Petition — Formica Corp. v. Lefkowitz

MAR 26 1979

ABL RODAK, JR., CLERK

IN THE

Supreme Cowt of the United States

OCTOBER TERM, 1978

@8-1477

Formica CoRPORATION,

Petitioner,

Vv.

Saut F. Lerxowrrz, Davin J. Kera and Janet E. Ricsg,

Members, Patent and Trademark Office Trademark Trial

and Appeal Board, anp FreperAL Trape CoMMIssIoN,

Respondents.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF CUSTOMS

AND PATENT APPEALS

Wa .tTeER Love STRATTON

30 Rockefeller Plaza

New York, New York 10020

Attorney for Petitioner

March 26, 1979

INDEX

CrrTaTIoNs NES

EISEN i

Ce nuvesnouuaes

ESE

Statutory Provision INvoLvep

STATEMENT OF THE CASE

Reasons For GRANTING THE WRIT

I. Tse Sore Question Ratsep By THs PETITION

FOR CERTIORARI IS WHETHER THE CCPA’s

DentaAL OF ManpaMus RESTED ON AN ERRONE-

ous LecaL STANDARD

Tl. Tere 1s A CLEAR AND SUBSTANTIAL CONFLICT

BETWEEN THE CrrcuITs ON Wuat LEGAL STAND-

ARD SHOULD BE UsEep In MANDAMUS CASES ........

A. The Test Used by the CCPA, Third and

Eighth Circuits -

B. The Test Used by the Ninth Circuit ........

C. The Test Used by the District of Colum-

bia, First, Second and Sixth Circuits ........

Til. THe Basts Upon Wuicu tHe CCPA Deniep

Manpamus Was CLEARLY ERRONEOUS ................

toms and Patent Appeals) ....

ii

CITATIONS

PAGE

Cases

American Airlines, Inc. v. Forman, 204 F.2d 230 (3rd

Oe I aia ah sins Lectern ssltipenbabaiphouaenmeaieien 7n, 8, 10, 11

American Fidelity Fire Insurance Co, v. United States

District Court, 538 F.2d 1371 (9th Cir. 1976) ........ 7n, lin

Bancohio Corp. v. Fox, 516 F.2d 29 (6th Cir. 1975) ... 14

Bauman vy. United States District Court, 557 F.2d 650

CN TENET haccrcetibsdientensenadns wee dN, 11, 12

Belcher v. Grooms, 406 F.2d 14 (5th Cir. 1968) ............ 13n

Blaski v. Hoffman, 260 F.2d 317 (7th Cir. 1958), af"4,

363 U.S. 335 (1960) eocrossesse-----

Brenner v. Manson, 383 U.S. 519 (1966) ‘ 2

Cohen v. Beneficial Industrial Loan Corp., 337 U.S.

541 (1949) 5

Colonial Times, Inc. v. Gasch, 509 F.2d 517 ics C. Cir.

a es 12

De Beers Consolidated Mines, Ltd. v. United sensei

ee eran ar ae 5

Ellicott Machine Corp. v. Modern Welding Co., 502

BF IIE TIN BITS sesstcccnninntevnihtdighseninieesecossecossansssaons 13n

In re Elisberg, 446 F.2d 954 (1st Cir, 1971) 000... 14

Federal Trade Commission v. Elder Mfg. Co., 84

IP 8 Sie yD |) een eee 3, 8

Federal Trade Commission v. Formica Corp., 200

U.S.P.Q. 182 (TTAB 1978) .... i 1,3

General Tire & Rubber Co. v. Watkins, 326 F.2d 926

(4th Cir.), cert. denied, 377 U.S. 909 (1964) -........... 13n

In re April 1977 Grand Jury Subpoenas, 573 F.2d 936

OO acacia ata lili ania nsndulbcentes 14

Holub Industries, Inc. v. Wyche, 290 F.2d 852 (4th

Cit. 2061) «x... easdadenhinihgsteliecag calla tenet dicigasibnanhiogs 13n

Kaufman v. Edelstein, 539 F.2d 811 (2d Cir. 1976)....4, 5, 13

iii

PAGE

La Buy v. Howes Leather Co., 352 U.S. 249 (1957) .... 5, 10,

15, 17,18

In re ieicopsliihe Trust Company of the City of New

hs ee Ne IED stecttencksibinsisiscliianiinidncstinntinnine 7

Miller v. United States, 403 F.2d 77 (2d Cir. 1968) .. 14

Nixon v. Sirica, 487 F.2d 700 (D.C. Cir. 1973) ............ 14

Pfizer, Inc. v. Lord, 522 F.2d 612 (8th Cir. 1975), cert.

amen, GOE UTE, SID CRIB) ceca iccccccecnsseecuiniesstnesspsiontven 7n, 10

Roche v. Evaporated Milk Ass’n, 319 U.S. 21 (1948) 15

Rodgers v. United States Steel Corp., 508 F.2d 152

(3rd Cir.), cert. denied, 423 U.S. 832 (1975) ............ 11

Rodgers v. United States Steel Corp., 536 F.2d 1001

I Aan IIE ids rsa tnceioceocinesderaseeciaeinsacesecdiitscongiehitahachioes 11

Sanders v. Russell, 401 F.2d 241 (5th Cir. 1968) ........ 13n

Schlagenhauf v. Holder, 379 U.S. 104 (1964) -000000... 5, 10,

16, 17, 18

Stein v. Collinson, 499 F.2d 91 (8th Cir. 1974) -........... 10

Thermtron Products, Inc. v. Hermansdorfer, 423 U.S.

RAL A ARE OE aE CR EOE eee 15

United States Alkali Export Ass’n, Inc. v. United

SFU BA Ti cls. SO, RROD sechnscetenntteniinecncetienstenanneee 5, 7

United States v. Boe, 543 F.2d 151 (CCPA 1976) ........ 7

United States v. DiRusso, 548 F.2d 372 (1st Cir.

EERE Reese Roe ny ee aD 14, 17n

United States v. Hughes, 413 F.2d 1244 (5th Cir.

1969), vacated and remanded as moot sub nom.

United States v. Gifford-Hill-American, Inc., 397

I sis iesieisicnteiliasinsniteidhcarslacricledivitidinhcecthlsatpibeicontntis 13n

United States v. Sherman, 581 F.2d 1358 (9th Cir.

RR ATR cic 7 AAR laa OR CCN Ee OE 7n, 11

United States v. United States District Court, 444

F.2d 651 (6th Cir. 1971), aff'd, 407 U.S. 297

Oh PRL SRE RS SE AAR I OC 13, 17n

iv

ieee PAGE

15 U.S.C. § 1062(c) Soe

15 U.S.C. § 1064 .......... eo be oe ee 3

iW a eee 4

OUSG: 630. eee il

28 U.S.C. § 1292(b) . On

28 U.S.C. § 1651(a) .... ied 2

Secondary Authorities

1957 Annual Report of the Director of the Adminis-

trative Office of the United States Courts (1957) ..... 14n

1977 Annual Report of the Director of the Adminis-

trative Office of the United States Courts (1977) .... 14n

68 Trademark Rptr. (1978) eee

P. Bator, P. Mishkin, D. Shapiro and H. Wechsler,

Hart and Wechsler’s The Federal Courts and the

Federal System (2d ed. 1973) .... 14n, 17n

Moore’s Federal Practice (2d ed. 1975) . 14n

C. Wright, A. Miller, E. Cooper and E. Gressman,

Federal Practice and Procedure (1977) ............... 14n, 17n

IN THE

Supreme Court of the United States

OCTOBER TERM, 1978

No.

ee

Formica CorPORATION,

Petitioner,

Vv.

