Video game character trademark suit dismissed

Where a man challenged a decision denying his trademark application to register a character in his video game, but his appeal remained pending before the Trademark Trial and Appeal Board, or TTAB, the suit was dismissed. He first had to exhaust the administrative process before seeking judicial review.

Background

Joseph A. Stallard filed this civil action under the Administrative Procedure Act, or APA, to challenge § 1202.10 of the Trademark Manual of Examining Procedure, or TMEP, which provides examining attorneys with guidance on the criteria for evaluating an application to register a character in a creative work as a trademark. That provision was applied in denying Stallard’s application to register a character featured in his video game. The United States Patent and Trademark Office, or PTO, has filed a motion to dismiss for lack of subject matter jurisdiction.

Analysis

The sole issue before the court is whether it has subject matter jurisdiction over

plaintiff’s APA and ultra vires challenge of TMEP § 1202.10 given that his trademark registration appeal remains pending before the Trademark Trial and Appeal Board, or TTAB.

Determining whether a statutory review scheme is intended to be exclusive involves a two-step inquiry. First, the court must consider whether it is “fairly discernible” from the statute that Congress intended that review of covered agency actions to “proceed exclusively through the statutory review scheme,” which involves examining the statute’s text, structure and purpose. Second, the court determines “whether plaintiff[‘s] claims are of the type Congress intended to be reviewed within this statutory structure.”

The structure of the Lanham Act expressly provides for a comprehensive administrative and judicial review scheme, which shows Congress’s intent to channel claims concerning a registration decision first to an administrative forum (the TTAB) and then to an Article III court for judicial review either by direct appeal to the Federal Circuit or by a civil action in a federal district court. The text and structure of the Lanham Act therefore support the conclusion that Congress intended for the statutory review scheme to be exclusive.

This conclusion is consistent with another decision in this district which found that “the statutory scheme governing the challenge to a trademark’s registration is comprehensive” and held that a suit under the APA challenging the PTO’s decision to renew a trademark registration was precluded by the Lanham Act, because the statute provided that disputes over a trademark’s registration are to be resolved through inter partes cancellation proceedings. As defendant points out, courts have found that congressional intent to preclude extra­statutory review is “fairly discernible” from the text and structure of similarly comprehensive statutory schemes. The purpose of the Lanham Act also supports the conclusion that Congress implicitly intended the statutory review scheme to be exclusive.

The second step of the framework involves considering three factors: “(1) whether the statutory scheme ‘foreclose[s] all meaningful judicial review’ … (2) the extent to which the plaintiff’s claims are ‘wholly collateral’ to the statute’s review provisions, and (3) whether ‘agency expertise could be brought to bear on the … questions presented.’” The court finds that plaintiff’s claims challenging TMEP § 1202.10 are the type that Congress intended to be reviewed within the administrative and judicial review framework provided for by the Lanham Act, and it is therefore “fairly discernible” that the Lanham Act’s review scheme was intended to preclude this court from having jurisdiction under the APA over plaintiff’s claims.

Plaintiff has an opportunity for comprehensive judicial review of his claims concerning TMEP § 1202.10, but he must wait until the conclusion of the TTAB appeal process. Allowing plaintiff to bring his claims to federal court prematurely would destroy the Lanham Act’s comprehensive scheme for judicial review provided for by Congress without any indication that Congress intended such action.

Defendant’s motion to dismiss granted.

Stallard v. United States Patent and Trademark Office, Case No. 1:22-cv-1236, March 1, 2023. EDVA at Alexandria (Brinkema). VLW 023-3-103. 25 pp.