No.

19-

In the Supreme Court of the United States

_____________________

TODD C. BANK,

Petitioner,
v.

AL JOHNSON’S SWEDISH
RESTAURANT & BUTIK, INC.,

Respondent.
_____________________

ON PETITION FOR WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT

PETITION FOR A WRIT OF CERTIORARI

TODD C. BANK
TODD C. BANK,
ATTORNEY AT LAW, P.C.
119-40 Union Turnpike
Fourth Floor
Kew Gardens, New York 11415
(718) 520-7125
[email protected]

Counsel for Petitioner

LEGAL PRINTERS LLC ! Washington, DC ! 202-747-2400 ! legalprinters.com

 QUESTIONS PRESENTED FOR REVIEW

1. In Matal v. Tam, 137 S. Ct. 1744 (2017), this Court

held that the disparagement clause of Section 2(a) of
the Lanham Act, 15 U.S.C. § 1052(a), which “prohi-
bit[s] the registration of trademarks that may ‘dispar-
age ... or bring ... into contemp[t] or disrepute’ any
‘persons, living or dead,’” Tam, 137 S. Ct. at 1751,
quoting 15 U.S.C. § 1052(a) (ellipses in original),
violates the First Amendment. The question is whether
Tam thereby precluded disparagement as the basis of
one’s standing under Section 14 of the Lanham Act, 15
U.S.C. § 1064, to challenge the validity of a trademark
where the basis of the merits of the challenge, i.e., the
challenger’s assertion as to why the mark is invalid, is
unrelated to disparagement.

2. Whether a federal appeals court abuses its authority

by sanctioning a party for arguing in favor of his posi-
tion, even though: (i) the arguments and the position
are meritorious; and (ii) the court claimed that the
party had conceded that his position had been fore-
closed by a decision of this Court, whereas the party,
rather than having made such a concession, had arg-
ued that his position was not foreclosed by that
decision.

i
 LIST OF PARTIES AND
RULE 29.6 DISCLOSURE

The caption lists all of the parties. Petitioner,

Todd C. Bank (“Bank”), is a natural person. Therefore,
no corporate-disclosure statement is required under
Supreme Court Rule 29.6.

STATEMENT OF DIRECTLY
RELATED PROCEEDINGS

There are no directly related proceedings.

ii
 TABLE OF CONTENTS

Page

QUESTION PRESENTED FOR REVIEW . . . . . . . . i

LIST OF PARTIES AND

RULE 29.6 DISCLOSURE . . . . . . . . . . . . . . . . . . . . ii

STATEMENT OF DIRECTLY
RELATED PROCEEDINGS . . . . . . . . . . . . . . . . . . . ii

TABLE OF AUTHORITIES . . . . . . . . . . . . . . . . . . vi

INTRODUCTION . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

ORDERS BELOW . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

STATEMENT OF JURISDICTION . . . . . . . . . . . . . 1

STATUTORY PROVISIONS INVOLVED . . . . . . . . 2

STATEMENT OF THE CASE . . . . . . . . . . . . . . . . . 3

REASONS FOR GRANTING THE PETITION . . . . 4

I. PETITIONER HAS STANDING . . . . . . . . . . . . 4

A. The Court of Appeals Conflated

Standing with the Merits . . . . . . . . . . . . . 4

iii
 Page
Table of Contents (cont’d)

B. Petitioner was not Deprived of

Standing Merely Because, Accord-
ing to His Theory of Standing, There
Might be a Large Number of Trade-
marks that he Could Challenge . . . . . . . 10

II. THE IMPOSITION OF SANCTIONS

WAS SUCH AN ABUSE OF AUTHOR-
ITY THAT THIS COURT SHOULD
EXERCISE ITS SUPERVISORY AUTH-
ORITY IN ORDER TO VACATE IT . . . . . . . . 13

CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19

APPENDIX

A. Todd C. Bank v. Al Johnson’s

Swedish Restaurant & Butik, Inc.,
Order (Fed. Cir. December 9, 2019) . . . . . . . . . 1a