Saut F. Lerxowirz, Davin J. Kera and Janet E. Rice,

Members, Patent and Trademark Office Trademark Trial

and Appeal Board, anp Frperat Trape CoMMIssIoN,

Respondents.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF CUSTOMS

AND PATENT APPEALS

The petitioner, Formica Corporation, respectfully prays

that a writ of certiorari issue to review the judgment of the

United States Court of Customs and Patent Appeals

entered in this proceeding on January 25, 1979.

Opinion Below

The opinion of the Court of Customs and Patent Appeals,

reported at 200 U.S.P.Q. 641 (1979), appears in the Appen-

dix hereto.

The decision of the Trademark Trial and Appeal Board,

vacation of which was sought in the proceeding before the

Court of Customs and Patent Appeals, is captioned Fed-

eral Trade Commission v. Formica Corp. and is reported

at 200 U.S.P.Q. 182 (1978).

2

Jurisdiction

The judgment of the Court of Customs and Patent Ap-

peals was entered on January 25, 1979. This petition for

certiorari was filed within 90 days of that date. This

Court’s jurisdiction is invoked under 28 U.S.C. § 1256.!

Question Presented

Whether the Court of Customs and Patent Appeals erred

in holding that mandamus could not issue to correct a jur-

isdictional ruling of the Trademark Trial and Appeal

Board involving novel and-important questions of “pure

law” in any case in which a “rational and substantial legal

argument” could be made on both sides of the controversy.

Statutory Provision Involved

United States Code, Title 28

§ 1651, Writs

(a) The Supreme Court and all courts established by

Act of Congress may issue all writs necessary or

appropriate in aid of their respective jurisdictions

and agreeable to the usages and principles of law.

Statement Of The Case

This mandamus proceeding arises out of a trademark

cancellation proceeding brought against Formica Corpora-

tion by the Federal Trade Commission.

On May 31, 1978, the Federal Trade Commission filed a

petition in the Trademark Trial and Appeal Board of the

United States Patent and Trademark Office (“TTAB”) to

cancel Trademark No. 421,496 for the trademark “FOR-

MICA”. That cancellation petition, assigned Cancellation

1. It is now clearly established that this Court has jurisdicti

to grant a writ of certiorari running to the Court of a Pesseape

Patent Appeals. Brenner v. Manson, 383 U.S. 519 (1966).

3

No. 11,955, described the “FORMICA” trademark as hav-

ing been registered under the Trademark Act of 1905 and

republished under §12(¢) of the Lanham Act of 1946 (15

U.S.C. §1062(c)), and sought cancellation of the mark

under $14 of that Act (15 U.S.C. § 1064), alleging that

the “FORMICA” trademark was “registered on the prin-

cipal register established by the Lanham Trademark Act

and has become the common descriptive name of the

articles and substances included in [Formica Corpora-

tion’s] description of goods.” Federal Trade Commission

v. Formica Corp., 200 U.S.P.Q. at 186. |

Formica Corporation moved to dismiss the cancellation

proceeding on the ground that since the Federal Trade

Commission’s power to challenge trademarks was limited

to trademarks registered on the principal register estab-

lished by the Lanham Act, the FTC had no standing to

apply for cancellation of trademark registrations, includ-

ing registration of the “FORMICA” mark, made under acts

prior to the Lanham Act. On November 8, 1978, the

TTAB, expressly overruling the only precedent, Federal

Trade Commission v. Elder Mfg. Co., 84 U.S.P.Q. 429

(Comm’r 1950), denied Formica Corporation’s motion to

dismiss. Federal Trade Commission v. Formica Corp.,

supra.

Two weeks later Formica Corporation brought the pre-

sent action, a petition for a writ of mandamus or prohibi-

tion, in the United States Court of Customs and Patent

Appeals (“CCPA”). That petition sought a writ, directed

to respondents Lefkowitz, Kera and Rice as members of

the TTAB, requiring them to vacate their opinion and

order of November 8, 1978 and to dismiss the cancellation

proceeding for lack of jurisdiction. The question raised by

the mandamus petition was whether as a matter of law the

TTAB was correct in overruling the only precedent and

holding that a trademark registered under the 1905 Act

and republished under the Lanham Act is a trademark

4

registered on the principal register established by the

Lanham Act.

On December 12, 1978 the Federal Trade Commission,

which had been joined as a party to the mandamus pro-

ceeding, filed a “Notice of Election” and an affidavit stating

that any present, or future, review of any decision of the

TTAB, in the cancellation proceeding against Formica

Corporation, would be conducted in a United States

District Court pursuant to Section 21(b) of the Lanham

Act (15 U.8.C. § 1071(b)) and thus would not be reviewable

by appeal to the CCPA. The Federal Trade Commission

and the individual respondents then moved for dismissal of

the petition for mandamus on the ground that this “elec-

tion” by the FTC ousted the CCPA of jurisdiction.

On January 25, 1979, though sustaining its jurisdiction

over this controversy, the CCPA expressly declined to

reach the merits of the legal question petitioner sought to

have reviewed, denying mandamus before even receiving

respondents’ replies on the merits of the mandamus peti-

_ tion. See Appendix, pp. A9-A15. The CCPA declined to

reach the merits, and denied the petition for mandamus, in

the belief that it was legally barred from issuing a writ of

mandamus or prohibition in any case in which a “rational

and substantial legal argument” could be made on both

sides of the controversy.

Reasons For Granting The Writ

The Court of Customs and Patent Appeals in this case,

and the Courts of Appeals generally, continue to struggle

to establish a rational and workable standard upon which

to decide petitions for mandamus directed to the lower

courts. Perhaps the best statement of the need for further

guidance from this Court is found in Judge Friendly’s

opinion in Kaufman vy. Edelstein, 539 F.2d 811 (2d Cir.

1976) :

4)

That [the law concerning mandamus] has departed

in some degree [from the decisions in U.S. Alkali? and

De Beers*] is clear enough; what is unclear is how far.

Probably this cannot be completely determined until

the [Supreme] Court speaks again; there is an obvious

tension between the final judgment rule and increased

use of the prerogative writs to review orders that are

interlocutory even in light of Cohen,* which must be re-

solved on a more principled basis than how much a

court of appeals disapproves the district court’s ruling

in the particular ease. Jd. at 817.

Judge Friendly’s conclusion that guidance from this

Court is much needed is, petitioner respectfully submits,

well taken.

The uncertainty and conflict found in the decisions of

the Courts of Appeals can be traced to how, or whether,

each circuit has attempted to implement this Court’s deci-

sions in Schlagenhauf and La Buy, infra. The Courts of

Appeals’ varied responses to the teachings of those two

eases have led to the use of at least three different tests

to determine under what circumstances a writ of mandamus

will issue. (Point II, below).

Petitioner submits that this action presents an excellent

framework for review of this obviously difficult matter.

Here, because of the extremely restrictive standard em-

ployed by the CCPA in denying mandamus, the CCPA did

not reach the merits of the jurisdictional question to which

the mandamus petition was addressed. Thus, unlike most

mandamus cases, this case comes before this Court unen-

cumbered by disputed facts or extraneous issues of law.

2. United States Alkali Export Ass’n v. United States, 325 U.S.

196 (1945).

3. De Beers Consolidated Mines, Ltd. v. United States, 325 U.S.

212 (1945).

4. Cohen v. Beneficial Industrial Loan Corp., 337 U.S. 541

(1949).

6

The only question raised by this petition for certiorari is

whether the CCPA employed an erroneous legal standard

when it held that new, unsettled or difficult questions of law

relating to a trial court’s jurisdiction cannot be reviewed

by mandamus (Point I, below). That standard cannot be

reconciled with decisions in at least five circuits (Point

IT, below) and, petitioner respectfully submits, the CCPA’s

decision should now, in any event, be rejected on its merits

(Point IN below). Guidance from this Court is necessary

if uniformity among the circuits is to be obtained.

