[E-trademarks] Request from INTA Precedential Decisions Task Force

[David Boundy]

A cautionary note on TTAB precedential decisions -- be careful what you
wish for.  The TTAB is not an Article III court.  The Administrative
Procedure Act puts adjudication and rulemaking on two sides of a
"dichotomy."  By design, agency decisions are *not* like Article III
decisions, and do *not* have precedential binding effect.  A few agencies
have a statutory override of that default, but not the USPTO.  Agency
tribunals have a few small areas of "implicit" authority which can carry a
little rulemaking authority, but they're very small. The Federal Circuit
has so held in at least three decisions, *Facebook v. Windy City
Innovations, LLC* (*Windy City II*), 973 F.3d 1321, 1351,
https://scholar.google.com/scholar_case?case=2855537312449971500 (Fed. Cir.
2020) (unanimous additional views); *Facebook, Inc. v. Windy City
Innovations, LLC*, 953 F.3d 1313 (Fed. Cir. Mar. 18, 2020) (*Windy City I*)
(unanimous additional views), *Aqua Prods., Inc. v. Matal*, 872 F.3d 1290,
1327 (Fed. Cir. 2017) (five judge plurality), 1339 (Reyna and Dyk
concurring).  In the waning days of Trump 34, the Department of Commerce
issued a regulation instructing component agencies that they are not to
attach force of law to documents that are not issued with the formality of
regulation (in my view, this regulation basically restated statutory law,
it was just a "get with the program" kick to agencies)
https://www.ecfr.gov/on/2024-12-17/title-15/subtitle-A/part-29 but
President Biden rescinded it effective January 17.  I expect something very
like it to reemerge soon.

In *Apple v. [Director of the Month, now Stewart*] I filed an amicus brief
that explains how the PTAB broke the law by pretending to be an Article III
court and attaching "precedential" weight to its own decisions.  This brief
includes a short overview of what the PTAB can and can't do by precedential
decision https://ssrn.com/abstract=5016833 at pages 21-22.  A longer,
exhaustively-detailed explanation of what an agency can and can't do by
precedential decision is at David Boundy, *The PTAB Is Not an Article III
Court, Part 3: Precedential and Informative Opinions, *AIPLA Quarterly
Journal vol. 47 No. 1 pp. 1-99 (June 2019).  The SSRN edition has updates
updating to reflect later case law (notably *Loper Bright*, *Kisor v Wilkie*,
and *Hyatt v. PTO *, available at SSRN https://ssrn.com/abstract=3258694

Jason, you should read the article.  Start at pages *4-*6 and *34-*41


On Mon, Jan 27, 2025 at 8:37 PM Carl Oppedahl via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Hello listserv members.  I received an inquiry just now from Jason Elster,
> who is a new member of the e-trademarks listserv.  He is a member of INTA's
> Precedential Decisions Task Force.  This task force has a goal of
> substantially increasing the number of precedential decisions issued by the
> Trademark Office’s Trademark Trial and Appeal Board each year.
>
> Members might or might not be familiar with the web page Nomination for
> Designation or De-Designation of PTAB Decisions
> <https://www.uspto.gov/patents/ptab/ptab-decision-nomination>.  This
> submission form allows individuals to nominate any routine decision of the
> Board for designation as precedential or informative.
>
> Jason asked if I thought it would be appropriate for him to post to the
> listserv about this.  And I have encouraged him to do so.  I imagine that
> presently he will post something about this topic.
>
> My own personal view is that it would be helpful if more PTAB decisions
> could be precedential.  There have been quite a few times over the years
> when I would happen upon some decision and would wish that I could have
> cited it in some document, and then I would see that the decision has been
> designated non-precedential.
>
> I guess probably nobody likes to come out and say it, but I think that
> there is a rarely-said-out-loud feeling with some trademark practitioners
> that one worries that when a panel issues a decision that is designated
> non-precedential, this might somehow count as license or permission for the
> author of the decision to ... not flesh out the reasoning quite as fully or
> cogently.  And that if more panels were to crank out more decisions with
> the idea and expectation that they would be precedential, the result would
> be a larger number of higher-quality decisions that would work to
> everybody's benefit.
>
> Having said all of this, I certainly do recognize that some fraction of
> cases necessarily get decided based purely on a narrow set of facts, where
> there is just no reason to think that any later case would have its own set
> of facts that would track so closely as to benefit from the earlier case
> being precedential.  To say this another way, when a case is tied to some
> very narrow set of facts, I am prepared to cut some slack for the author of
> the decision.  I am prepared to accept the decision being a document that
> does not get the benefit of the fine-tuning that would go into a
> precedential decision.
>
> What I do not mean to do here is to speak for Jason.  I am sure he has his
> own goals in terms of inviting practitioners to make use of the form and
> how to describe why he thinks it would be a good idea.
>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>


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