B. Todd C. Bank v. Al Johnson’s

Swedish Restaurant & Butik, Inc.,
Order (T.T.A.B. March 27, 2019) . . . . . . . . . . 12a

C. Todd C. Bank v. Al Johnson’s

Swedish Restaurant & Butik, Inc.,
Order (T.T.A.B. May 2, 2019) . . . . . . . . . . . . . 24a

iv
 Page
Table of Contents (cont’d)

D. Todd C. Bank v. Al Johnson’s

Swedish Restaurant & Butik, Inc.,
Order denying Petition for Rehearing with
Suggestion for Rehearing En Banc
(Fed. Cir. January 31, 2020) . . . . . . . . . . . . . 27a

v
 TABLE OF AUTHORITIES

Page

CONSTITUTIONAL PROVISIONS

U.S. Const., Am. I . . . . . . . . . . . . . . . . . . . . . . . . . . 17

STATUTES AND RULES

15 U.S.C. § 1052(a) . . . . . . . . . . . . . . . . . . . . . . . 2, 17

15 U.S.C. § 1062(c) . . . . . . . . . . . . . . . . . . . . . . . . . . 7

15 U.S.C. § 1063 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6

15 U.S.C. § 1064 . . . . . . . . . . . . . . . . . . . . . . 5, 6, 7, 8

15 U.S.C. § 1064(1) . . . . . . . . . . . . . . . . . . . . . . . . . . 7

15 U.S.C. § 1064(2) . . . . . . . . . . . . . . . . . . . . . . . . . . 7

15 U.S.C. § 1064(3) . . . . . . . . . . . . . . . . . . . . . . 3, 6, 7

15 U.S.C. § 1064(4) . . . . . . . . . . . . . . . . . . . . . . . . . . 7

15 U.S.C. § 1064(5) . . . . . . . . . . . . . . . . . . . . . . . . . . 7

15 U.S.C. § 1120 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9

28 U.S.C. § 1254(1) . . . . . . . . . . . . . . . . . . . . . . . . . . 2

37 C.F.R. § 2.111 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3

vi
 Page
Table of Authorities;
Statutes and Rules (cont’d)

Fed. R. App. P. 38 . . . . . . . . . . . . . . . . . . . . . . . 14, 15

CASES

Ariz. State Legislature v. Ariz.

Indep. Redistricting Comm’n,
135 S. Ct. 2652 (2015) . . . . . . . . . . . . . . . . . . . . . . 4

Boyer v. BNSF Railway Co.,

824 F.3d 694 (7th Cir. 2016) . . . . . . . . . . . . . 14-15

Doyle v. Al Johnson’s Swedish

Restaurant & Butik, Inc.,
101 U.S.P.Q.2d 1780,
2012 WL 695211
(T.T.A.B. 2012) . . . . . . . . . . . . . . . . . 13, 14, 15, 16

Finch v. Hughes Aircraft Co.,

926 F.2d 1574 (Fed. Cir. 1991) . . . . . 14, 15, 16, 17

In re 60 E. 80th St. Equities, Inc.,

218 F.3d 109 (2d Cir. 2000) . . . . . . . . . . . . . . . . 15

Matal v. Tam,
137 S. Ct. 1744 (2017) . . . . . . . . . . . 4, 9, 17, 18, 19

Pinkette Clothing, Inc. v.

Cosmetic Warriors Ltd.,
894 F.3d 1015 (9th Cir. 2018) . . . . . . . . . . . . . . 7-8

vii
 Page
Table of Authorities; Cases (cont’d)

Ritchie v. Simpson,
170 F.3d 1092
(Fed. Cir. 1999) . . . . . . . . . . . . . . . . . . . 6, 9, 12, 13

Roth v. Green,
466 F.3d 1188 (10th Cir. 2006) . . . . . . . . . . . . . . 15

Shakespeare Co. v. Silstar

Corp. of America, Inc.,
9 F.3d 1091 (4th Cir. 1993) . . . . . . . . . . . . . . . . . . 7