THE SOLE QUESTION RAISED BY THIS PETITION FOR

CERTIORARI IS WHETHER THE CCPA’S DENIAL OF

MANDAMUS RESTED ON AN ERRONEOUS LEGAL

STANDARD

The TTAB, as previously noted, denied petitioner’s

motion to dismiss, which motion had rested “on the ground

‘that the FTC is without statutory authority to bring the

instant cancellation proceeding’ ” (Appendix, p. A2) and,

therefore, the TTAB must dismiss for want of jurisdiction

(Appendix, pp. Al10-A11). Petitioner sought review by

mandamus.

That mandamus petition brought to the fore the TTAB’s

own reservations about its decision. Thus, the TTAB mem-

bers, while unsuccessfully moving to dismiss the mandamus

petition on a technical ground (see Appendix, p. A9, n.6),

in fact made it clear to the CCPA that they would welcome

immediate review of the question of their jurisdiction to

hear the cancellation proceeding. The TTAB members’

brief states:

In view of the issue presented on the merits by the

PETITION, it would appear that this case might

7

well be a proper case to reach the question of whether

the TTAB does have jurisdiction over the subject

matter even though no final decision has been rendered

by the TTAB in the cancellation proceeding.2

2. The [CCPA] is hereby advised that respon-

dents Lefkowitz, Rice and Kera, sitting as a hoard

pursuant to 15 U.S.C. § 1067, would like to have

“certified” the question of the board’s *urisdiction

over the cancellation proceeding to a federal court

had there been statutory or other authority to do

so. Compare 28 U.S.C. §§ 1254(3), 1255(2), and

1292(b). See also Lehman Bros. v. Schein, 416

U.S. 386 (1974). (emphasis added) (TTAB Brief,

dated 12/12/78, p. 4).

The TTAB members’ brief goes on to argue that the law

supports CCPA review of the TTAB’s decision by manda-

mus, and cites four cases as supporting the CCPA’s review

power. United States Alkali Export Ass’n v. United States,

supra; In re Metropolitan Trust Company of the City of

New York, 218 U.S. 312 (1910); Blaski v. Hoffman, 260

F.2d 317 (7th Cir. 1958), aff’d, 363 U.S. 335 (1960); and

United States v. Boe, 543 F.2d 151 (CCPA 1976). (TTAB

Brief, dated 12/12/78, p. 4).

However, petitioner, and the TTAB, did not obtain a

review on the merit because the CCPA sua sponte concluded

that a twenty-five year old line of cases’ precluded it from

5. This line of cases began with American Airlines, Inc. v. For-

man, 204 F.2d 230, 232 (3rd Cir. 1953) and continued through

Pfizer, Inc. v. Lord, 522 F.2d 612, 615 (8th Cir. 1975), cert. denied,

424 U.S. 950 (1976) and American Fidelity Fire Insurance Co. v.

United States District Court, 538 F.2d 1371 (9th Cir. 1976). It

should be noted however, that the Ninth Circuit has since abandoned

the American Airlines case. Bauman v. United States District Court,

557 F.2d 650 (9th Cir. 1977); United States v. Sherman, 581 F.2d

1358 (9th Cir. 1978). See Point II-B, below.

8

issuing a writ of mandamus in any case that turns on a hard

question of law. (Appendix, p. Al2).

The CCPA found that the TTAB’s decision turned on “a

pure question of law involving no disputed facts” (emphasis

in original; Appendix, p. A9, n.6). Based on the CCPA’s

own research, it found that “there was some indication”

that respondents’ view was correct, and found that there

was only one decision on point, Federal Trade Commission

v. Elder Mfg. Co., supra, that “[n]o court has ever passed

on this issue” (Appendix, p. A13), and that the legislative

_ history was ambiguous.

The CCPA opinion then quotes as the basis for its deci-

sion the test articulated in American Airlines:

If a rational and substantial legal argument can be

made in support of the questionable [sic] jurisdic-

tional ruling, the case is not appropriate for manda-

mus. ... (emphasis supplied by the CCPA; Appen-

dix, p. A12).

On that basis the CCPA concluded that it could not

properly consider the case on the merits, saying:

Where, as here, the law at the time of the hearing on

Formica Corporation’s motion was in such an unset-

tled state, the issue was definitely one for which “a

rational and substantial legal argument [could have

been] made” in support of either position. We can-

not fault the TTAB for deciding the motion to dis-

miss as it did under these circumstances.

(emphasis added; Appendix, p. Al4).

Petitioner submits that the CCPA decision misses the

point of the mandamus decisions rendered by this Court

since the Third Cireuit’s 1953 American Airlines decision.

No one was asking the CCPA to find fault with the TTAB.

The CCPA was simply being asked to give guidance to a

lower court on an undecided question of law.

9

Yet the CCPA read decisions of the Third and Highth

Circuits as precluding it from reaching the merits of the

mandamus petition once it concluded that colorable argu-

ments could be made on each side of the case. Thus the

CCPA denied mandamus, not because it thought the TTAB

was correct, nor because it believed that appeal provided

an adequate means of review,° nor even because in an exer-

cise of discretion the CCPA felt it better not to disturb the

decision below.

The CCPA decision presents a clearly articulated stand-

ard based on a concise and undisputed record. The CCPA

plainly held that it could not grant mandamus once it was

established that each side’s attorneys were sufficiently cre-

ative to construct plausible arguments in support of their

clients’ claims. This holding by the CCPA clearly conflicts

with the law of at least five circuits, and, petitioner sub-

mits, could not in any event be a proper test for deter-

mining whether an appellate court has the power to grant

mandamus.

6. If this case must be tried to judgment before the TTAB, the

FTC has stated that, regardless of outcome, rather than take (or

allow) an appeal to the CCPA it will force a trial de novo in a district

court. Thus, assuming that ¢he FTC adheres to this position, after

a full trial on the merits the parties will be before a district court,

on a motion to dismiss, on exactly the same grounds now presented

to the TTAB and CCPA, but with the difference that the district

court would be able to certify the question pursuant to 28 U.S.C.

§ 1292(b) or, failing that, as will appear below, in at least four

circuits the Courts of Appeals would almost certainly consider a

mandamus petition on the merits.

It should also be noted that Commissioner Dixon of the FTC has

publicly stated that the FTC expects to bring more trademark cancel-

lation proceedings. See 68 Trademark Rptr. 469-70 (1978). Thus,

absent review of the underlying question by mandamus, there is a

real prospect of several more cancellation proceedings being brought

before any Article III court decides whether the FTC has the legal

power to bring such actions.

10

THERE IS A CLEAR AND SUBSTANTIAL CONFLICT

BETWEEN THE CIRCUITS ON WHAT LEGAL STAN.

DARD SHOULD BE USED IN MANDAMUS CASES

The varions federal appellate courts use at least three,

quite different, tests in determining whether mandamus

should issue. These differing tests are:

A. The Test Used by the CCPA, Third and Eighth

Circuits.

The CCPA, in this action, the Eighth Cireuit and, appar-

ently, the Third Circuit continue to stand behind the

quarter-century-old test enunciated in American Airlines,

Inc. v. Forman, 204 F.2d 230, 232 (3rd Cir. 1953)’ which

precludes review by mandamus of any question that can be

seriously argued by both sides. Of the tests used by the

various circuits, the one adopted by the CCPA employs the

most restrictive interpretation of this Court’s pre-1953

mandamus cases and fails to take account of this Court’s

decisions in Schlagenhauf* and La Buy.?

