The opinion
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
EL BURRO, INC., Case No. 23-cv-03782-VC
Plaintiff,
ORDER DENYING MOTION TO
v. DISMISS
KNUCKLE SANDWICH LLC, Re: Dkt. No. 20
Defendant.
Knuckle Sandwich is wrong to argue that the failure to comply with the five-day deadline
under 37 C.F.R. § 2.145(c)(3) for notifying the Trademark Trial and Appeal Board of the filing
of a civil action leaves district courts without jurisdiction. Nothing in the statute governing the
procedure for filing a civil action following a TTAB decision imposes a requirement to notify the
TTAB. See 15 U.S.C. § 1071(b). The statute includes only the requirement that a party may
bring a civil action “within such time after such decision, not less than sixty days, as the Director
appoints or as provided in subsection (a).” Id. And Knuckle Sandwich does not dispute that El
Burro complied with this statutory mandate by filing this case within the necessary time frame.
The five-day TTAB notice provision is only found in 37 C.F.R. § 2.145(c)(3). That should be the
end of any jurisdictional argument. See Bowles v. Russell, 551 U.S. 205, 212-13 (2007).
Knuckle Sandwich points to two district court cases and several Federal Circuit court
cases in support of its argument that a “failure to satisfy the requirements in the CFR even where
the party technically complied with the related statute” could deprive a court of jurisdiction. But
these cases are distinguishable. The district court cases involve environmental statutes that
require plaintiffs to provide notice of an alleged violation within a prescribed time limit before
filing suit. See Stark-Tusc-Wayne Joint Solid Waste Management District v. American Landfill,
Inc., No. 5:10-CV-00119, 2012 WL 4475444, at *2-3 (N.D. Ohio Sept. 26, 2012); Mid-New York
Environmental & Sustainability Promotion Committee, Inc. v. Dragon Springs Buddhist, Inc.,
647 F. Supp. 3d 286, 291-92 (S.D.N.Y. 2022). Because the statutes are vague as to the contents
of such notices, the regulations specify what information must be included. Thus, in these cases,
the courts determined that a failure to comply with the notice requirements, as contemplated in
the statute and further specified in the regulation, meant that jurisdiction was lacking. But there
is no statutory notice requirement here; § 1071(b) does not say anything about the party filing
suit being obligated to notify the TTAB.
As for the Federal Circuit cases Knuckle Sandwich cites, three of them deal with parties
who, unlike El Burro, failed to file their Federal Circuit appeals within the time limit set forth in
§ 1071(a) and further specified in the C.F.R. See Flores v. Corporacion Habanos, S.A., 543 Fed.
Appx. 1018, 1019 (Fed. Cir. 2013); In re Maslyukov, 346 Fed. Appx. 578, 579 (Fed. Cir. 2009);
Boyle v. Barclays Global Investors, N.A., 50 Fed. Appx. 986, 987 (Fed. Cir. 2002). And one case
is merely an unpublished order dealing with a party’s failure to comply with an explicit provision
in § 1071(a)(2) saying that when an appeal is filed with the Federal Circuit, “the appellant shall
file in the United States Patent and Trademark Office a written notice of appeal directed to the
Director” within at least 60 days. See Stocker v. General Conference Corp. of Seventh Day
Adventist, 95 F.3d 1168 (Fed. Cir. 1996). In Stocker, the appellee filed a motion to dismiss based
on a failure to comply with this notice requirement, and the appellant did not respond, so the
appeal was dismissed. Id. It’s not clear whether the Federal Circuit was called upon to grapple
with the question whether § 1071(a)(2) is jurisdictional. It seems likely that it’s simply a
housekeeping requirement with an excusable deadline rather than a jurisdictional requirement.
After all, it is not a time limit for filing an appeal, but a time limit for notifying the agency that
an appeal has been taken (presumably so that the agency knows to transmit the record to the
Court of Appeals). But in any event, there is no comparable requirement in § 1071(b).
Even if a federal regulation could somehow impose a jurisdictional requirement absent
any statutory authorization, there is no evidence that the provision at issue here was intended to
do that. Instead, the language in § 2.145(c)(3) suggests that it’s a housekeeping measure to help
the TTAB facilitate “the orderly transaction of its business.” Bowles, 551 at 212 (explaining that
a time limit for filing an appeal imposed by statute is jurisdictional whereas a time limit for
appeal imposed only by courts “for the orderly transaction of its business” is not jurisdictional).
The regulation itself explains that not filing “the required notice can result in termination of the
Board proceeding.” This indicates that notice is necessary for the TTAB to keep track of which
cases have been filed in district courts and which cases can be closed. 37 C.F.R. § 2.145(c)(3).
There is no language suggesting that the regulation was intended to make notification to the
TTAB a prerequisite to a federal court’s ability to hear a civil suit.
Accordingly, the motion to dismiss is denied. Knuckle Sandwich’s Answer is due within
14 days of this order.
IT IS SO ORDERED.
Dated: December 20, 2023 LE.
VINCE CHHABRIA
United States District Judge