Virginia Polytechnic Inst. & State

Univ. v. Hokie Real Estate, Inc.,
813 F. Supp. 2d 745 (W.D. Va. 2011) . . . . . . . . . . 9

Warth v. Seldin,
422 U.S. 490 (1975) . . . . . . . . . . . . . . . . . . . . . . . . 4

Whitmore v. Arkansas,
495 U.S. 149 (1990) . . . . . . . . . . . . . . . . . . . . . . . . 4

Young v. AGB Corp.,

152 F.3d 1377 (Fed. Cir. 1998) . . . . . . . . . . . . . . . 6

viii
 INTRODUCTION

Todd C. Bank respectfully petition this Court for a

writ of certiorari to the United States Court of Appeals
for the Federal Circuit.

ORDERS BELOW

The Order of the United States Court of Appeals

for the Federal Circuit, dated December 9, 2019 (the
“Subject Order”), which is not reported, is reprinted in
the Appendix to this Petition (“Appx.”) at Appx. A, 1a-
11a.

The Order of the Trademark Trial and Appeal

Board of the United States Patent and Trademark
Office (the “TTAB” or the “Board”), dated March 27,
2019, which is not reported, is reprinted at Appx. B,
12a-24a.

The Order of the TTAB dated May 2, 2019, which

is not reported, is reprinted at Appx. C, 25a-26a.

The Order of the Court of Appeals denying Bank’s

Petition for Rehearing with Suggestion for Rehearing
En Banc, which is not reported, is reprinted at Appx.
D, 27a-28a.

STATEMENT OF JURISDICTION

On December 9, 2019, the Subject Order was

entered.

1
 On December 20, 2019, Bank filed a Petition for
Rehearing with Suggestion for Rehearing En Banc,
which the Court of Appeals denied on January 31,
2020.

This Court has jurisdiction under 28 U.S.C. §

1254(1).

STATUTORY PROVISIONS INVOLVED

15 U.S.C. § 1052(a)

No trademark by which the goods of the applicant may

be distinguished from the goods of others shall be
refused registration on the principal register on
account of its nature unless it—

(a) Consists of or comprises immoral, deceptive, or

scandalous matter; or matter which may disparage or
falsely suggest a connection with persons, living or
dead, institutions, beliefs, or national symbols, or bring
them into contempt, or disrepute; or a geographical
indication which, when used on or in connection with
wines or spirits, identifies a place other than the origin
of the goods and is first used on or in connection with
wines or spirits by the applicant on or after one year
after the date on which the WTO Agreement (as
defined in section 3501(9) of title 19) enters into force
with respect to the United States.

2
 15 U.S.C. § 1064(3)

A petition to cancel a registration of a mark, stating

the grounds relied upon, may, upon payment of the
prescribed fee, be filed as follows by any person who
believes that he is or will be damaged, including as a
result of a likelihood of dilution by blurring or dilution
by tarnishment under section 1125(c) of this title, by
the registration of a mark on the principal register
established by this chapter, or under the Act of March
3, 1881, or the Act of February 20, 1905: . . . (3) At any
time if the registered mark . . . is functional . . . .

STATEMENT OF THE CASE

Bank brought the underlying action (the “TTAB

Proceeding”) before the Trademark Trial and Appeal
Board (the “TTAB” or the “Board”) of the United States
Patent and Trademark Office (the “USPTO”), which
had jurisdiction under 15 U.S.C. § 1064(3) and 37
C.F.R. § 2.111.

Bank petitioned the USPTO for the cancellation of

Trademark Registration No. 2007624.

3
 REASONS FOR GRANTING THE PETITION

As set forth below, the Court of Appeals, with

respect to the question of standing: (i) decided an
important Constitutional question that has not specifi-
cally been, but should be, settled by this Court; and (ii)
disregarded relevant decisions of this Court.