Nevertheless, this test was used by the CCPA in denying

mandamus in this action, and it is clearly the current law

in the Eighth Cireuit, Stein v. Collinson, 499 F.2d 91, 94

(Sth Cir. 1974) and Pfizer, Inc. v. Lord, 522 F.2d 612, 615

(8th Cir. 1975), cert. denied, 424 U.S. 950 (1976).1° The

Third Cireuit has not overruled the American Airlines test,

7. As appears above at p. 8, this test was quoted in, and formed

the basis for, the CCPA’s January 25, 1979 opinion and judgment

herein. See Appendix, p. Al2. —

8. Schlagenhauf v. Holder, 379 U.S. 104 (1964).

9. La Buy v. Howes Leather Co., 352 U.S. 249 (1957).

10. The denial of mandamus was not called into question by that

petition for certiorari.

11

but neither has it applied the test recently, so its status in

that cireuit is in doubt. See Rodgers v. United States Steel

Corp., 508 F.2d 152, 161 (3rd Cir.), cert. denied, 423 U.S.

832 (1975); Rodgers v. United States Steel Corp., 536

F.2d 1001, 1006 (3rd Cir. 1976).

B. The Test Used by the Ninth Circuit.

Reacting to the intervening decisions of this Court, the

Ninth Cireuit has turned away from the American Airlines

test,!! and adopted a set of five “guidelines” for use in

mandamus cases:

(1) The party seeking the writ has no other ade-

quate means, such as a direct appeal, to attain the

(2) The petitioner will be damaged or prejudiced

in a way not correctable on appeal. (This guideline

is closely related to the first.) ...

(3) The district court’s order is clearly erroneous

as a matter of law....

(4) The district court’s order is an oft-repeated

error, or manifests a persistent disregard of the fed-

eral rules... .

(5) The district court’s order raises new and im-

portant problems, or issues of law of first impres-

shoe. ...

(citations omitted) Bawman v. United States District

Court, 557 F.2d 650, 654-55 (9th Cir. 1977).

See United States v. Sherman, 581 F.2d 1358, 1361 (9th

Cir. 1978).

Even the Ninth Cireuit, however, confesses that in reality

these guidelines fail to provide much direction. “The

11. The American Airlines test was last followed by a panel of

the Ninth Circuit in 1976. American Fidelity Fire Insurance Co. v.

United States District Court, 538 F.2d 1371, 1374 (9th Cir. 1976).

12

considerations are cumulative and proper disposition will

often require a balancing of conflicting indicators.”

Bauman vy. United States District Court, 557 F.2d at 655.

Indeed, the Ninth Cireuit’s indicators must often conflict

since, as is the situation here, the case will be rare indeed

in which a trial court can be said to have been “clearly

erroneous as a matter of law” (guideline 3) concerning a

question so unsettled as to be fairly called “new” or one of

“first impression” (guideline 5).

C. The Test Used by the District of Columbia, First,

Second, and Sixth Circuits.

The District of Columbia, First, Second and Sixth Cir-

cuits have for their part adopted loosely defined standards

which, though lacking the precise articulation of the CCPA,

Third, Eighth and Ninth Cireuit tests, do strive for a ra-

tional basis for decisions on mandamus petitions. Because

the phrasing of the criteria used by these courts varies con-

siderably, it is instructive to look at several of these deci-

sions. The District of Columbia Circuit has said:

In particular, the Supreme Court in Schlagenhauf,

[supra], held that mandamus would lie to review an

“issue of first impression” in order to “settle new

and important problems.” Schlagenhauf involved an

issue of discovery, an issue clearly outside the

normal class of errors reviewable under mandamus.

However, it did involve an issue of pure law—even

assuming the facts as the District Court perceived

them to be, did the District Court have discretion to

act or refuse to act as it did. Schlagenhauf author-

izes departure from the final judgment rule when the

appellate court is convinced that resolution of an im-

portant, undecided issue will forestall future error

in trial courts, eliminate uncertainty and add im-

portantly to the efficient administration of justice.

(emphasis added; footnote omitted) Colonial Times,

Inc, v. Gasch, 509 F.2d 517, 524 (D.C. Cir. 1975).

13

In United States v. United States District Court, 444 F.2d

651 (6th Cir. 1971), aff'd, 407 U.S. 297 (1972), the federal

government sought mandamus. In holding that the man-

damus petition should be decided on its merits the Sixth

Cireuit pointed to the underlying importance of the ques-

tion in dispute, and then went on:

If this were not enough to occasion our deciding

this case on the merits rather than on procedural

grounds, it also clearly appears that the issue posed |

here is a basie issue which has never been decided at

the appellate level by any court. It has been decided

favorably to the government’s position by two Dis-

trict Courts and adversely to the government by two

others. The Courts of Appeals have the power to

review by mandamus “an issue of first impression,”

Schlagenhauf v. Holder, 379 U.S. 104, 110, 85 S.Ct.

234, 13 L.Ed.2d 152 (1964), involving a “basie and

undecided problem.” Jd. at 110, 85 S.Ct. 234."

(emphasis added; footnote omitted) 444 F.2d at 655-

56, aff'd, 407 U.S. 297, 301 & n.8 (1972).

More succinctly stated, “usurpation of power, clear abuse

of diseretion, and the presence of an issue of first impres-

sion,” Kaufman v. Edelstein, 539 F.2d 811, 819 (2d Cir.

1976) (quoting from American Express Warehousing, Ltd.

v. Transamerica Insurance Co., 380 F.2d 277, 282-83 (2d Cir.

1967)), are all held to be factors favoring review by

mandamus. See Miller v. United States, 403 F.2d 77, 79

12. Similar considerations caused the Fifth Circuit to resolve, on

petition for mandamus, the merits of a novel issue concerning the

construction of Rule 16 of the Federal Rules of Criminal Procedure,

United States v. Hughes, 413 F.2d 1244, 1247-49 (Sth Cir. 1969),

vacated and remanded as moot sub nom. United States v. Gifford-

Hill-American, Inc., 397 U.S. 93 (1970). However, the law on

this question appears to be unsettled in the Fifth Circuit as well as

in the Fourth. Compare Belcher v. Grooms, 406 F.2d 14, 16-17

(5th Cir. 1968) with Sanders v. Russell, 401 F.2d 241, 243-44 (Sth

Cir. 1968). See General Tire & Rubber Co. v. Watkins, 326 F.2d

926, 928 (4th Cir.), cert. denied, 377 U.S. 909 (1964); Holub

Industries, Inc. v. Wyche, 290 F.2d 852, 855-56 (4th Cir. 1961); but

see Ellicott Machine Corp. v. Modern Welding Co., 502 F.2d 178,

181 n.5 (4th Cir. 1974).

14

(2d Cir. 1968) ; United States v. DiRusso, 548 F.2d 372 (1st

Cir. 1976); In re Ellsberg, 446 F.2d 954, 955-57 (1st Cir.

1971) ; Nixon v. Sirica, 487 F.2d 700, 708 (D.C. Cir. 1973) ;

In re April 1977 Grand Jury Subpoenas, 573 F.2d 936, 940-

41 (6th Cir. 1978) ; but see Bancohio Corp. v. Fox, 516 F.2d

29, 32-33 (6th Cir. 1975).%

Thus it appears that to the CCPA and the Third and

‘ighth Cireuits, presence of an unresolved question, a dif-

ficult question, or a question of first impression precludes

review by mandamus. The Ninth Circuit’s own guidelines

are in conflict on whether unresolved, difficult or new issues

should militate in favor of or against review by mandamus,

while the District of Columbia, First, Second and Sixth Cir-

cuits hold that the Courts of Appeals should favor review

by mandamus of significant, unresolved legal questions.

13. Nor are the views of the major commentators any more con-

sistent than the views of the various circuits. Compare 9 Moore’s

Federal Practice {110.28 at 308 (2d ed. 1975); 16 C. Wright, A.

Miller, E. Cooper and E. Gressman, Federal Practice and Procedure

§ 3934 at 234-35 (1977); and P. Bator, P. Mishkin, D. Shapiro and

H. Wechsler, Hart and Wechsler’s The Federal Courts and the

Federal System at 1570-71 (2d ed. 1973), which ends one section of

its discussion of mandamus with this question: “Should an effort be

made to devise a simpler and more intelligible set of standards for

determining when review may be had ?”

