American University Law Review
August, 1998
1997 SURVEY OF TRADEMARK DECISIONS BY THE COURT OF APPEALS FOR THE FEDERAL CIRCUIT
Julia Anne Matheson
Douglas A. Rettew*
INTRODUCTION
The year of 1997 presented the United States Court of Appeals for the Federal Circuit with the opportunity to consider a variety of trademark-related issues, both procedural and substantive. The court's decisions provide trademark practitioners with critical guidance on a number of fronts. Among the year's highlights, the court addressed the quantum and nature of use necessary to support registration under the Trademark Law Revision Act of 1988. It also reviewed the scope of the Trademark Trial and Appeal Board's (the "Board") authority to issue sanctions against uncooperative and obstructive participants in inter partes proceedings. In two separate decisions, the court considered the scope of arguments permissible in an ex parte proceeding, and in another, it affirmed a Board decision addressing the registrability of single-color marks in the wake of the U.S. Supreme Court's decision in Qualitex Co. v. Jacobson Products Co. As in prior years, Board decisions fared better than district court decisions in appeals to the court. Whereas Board decisions were upheld in more than two-thirds of the cases appealed to the court, more than fifty percent of district court decisions were either partially or completely reversed.
* Both Julia Matheson and Douglas Rettew are trademark associates at the Washington, DC-based intellectual property law firm of Finnegan, Henderson, Farabow, Garrett & Dunner and are adjunct professors of trademark law at the George Washington University, National Law Center.
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