As also set forth below, the Court of Appeals, in

sanctioning Bank, so far departed from the accepted
and usual course of judicial proceedings as to call for
an exercise of this Court’s supervisory power.

I. PETITIONER HAS STANDING

A. The Court of Appeals Conflated

Standing with the Merits

The Court of Appeals found that Bank did not

sufficiently plead standing before the TTAB, see Appx.
A, 5a-6a, explaining: “[t]o the extent that Mr. Bank
relies upon disparagement . . . to establish his stand-
ing, the argument is without merit after Tam.” Id., 6a.

First, the court ignored the axiomatic principle

that standing is distinct from the merits. See Whit-
more v. Arkansas, 495 U.S. 149, 155 (1990) (“[o]ur
threshold inquiry into standing ‘in no way depends on
the merits of the [petitioner’s] contention that particu-
lar conduct is illegal,’” quoting Warth v. Seldin, 422
U.S. 490, 500 (1975) (emphases added)); accord, Ariz.
State Legislature v. Ariz. Indep. Redistricting Comm’n,
135 S. Ct. 2652, 2663 (2015). Whereas Bank asserted

4
standing based upon disparagement, he alleged, with
respect to the merits, that the challenged trademark,
which “consists of goats on [a] grass roof,” Appx. A, 2a
(additional quotation marks omitted), is functional
because of factors unrelated to disparagement, i.e.,
that, “[t]he primary use of the [m]ark[] is as a form of
entertainment that increases, to customers, the appeal
of [Respondent]’s [restaurant],” Bank’s TTAB Petition,
¶ 5, that, “[t]o whatever extent the [m]ark[] serve[s] as
identification with respect to [Respondent’s restaur-
ant], such service is not the primary effect of the
[m]ark[], and such service pales in comparison to the
provision, by the [m]ark[], of entertainment that
increases, to customers, the appeal of the [restaurant],”
id., ¶ 6, that, “[t]he use of the [m]ark[] as a form of
entertainment that increases, to customers, the appeal
of the [restaurant] is unique[,] . . . functional[,] . . .
[and] superior to other methods.” id., ¶¶ 7, 8, 9, and
that, “[t]he placement of goats on a grass roof negates
or ameliorates, due to the goats’ grazing, the need to
cut the grass, and is thus economically advantageous.”
Id., ¶ 10.

Second, the Court of Appeals disregarded the plain

language of the private-right-of-action provision that
Bank invoked, i.e., Section 14 of the Lanham Act, 15
U.S.C. § 1064, the first paragraph of which states: “[a]
petition to cancel a registration of a mark, stating the
grounds relied upon, may . . . be filed . . . by any person
who believes that he is or will be damaged . . . by the
registration of [the] mark.” 15 U.S.C. § 1064 (emphasis
added). Thus, by its plain language, Section 14 does
not require that any particular aspect of a trademark

5
be the source of alleged damage, but, rather, that the
mere existence of a mark i.e., its registration, be that
source.

In Ritchie v. Simpson, 170 F.3d 1092 (Fed. Cir.

1999), the court held in favor of the standing of the
petitioner, who had opposed the applications to
register certain trademarks and had relied upon the
marks’ alleged disparagement as the basis of both his
standing and the merits of his opposition (the standing
of a petitioner opposing the registration of a mark is
governed by Section 13 of the Lanham Act, 15 U.S.C.
§ 1063, which contains the same relevant requirements
as does Section 14, i.e., that “[a]ny person who believes
that he would be damaged by the registration of a
mark . . . may . . . file an opposition.” 15 U.S.C. § 1063.
Accordingly, the requirements for petitions for opposi-
tion are the same as the requirements for petitions for
cancellation. See Ritchie, 170 F.3d at 1095, n.2; Young
v. AGB Corp., 152 F.3d 1377, 1379-1380 (Fed. Cir.
1998)). Although, in Ritchie, the basis of the challeng-
er’s standing correlated to the basis of the merits of his
challenge, the plain language of Sections 13 and 14 of
the Lanham Act, 15 U.S.C. §§ 1063 and 1064, makes
clear, as set forth above, that such correlation is not
required.