To that rhetorical question, petitioner suggests that the answer

must be “yes”, particularly in view of the rapid expansion in the

number of mandamus cases now being heard by the Courts of

Appeals. £.g., in 1956, 49 original proceedings (virtually all such

proceedings appear to be applications for writs of mandamus or

prohibition, see Hart and Wechsler, supra at 1572) were brought in

in the Courts of Appeals; by 1976, that number had increased eleven-

fold, to 537. 1957 Annual Report of the Director of the Administra-

tive Office of the United States Courts, p. 164 (1957); 1977 Annual

Report of the Director of the Administrative Office of the United

States Courts, p. 305 (1977). It is thus apparent that mandamus

petitions represent a significant, and growing, portion of the appel-

late courts’ workloads.

15

Rarely will a clearer, or older, conflict between the cir-

cuits appear in this Court. Petitioner respectfully submits

that this conflict can, and should, now be resolved.

THE BASIS UPON WHICH THE CCPA DENIED MAN-

DAMUS WAS CLEARLY ERRONEOUS

As the CCPA’s opinion points out (Appendix, p. A10),

this Court recently reaffirmed in Thermtron Products, Inc.

v. Hermansdorfer, 423 U.S. 336, 352 (1976), its position

that: |

The traditional use of the writ in aid of appellate

jurisdiction both at common law and in the federal

courts has been to confine an inferior court to a law-

ful exercise of its prescribed jurisdiction or to

compel it to exercise its authority.

Roche v. Evaporated Milk Ass’n, 319 U.S. 21, 26

(1943).

Confining the TTAB to a proper exercise of its jurisdic-

tion is precisely what the CCPA was asked to do in this

proceeding. There can be no doubt, indeed the CCPA

expressed none, that the legal issue underlying the man-

damus petition—that is, whether the TTAB has jurisdic-

tion over the trademark cancellation proceeding—is of the

sort that is properly, and regularly, reviewed by manda-

mus. Thus the question shifted in the CCPA’s opinion, as

it does here, from whether—to when—mandamus should

issue to restrict a lower court to a proper exercise of its

jurisdiction.

The decision in La Buy v. Howes Leather Co., 352 U.S.

249 (1957) articulated this Court’s view

that supervisory control of the District Courts by

the Courts of Appeals is necessary to proper judicial

16

administration in the federal system. The All Writs

Act confers on the Courts of Appeals the discretion-

ary power to issue writs of mandamus [in that case

to force the district court to try antitrust cases

rather than refer them to a master].

352 U.S. at 259-60.

In Schlagenhauf v. Holder, 379 U.S. 104 (1964) this

Court gave further meaning to the supervisory mandamus

concept. By an 8-to-1 majority, this Court upheld the

Seventh Circuit’s decision to review by writ of mandamus

a district court’s interpretation, and application, of Rule

35, Federal Rules of Civil Procedure. On the question of

the propriety of invoking mandamus this Court held:

That this issue was substantial is underscored by

the fact that the challenged order requiring exami-

nation of a defendant appears to be the first of its

kind in any reported decision in the federal cowrts

under Rule 35, and we have found only one such

modern case in the state courts. The Court of

Appeals recognized that it had the power to review

on a petition for mandamus the basic, undecided

question of whether a district court could order the

mental or physical examination of a defendant. We

agree that, under these unusual circumstances and

in light of the authorities, the Court of Appeals had

such power.

The meaning of Rule 35’s requirement of “in con-

troversy” and “good cause” also raised issues of first

impression. In our view, the Court of Appeals

should have also, under these special circumstances,

determined the “good cause” issue, so as to avoid

17

piecemeal litigation and to settle new and important

problems.

(emphasis added; footnotes omitted) 379 U.S. at

110-11."

The Courts of Appeals that have tried to implement this

Court’s decisions in La Buy and Schlagenhauf have con-

cluded that difficult, unresolved questions of law are pre-

cisely the questions that should be reviewed under the

court’s supervisory mandamus powers. To those courts—

when a pure question of law is involved—existence of a

plausible argument on each side of the question, or a con-

flict in the lower courts, militates in favor of, not against,

use of the mandamus power."

What the CCPA held in this action is precisely the

opposite. It held that it had no power to consider on the

merits, much less the discretion to grant, a mandamus peti-

tion once it became clear that lawyers could disagree on the

merits of the dispute. While such a test may have its place

when a mandamus petition turns on matters of judicial

discretion, that test makes no sense when the question is

one of pure law.

The CCPA’s conclusion in this action is inconsistent with

the decisions by this Court in La Buy and Schlagenhauf, is

14. Will v. United States, 389 U.S. 90 (1967), has beem read by

some commentators as restricting Schlagenhauf, 9 Moore’s Federal

Practice, supra {110.28 at 308, while it is read by others as a

decision on the facts and thus largely irrelevant to this controversy.

See 16 Wright & Miller, Federal Practice and Procedure, supra

§ 3934 at 233-35, and Hart and Wechsler’s The Federal Courts and

the Federal System, supra at 1570-71. Whether Will can be fairly

dismissed here because it was a criminal case in which no adequate

record was = in the Court of Appeals is, obviously, a matter

of debate. Nonetheless, there can be no basis for arguing that Will

—— the extremely restrictive standard used by the CCPA in

this action.

15. United States v. United States District Court, 444 F.2d 651

(6th Cir. 1971), aff'd, 407 U.S. 297 (1972), quoted at page 13,

above; United States v. DiRusso, 548 F.2d 372, 374 (1st Cir. 1976);

see also the cases cited in Points II B and C, above.

18

in clear conflict with the decisions of at least five other

circuits, and is, as well, an effective abdication of the

CCPA’s responsibility to supervise the TTAB and the

Customs Court. That result cannot, petitioner submits, be

squared with this Court’s view—articulated in La Buy and

Schlagenhauf— that writs of mandamus and prohibition

should be judiciously used to lead, supervise and otherwise

aid the lower courts.

Conclusion

WHenreErore, petitioner Formica Corporation respectfully

prays that a writ of certiorari issue to review the judg-

ment and opinion of the United States Court of Customs

and Patent Appeals entered in this proceeding on January

25, 1979.

March 26, 1979

Respectfully submitted,

Wa ter Love Stratron

30 Rockefeller Plaza

New York, New York 10020

Attorney for Petitioner

Stanton T’. LAWRENCE, JR.

Puiuie T. SHANNON

Joun Perer Cott, JR.

JoHN VINCENT THOMAS |

JosEPH EK. ForTENBERRY

Of Counsel

APPENDIX

aheeemianen eee ee

Al

United States Court of

Customs and Patent Appeals

Appeal No. 79-526.

Cancellation No. 11,955.

DECIDED: January 25, 1979

a ne

Formica CoRPORATION,

Petitioner

Va

Sauu F. Lerxowrrz, Davin Kera, and Janet E. Rice, Mem-

bers, Patent and Trademark Office Trademark Trial and

Appeal Board,

AND

FEDERAL TRADE Commission, Petitioner in Cancellation Pro-

ceeding No. 11,955,

Respondents.

SEE te og

ON PETITION FOR WRITS OF

MANDAMUS AND PROHIBITION

Before MARKEY, Chief Judge, RICH, BALDWIN,

LANE, and MILLER, Associate Judges.

RICH, Judge.

The basic proceeding to which the present matter relates

is a trademark cancellation proceeding, No. 11,955, in the

United States Patent and Trademark Office (PTO).' The

1. Federal Trade Commission v. Formica Corp., 200 USPQ 182

(TTAB 1978).

