of the lower tribunals, affirming all but one of the eight decisions on appeal. The majority of the decisions were resolved based on longstanding precedent. A few of the cases, however, addressed issues of first impression for the court. In Nasalok Coating Corp. v. Nylok Corp., for example, the Federal Circuit held that a claim for cancellation of a trademark registration is not a compulsory counterclaim for a party defending an infringement action in federal court. Significantly, TTAB procedure provides that such a counterclaim is compulsory in TTAB proceedings under the same circumstances.
Thus, whether a party has waived its right to challenge a trademark registration after failing to seek cancellation of that registration in a prior proceeding will turn on whether that proceeding was a federal court case or a proceeding before the TTAB. Also of note, in Sakar International, Inc. v. United States, the Federal Circuit reversed the Court of International Trade’s finding that it had jurisdiction to consider a party’s challenge to a fine issued by the Bureau of Customs and Border Protection for importing counterfeit products. The Federal Circuit found that the restrictions on importing counterfeit products did not rise to the level of an “embargo,” and thus the challenge to the fines was not within the limited jurisdiction of the Court of International Trade. Each of the Federal Circuit’s 2008 trademark decisions is discussed in detail in this area summary.
Kelly, David M., Bald, Stephanie H. “2008 Trademark Decisions of the Federal Circuit A Review of Recent Decisions of the United States Court of Appeals for the Federal Circuit: Area Summaries.” American University Law Review 58, no. 4 (February 2009): 947-973.