Example: a petitioner for cancellation argues, with

respect to the merits, that the challenged mark is being
used “so as to misrepresent the source of the goods or
services on[,] or in connection with[,] which the mark
is used.” 15 U.S.C. § 1064(3). With respect to standing,
the petitioner does not allege that he was harmed by

6
that misrepresentation, but, rather, by the existence,
i.e., the registration, of the mark because he wants to
use the mark, but the registration prohibits him from
doing so and he is therefore damaged “by the
registration of [the] mark.” 15 U.S.C. § 1064. The peti-
tioner clearly would have standing even though the
basis of his standing does not correlate to the basis of
the merits of his challenge.

Section 14 of the Lanham Act does address the

merits of a petition for cancellation, i.e., the question
of why a mark is not valid and should therefore be
canceled, but does so only with respect to the timing of
the filing of a petition; that is, if a petition is based
upon certain allegations regarding a challenged mark,
including, as Bank alleges, that the mark is “func-
tional,” the petition may be filed “[a]t any time,” 15
U.S.C. § 1064(3), whereas, except for petitions that
seek cancellation based upon functionality or any of
the other enumerated bases set forth in Section
1064(3), or in the circumstances set forth in Sections
1064(4) or (5), petitions for cancellation must be filed
“[w]ithin five years from the date of the registration of
the mark,” 15 U.S.C. § 1064(1), or “[w]ithin five years
from the date of publication under [15 U.S.C. §] 1062(c)
. . . of a mark registered under the Act of March 3,
1881, or the Act of February 20, 1905.” 15 U.S.C. §
1064(2). Accordingly, “[Section] 1064 has been
described as a kind of statute of limitations for actions
seeking cancellation of marks registered for more than
five years,” Shakespeare Co. v. Silstar Corp. of
America, Inc., 9 F.3d 1091, 1096 (4th Cir. 1993); see
also Pinkette Clothing, Inc. v. Cosmetic Warriors Ltd.,

7
894 F.3d 1015 (9th Cir. 2018):

Although . . . a petition [for cancellation]

may be filed “[a]t any time,” § 1064 limits
the grounds for cancellation after five
years have passed from the date of
registration—i.e., after the mark becomes
incontestable. [] § 1064.

***

There is no question that § 1064 is not a

statute of limitations in the usual sense
of barring an action entirely once a
defined period expires. Incontestability
merely limits the grounds on which
cancellation may be sought. A petition
brought within five years of registration
(against a contestable mark) may assert
any ground that would have
prevented registration in the first
place —most commonly that the
registered mark creates a likelihood of
confusion with the petitioner’s preexist-
ing mark. 15 U.S.C. § 1064. By contrast,
a petition brought five years after
registration (against an incontestable
mark) may only assert one of several
enumerated grounds for cancellation, in-
cluding genericism, functionality, aban-
donment, or fraudulent procurement. Id.

Id. at 1018, 1023 (emphases added).

8
 In contrast to Sections 13 and 14 of the Lanham
Act, Section 38, 15 U.S.C. § 1120, does require a corre-
lation between standing and the merits, as that
provision states: “[a]ny person who shall procure
registration . . . of a mark by a false or fraudulent
declaration or representation . . . or by any false
means, shall be liable in a civil action by any person
injured thereby for any damages sustained in conse-
quence thereof.” 15 U.S.C. § 1120 (emphases added).
Thus, “it is not enough for the plaintiff merely to
establish fraud in the registration of the trademark;
the plaintiff must also show that [it] sustained some
damage in consequence of the fraud.” Virginia Poly-
technic Inst. & State Univ. v. Hokie Real Estate, Inc.,
813 F. Supp. 2d 745, 755 (W.D. Va. 2011) (emphasis
added; citation and quotation marks omitted).