A 2

trademark is FORMICA and the cancellation petitioner is

the Federal Trade Commission (FTC). The FTC’s peti-

tion was filed May 31, 1978. The respondent therein is

Formica Corporation, owner of the mark and of its certifi-

cate of registration, No. 421,496, under the Trademark Act

of February 20, 1905, registered June 4, 1946.2 The mark

was republished, with the prescribed affidavits, under § 12

(c) of the Trademark Act of 1946 (15 USC 1062(c)) on

May 11, 1948, in the Official Gazette of the then Patent

Office.

The matter now before this court is a petition for writs

of mandamus and prohibition arising from the following

situation.

In the aforesaid cancellation proceeding before the PTO

Trademark Trial and Appeal Board (TTAB), Formica

Corporation moved to dismiss FTC’s petition to cancel,

according to the TTAB opinion, “on the ground ‘that the

FTC is without statutory authority to bring the instant

cancellation proceeding’.” The statute involved on the

point of the FTC’s authority is the proviso of section

14 of the 1946 Act as amended by Public Law 87-772,

76 Stat. 769, Oct. 9, 1962, which section reads in pertinent

part:

Sec, 14 (15 U.S.C. 1064). Cancellation of registra-

tions

A verified petition to cancel a registration of a

mark, stating the grounds relied upon, may, upon

payment of the prescribed fee, be filed by any person

who believes that he is or will be damaged by the

2. The registration was amended Aug. 30, 1966, in that the

drawing was changed to show the mark in plain block letters instead

of letters incorporating a design. The registration has been main-

tained by the filing of the affidavits required by sections 8 and 15 of

the 1946 act (15 USC 1058 and 1065) and by timely renewal for a

second term of 20 years, running from June 4, 1966.

A 3

registration of a mark on the principal register

established by this Act, or wnder the Act of March

3, 1881, or the Act of February 20, 1905—

(c) at any time if the registered mark becomes

the common descriptive name of an article or sub-

stance, or has been abandoned, or its registration

was obtained fraudulently or contrary to the pro-

visions of section 4 or of subsection (a), (b), or

(ec) of section 2 of this Act for a registration here-

under, or contrary to similar prohibitory provi-

sions of said prior Acts for a registration there-

under, or if the registered mark is being used by,

or with the permission of, the registrant so as to

misrepresent the source of the goods or services

in connection with which the mark is used; * * *

* * * *

Provided, That the Federal Trade Commission may

_apply to cancel on the grounds specified in subsec-

tions (ec) and (e) of this section any mark registered

on the principal register established by this Act, and

the prescribed fee shall not be required. [Emphasis

ours. Subsection (e) is not here involved. ]

The FTC relies on the above proviso as its authorization

to petition to eancel the registration of FORMICA and the

ground asserted for cancellation is the one emphasized in

paragraph (¢c), that FORMICA has become the common

descriptive name of an article or substance.’

The statutory ground on which Formica Corporation

based its motion before the TTAB to dismiss the petition

3. We assume it to be the intent of the drafters of the statute

to say that the mark has become the common descriptive name of

some article or substance for which it was registered, not just any

article or substance. The goods named in the registration certificate

sought to be cancelled are: “Laminated sheets of wood, fabric, or

paper impregnated with synthetic resin and consolidated under heat

and pressure, for use on table tops, furniture and wall panelling.”

A 4

was that its registration of FORMICA under the 1905 Act,

though republished in accordance with § 12(¢) of the 1946

Act, does not conform to the words of the proviso, “any

mark registered on the principal register established by

this Act,” meaning the 1946 Act. Wherefore, Formica Cor-

poration contended, the FTC is not authorized to proceed

against its registration.* The FTC strongly urged before

the TTAB, that republication under § 12(c) of the 1946 Act

caused FORMICA to become a “mark registered on the

principal register” created by the 1946 Act.

In an opinion of Novemher 8, 1978, supporting its denial

of the motion to dismiss the cancellation petition, the

TTAB, after extensive briefing and oral argument, agreed

with the position of the FTC. The board held: “A mark

[registered under the 1905 Act] which is republished is

thenceforth as much on the Principal Register as though it

had been originally registered thereon.” In denying the

motion to dismiss, the TTAB gave the respondent until

December 8, 1978, to file an answer and set a pre-trial con-

ference for December 15, 1978.

4. With typical Lanham Act ineptitude, the proviso of §14 speaks

of applying “to cancel * * * any mark” although the opening of the

same section speaks of a “petition to cancel a registration.” Here

again we shall assume that the drafters of the proviso intended to

authorize the FTC to petition to cancel certain registrations, which

is another way of saying to remove marks from the principal register,

which register, we understand, is merely a figment of legal imagina-

tion—a label imprinted on certificates of registration to indicate what

statutory legal consequences shall attach to the act of registering,

there being two kinds of registration under the statute with different

legal consequences. We can visualize no way in which a trademark—

even when it has ceased to be a trademark by becoming a generic

name—can be “cancelled.” Since registration does not create trade-

marks, which must preexist to be registrable, it follows that removal

from the register does not “cancel” them. See 1 J. McCarthy,

ene and Unfair Competition § 20:17(c) at 799 (1973) and

cases cited.

A5

Formica Corporation, after denial of its motion to dis-

miss, filed in this court on November 22, 1978, the petition

for writs of mandamus and prohibition “ordering the

TTAB (a) to vacate its Opinion and Order of November 8,

1978, and (b) to dismiss Cancellation Proceeding No. 11955

for lack of jurisdiction on the ground that the FTC does not

have statutory authority to bring such proceeding.”

As shown by the heading of this opinion, the members of

the TTAB who rendered the decision denying the motion to

dismiss were made respondents along with the FTC.

November 27, 1978, Formica Corporation obtained from

the TTAB a suspension of all proceedings, including its

time to answer and the pre-trial conference, pending the

outcome of the present petition for mandamus.

The FTC has responded to the petition for mandamus

by filing a motion to dismiss that petition on the ground

that this court lacks jurisdiction to grant the writs by

reason of an interesting ploy on the part of the FTC, which

proceeds as follows. The petition, says the FTC, “is the

equivalent of an appeal from a decision of the TTAB and

should be governed by Section 21 of the Lanham Act, 15

U.S.C. § 1071, the statutory provision for appeals from

TTAB decisions.” (A footnote to that statement says:

“The FTC, of course, does not concede that an interlocutory

appeal from the TTAB’s decision would be appropriate.’’)

Under section 21, as is well understood, one dissatisfied

with a “decision” of the TTAB in a cancellation proceeding

has the option of appealing to this court or of proceeding

hy way of a civil action under section 21(b); and, in an

inter partes proceeding, if a dissatisfied party appeals to

this court, an opponent may elect “to have all further pro-

ceedings conducted as provided in section 21(b),” by civil

action in an appropriate district court. Treating this peti-

tion for mandamus as an appeal within the meaning of the

A 6

statute, the FTC filed a notice of election in the PTO simul-

taneously with the filing of its motion to dismiss the peti-

tion for mandamus in this court, on which basis it urges

that “this de facto appeal should be dismissed.” Its theory

is that when such a notice of election is filed, this court

must dismiss any appeal lodged before it and, since the

petition is a de facto appeal, we must dismiss it because

we have been deprived of jurisdiction. The FTC has also

taken a further step. An affidavit of the Secretary of the

FTC dated December 11, 1978, states:

On December 8, 1978, the Commission determined

that, in the event of any further appeal of a decision

of the Trademark Trial and Appeal Board in Can-

cellation Proceeding No. 11955, the Commission will

elect to have all further proceedings conducted in a

civil action as provided in 15 U.S.C. §1071(b).

[Emphasis ours. ]

Combining its present purported actual election and its

“determination” to always elect in the future, the FTC says

that this court has no present or prospective jurisdiction

over this cancellation proceeding in aid of which we could

possibly issue a writ of mandamus and therefore we have

no jurisdiction of this petition under the All Writs Act, 28

USC 1651(a), under which Formica Corporation has pur-

ported to file its petition for the writs.

The PTO Solicitor, acting as counsel for the three TTAB

members who denied the motion to dismiss, has also filed a

motion to dismiss the petition now before us. The position

taken is that taken by the FTC, that in view of the present

election and promise of future election to take review away

from this court, we are without “jurisdiction over the sub-

ject matter of the PETITION and therefore the PETT-

TION must be dismissed.”

AT

Formica Corporation, responding to both motions to

dismiss, attacks the underlying basis of the contention of

the FTC and the PTO that this court is without jurisdiction

to pass on the petition for mandamus, asserting that the

purported election to have this and all further proceedings

by way of a civil action is a nullity. The reasoning is that

the TTAB has not yet rendered any “decision” which could

be appealed to this court,’ that section 21 of the Trademark

Act (15 USC 1071) pertaining to appeal and review by civil

action is therefore inapplicable, that there has not been an

appeal, and therefore the FTC cannot make an election

under the statute and its notice of election is a nullity.

Furthermore, the FTC’s December 8th “determination” to

elect in the future is no more than a statement of present

intent, is not binding on it, and, therefore, is not an act

which destroys this court’s jurisdiction.

OPINION

The Motions to Dismiss

We believe the present effort to deprive this court of

jurisdiction even to consider a petition for a writ of mand-

amus and/or prohibition through the device of the notice

of election the FTC has filed under $21 (15 USC 1071)

presents a question of first impression. Obviously, we

must deal with it before we consider the petition.

We agree with petitioner here, Formica Corporation, that

the notice of election filed with the PTO is of no effect—that

5. No party to this proceeding has suggested that the TTAB’s

interlocutory decision denying Formica Corporation’s motion to dis-

miss is an appealable decision, under section 21 or otherwise. It

would appear that Formica Corporation filed the petition for manda-

mus, etc., presently before us because it thought the board’s denial of

its motion to dismiss was not appealable.

A 8

it is a nullity. The simple reason is that this is not an

appeal in connection with which the election under § 21 may

be made; it is a petition for extraordinary relief. The

F'TC’s assertion that this petition is really an appeal is

tantamount to a suggestion that Formica Corporation could

have appealed under this court’s interpretation of the so-

called “final judgment” rule, see Stabilisierungsfonds Fiir

Wein v. Zimmermann-Graefi KG, 198 USPQ 154 (CCPA

1978), and that we should treat it as an appeal. The fact

is, however, that Formica Corporation chose not to appeal,

and we therefore express no opinion concerning whether

such an appeal, had it been taken, would be entertained by

this court at this time. Formica Corporation has asked

this court for a writ of mandamus or prohibition, and we

must decide whether or not to grant the requested writ,

not whether Formica Corporation should or could have

appealed instead. We will not, as the FTC requests, treat

the petition before us, under the circumstances of this case,

as something which it is not. Formica chose to apply for

the writ and the parties must take all that comes with such

an application; the small likelihood that it will be granted

and the inability of the FTC to elect under § 21 are included

in this baggage. We will not rewrite Formica Corpora-

tion’s petition for the convenience of the FTC.

No appeal having been taken, the FTC has no statutory

right to make an election to have all further proceedings by

civil action under § 21(b). In the absence of such a right,

the purported notice of election the FTC has filed in the

PTO, being unauthorized, is, as petitioner contends, a nul-

lity.

The FTC’s other maneuver—its alleged internal “deter-

mination” in the future always to elect a civil action in

the event of any true appeal to-this court in this cancella-

tion proceeding—is equally ineffective. At best, it is a

AY

mere expression of intent and not an act that can have any

legal effect. The “determination” is not binding on the

FTC, which could change its mind tomorrow; or the make-

up of the FTC could change and result in a different view of

what it should do. We continue to have potential jurisdic-

tion over a true appeal from an appealable decision of the

TTAB in this cancellation proceeding. That potential

jurisdiction cannot be taken away until after it has attached

by the taking of an appeal. See Duffy v. Tegtmeyer, 489

F.2d 745, 180 USPQ 317 (CCPA 1974).

Since we see no merit in the FTC and PTO motions to

dismiss for lack of this court’s jurisdiction to consider the

petition for the writs requested, we turn now to the ques-

tion whether this is a proper case in which to issue them.

The Requested Writs

It is settled law that this court has the discretionary

power to issue writs of mandamus and prohibition under

the All Writs Act, 28 USC 1651. Loshbough v. Allen, 56

CCPA 914, 404 F.2d 1400, 160 USPQ 204 (1966). See also

Weil v. Dann, 503 F.2d 562, 183 USPQ 300 (CCPA 1974) ;

6. The carrying out of its “determination” for the future is not

altogether in the hands of the FTC. The proposal has already been

floated in government circles that the alternate remedy of review by

civil action be abolished as superfluous. At some future date it

might not be possible to escape this court’s jurisdiction by that route.

In any event, it seems somewhat strange (unless it be regarded as

the sheer fun of playing legal games) that the FTC should deem it

preferable to take a pure question of law involving no disputed

facts—and that is what this petition for mandamus involves—to a

judge of a busy district court by the civil action election route rather

than leaving it with a five-judge appellate court which always sits

en banc. Which is the preferred tribunal for settling a question of

law? The theoretical justification of the trial de novo is to provide

for receiving evidence of facts, not settling the law. Game playing

at the expense of the judiciary cannot be too strongly disapproved.

A 10

Duffy v. Tegtmeyer, supra. However, we do not regard

the issuance of either writ to be appropriate or necessary

in this case, for the reasons hereinafter stated.

While it is true that we do not presently have appellate

jurisdiction of this case, apart from the petition before us,

we have noted above our prospective jurisdiction which is

sufficient for the purposes of the All Writs Act. See Roche

v. Evaporated Milk Assoc., 319 U.S. 21, 25 (1943). Even

so, we may not grant the requested writs unless doing

so is “agreeable to the usages and principles of law.” 28

USC 1651(a). In this respect, we have guidance from the

Supreme Court, which stated in Roche, supra at 26:

The traditional use of the writ in aid of appellate

jurisdiction both at common law and in the federal

courts has been to confine an inferior court to a law-

ful exercise of its prescribed jurisdiciton or to com-

pel it to exercise its authority when it is its duty to

do so.

See also, Thermtron Products, Inc. v. Hermansdorfer, 423

U.S. 336, 352 (1976).

It is Formica Corporation’s contention that the FTC is

not authorized by § 14 of the 1946 Trademark Act (15 USC

1064) to bring a cancellation proceeding against a 1905

Act registration which has been republished under § 12(c)

of the 1946 Act (15 USC 1062(c)). In essence, the argu-

ment is that the FTC lacks standing to initiate the cancel-

lation proceeding, wherefore the TTAB lacks the power to

hear this case.

While such an argument is sometimes referred to as

directed toward lack of “jurisdiction” in the TTAB to hear

the case, the inclusion of an improper party or the non-

existence of a proper petitioner is not a jurisdictional

A ll

defect in the traditional sense.’ However, lack of standing

has been thought of as related to jurisdictional defects and,

if proven, an adequate basis for dismissal on appeal for

want of a justiciable controversy, which justiciable contro-

versy is a sine qua non for the exercise of Article II

judicial power. Cf. Sierra Club v. Morton, 405 U.S. 727

(1972); Frothingham v. Mellon, 262 U.S. 447 (1923).

This, however, is not an appeal. The question before us

is whether or not Formica Corporation has established a

proper case for the remedy it seeks. “[WJhile a function

of mandamus in aid of appellate jurisdiction is to remove

obstacles to appeal, it may not appropriately be used

merely as a substitute for the appeal procedure prescribed

by statute.” Roche, supra at 26. This is particularly true,

where, as here, the issue involves “jurisdictional questions

which [the TTAB] was competent to decide and which are

reviewable in the regular course of appeal.” Jd.; accord,

Alkali Export Assoc. v. United States, 325 U.S. 196, 202-03

(1945). This court has refused to grant the writ where

it is sought as a vehicle for review of routine interlocutory

orders and where effective relief is available in the regular

course of appeal. We recognize that “The necessity of

orderly procedure and the husbanding of judicial time and

effort often require litigants to undergo costs and incon-

venience which might be avoided by interlocutory review.”

Weil v. Dann, supra, 503 F.2d at 563, 183 USPQ at 300.

7. There can be no question that the TTAB has subject matter

jurisdiction over cancellation proceedings, 15 USC 1067, and neither

party has asserted insufficient notice or other violation of due process

which would invalidate personal jurisdiction of the TTAB over the

parties. The problem of standing, however, is a concept related to

jurisdiction. See U. S. ex rel. Chapman v. Federal Power Commis-

sion, 345 U.S. 153 (1953); C. Wright, Law of Federal Courts $13

at 42-52 (3d Ed. 1976). If the cancellation petitioner has no stand-

ing, the cancellation proceeding must be dismissed, in which sense

the TTAB loses “jurisdiction” over the matter.

A 12

As we said in Stabilisierungsfonds, supra, “If the parties

could take up on appeal each disputed ruling by the TTAB

as it was handed down, an inter partes proceeding could

drag on indefinitely.”

In deciding whether to grant mandamus, we must recog-

nize the extraordinary nature of the relief requested.

“Though the power’is curative, it is strong medicine and

its use must therefore be restricted to the most serious and

critical ills.” United States v. Boe, 64 CCPA 11, 19, C.A.D.

1177, 543 F.2d 151, 157-58 (1976). In considering the appli-

cation of this principle to the present case, we note the

test enunciated in American Airlines, Inc. v. Forman, 204

F.2d 230, 232 (1953), by the Third Circuit, for cases where

mandamus is sought to correct the allegedly wrongful

assumption of jurisdiction, which appears to us to be par-

ticularly suited to this situation:

The challenged assumption or denial of jurisdiction

must be so plainly wrong as to indicate failure to

comprehend or refusal to be guided by unambiguous

provisions of a statute or settled common law doc-

trine. If a rational and substantial legal argument

can be made in support of the questionable jurisdic-

tional ruling, the case is not appropriate for man-

damus * * * even though on normal appeal a court

might find reversible error. [Emphasis ours.]

Accord, Ex parte Chicago, Rock Island & Pacific Railway

Co., 255 U.S. 273 (1921); American Fire Insurance Co. v.

U.S. District Court, 538 F.2d 1371 (9th Cir. 1976); Pfizer

v. Lord, 522 F.2d 612, 615 (8th Cir. 1975), cert. dented, 424

U.S. 950 (1976). Our decision in United States v. Boe,

"supra, is consistent with this approach, which we now

expressly adopt.

Applying this test to the case before us, clearly this is

not a proper case for mandamus. Our research reveals

A 13

that, at the time of the hearing on Formica Corporation’s

motion to dismiss, there was some indication that Formica

Corporation’s republished 1905 Act registration should be

considered as one of a mark “registered on the principal

register established by this Act” (the Lanham Act) and

thus subject to the proviso. In her “Commentary on the

Lanham Trademark Act,” printed in the 1948 edition of

Title 15 USCA §§ 81-1113, Daphne Robert (a participant

in the drafting of the Lanham Act and later Assistant Com-

missioner Daphne Leeds and as such the predecessor of

the TTAB) asserted that a republished registration “is for

all purposes a registration on the principal register and is

subject to all provisions of the new Act as if it had been

originally registered under that Act.” (Emphasis ours.)

Title 15, USCA §§ 81-1113 at 276 (1948). Particularly,

with respect to the authority of the FTC to petition to

cancel republished registrations, she commented: “the Fed-

eral Trade Commission may not apply to cancel such regis-

trations until they become principal registrations by virtue

of [republication].” Zd. at 283. Or the other hand, the

only decision on the point, Federal Trade Commission v.

Elder Manufacturing Co., 84 USPQ 429 (Comm’r 1950),

had held that the FTC had no standing to petition to cancel

any registration obtained under a previous trademark act,

whether or not republished. To add to the confusion, one

commentator has cited the Elder case for the proposition

that the FTC can act against a pre-Lanham Act registra-

tion only if it has been republished. See Vandenburgh,

Trademark Law and Procedure, § 10.90 at 463 n. 4 (2d ed.

1968). No court has ever passed on this issue.

Furthermore, we have carefully considered Formica

Corporation’s arguments and supporting documents based

on legislative history but do not find in the striking and

reenactment of § 14, section 9 of Pub. L. No. 87-772, 76

A 14

Stat. 769 (1962), or the contemporaneous events surround-

ing its reenactment, see S. Rep. No. 2107, 87th Cong., 2d

Sess., reprinted in U. S. Code Cong. & Ad. News, 87th

Cong., 2d Sess., 2844-57 (1962), a clear indication of legis-

lative intent regarding the meaning of the proviso here at

issue. In response to the suggestion of the FTC

that Elder should be legislatively overruled, the committee

stated in its report:

The committee does not think it appropriate to con-

sider changes of this nature at this time, since the

instant bill is in large part a housekeeping measure,

making minimal substantive changes in the trade-

mark law. The Federal Trade Commission’s sugges-

tions, on the other hand, would bring about a sub-

stantive change in policy. In addition, the committee

has been advised that there is no present need for

this particular change.

U. S. Code Cong. & Ad. News, supra, at 2485. Even the

committee’s report is not without ambiguity; it is not

entirely clear which of the FTC’s suggestions the committee

found unnecessary. Of the two suggestions offered by the

FTC with respect to § 14, the committee is here responding

to one, which is unspecified. The Hilder decision was a

single isolated event by a single Commissioner of Patents

and cannot be considered as representative of an accepted

administrative practice.

Where, as here, the law at the time of the hearing on

Formica Corporation’s motion was in such an unsettled

state, the issue was definitely one for which “a rational and

substantial legal argument [could have been] made” in sup-

port of either position. We cannot fault the TTAB for

deciding the motion to dismiss as it did under these eir-

cumstances. For ourselves, we express no opinion at this

A 15

time on the correctness of the view that the registration of

FORMICA must be considered as one on the principal

register, or of the jurisdictional ruling (the denial of the

motion to dismiss the cancellation proceeding) ; we merely

hold that the requested writs should not issue in this case.

Decision

The motions to dismiss the petition of Formica Corpora-

tion for writs of mandamus and prohibition, filed by the

FTC and on behalf of the members of the Trademark Trial

and Appeal Board, are denied.

Formica Corporation’s petition for writs of mandamus

and prohibition is denied.

Motions for extensions of time to file briefs on the merits

are denied as moot.

A 16

_Unrrep States Court or Customs anpD PATENT APPEALS

Thursday, January 25, 1979

Before: Markey, Chief Judge, Rich, Baldwin, Lane and

Miller Associate Judges and Judge Ford, United States

Customs Court.

ACTION IN PENDING CASE

No. 79-526. FORMICA CORPORATION, Petitioner v.

SAUL F. LEFKOWITZ, DAVID KERA, and JANET E.

RICE, Members, Patent and Trademark Office Trademark

Trial and Appeal Board, and FEDERAL TRADE COM-

MISSION, Respondents. The motions of respondents to

dismiss the petition of Formica Corporation for Writs of

Mandamus and Prohibition are denied. The Petition for

Writs of Mandamus and Prohibition is denied. Respond-

ents motions for extension of time to file briefs on the

merits are denied as moot. Opinion by Rich, Judge.

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