The Court of Appeals deemed, albeit sub silentio,

Ritchie to have been abrogated by Tam. More specif-
ically, the Court of Appeals implicitly, and erroneously,
found that, as a result of Tam, the petitioner in Ritchie
would have been precluded from basing his standing
upon disparagement even if the merits of his claims
had been unrelated to disparagement.

9
 B. Petitioner was not Deprived of
Standing Merely Because, Accord-
ing to His Theory of Standing, There
Might be a Large Number of Trade-
marks that he Could Challenge

The Subject Order states:

Finally, Mr. Bank contests the

TTAB’s alleged conclusion that “the mark
in question [must be] part of a class of
marks to which the petitioner might
also object .” Appellant’s Br. 9
(capitalization altered); see A.A. 8 [(Appx.
B, 19a-20a)] (asserting that Mr. Bank’s
“pleading of standing is vague and does
not relate specifically to the involved
service mark”). To the extent that Mr.
Bank is challenging the statement as one
which creates a “class of marks” require-
ment, such an interpretation strains the
meaning of the cited portion of the
TTAB’s opinion.

Appx. A, 9a (emphases added; brackets by the Court of

Appeals). The Court of Appeals’ insertion of “must be”
should have been “must not be.” That is because Bank
argued that the TTAB had wrongly found that one of
the reasons why Bank lacked standing was that the
challenged mark was part of a larger class of trade-
marks, i.e., “‘mark[s] involving the use of animals . . .
in connection with any services,’” Bank’s Principal
Brief (“Bank Pr. Br.”; Fed. Cir. No. 2019-1880, Doc. 21)

10
at 9, quoting Appx. B, 20a, all of the marks of which
Bank would have standing to challenge if he had
standing to challenge the mark at issue. First, Bank
quoted the following from the TTAB’s Order:

Moreover, Petitioner’s pleading of stand-

ing is vague and does not relate
specifically to the involved service mark.
Petitioner pleads that a registration “that
applies to the activity of an animal is
demeaning to the type of animal that is
the subject of such mark.” Petition to
cancel ¶¶ 1-3. The pleading therefore
appears to allege, in general, that a
trademark registration for any mark
involving the use of animals for use in
connection with any services is “demean-
ing.” The petition to cancel does not
allege that Petitioner has a reasonable
belief of harm from Respondent’s involved
registration for restaurant services.

Bank Pr. Br. at 9, quoting Appx. B, 19a-20a (emphases

added; additional quotation marks omitted).

Second, Bank explained:

The fact that the basis of Bank’s

assertion of harm, i.e., that [Respon-
dent]’s mark, in “appl[ying] to the activity
of an animal (as opposed to a trademark
that is merely a representation of such
activity) is demeaning to the type of

11
animal that is the subject of such mark,”
[Bank’s TTAB Petition], ¶ 1 [], and that
“[t]he demeaning of animals in the
manner set forth in the previous para-
graph is offensive to Bank and denigrates
the value he places on the respect, dig-
nity, and worth of animals,” id., ¶ 2 [],
might also apply to other marks does not
deprive Bank of standing. In Ritchie, this
Court held that the petitioner had stand-
ing to oppose “the trademarks O.J. SIMP-
SON, O.J., and THE JUICE,” Ritchie,
170 F.3d at 1093, based upon:

“[his] [alleg]ation, inter alia, that he

would be damaged by the registration
of the marks because the marks dispa-
rage his values, especially those val-
ues relating to his family. In addition,
in his notice of opposition, Mr. Ritchie
described himself as a “family man”
who believes that the “sanctity of
marriage requires a husband and wife
who love and nurture one another,”
and as a member of a group that could
be potentially damaged by marks that
allegedly are synonymous with wife-
beater and wife-murderer. Further-
more, Mr. Ritchie alleged that the
marks are scandalous because they
would “attempt to justify physical
violence against women.”

12
 Id. at 1097 (emphases added). Just as the
petitioner in Ritchie had standing even
though the number of marks that could
have offended him was as limitless as the
imagination, and just as he was concern-
ed solely with the mere existence of the
opposed marks, rather than with their
intended uses, i.e., “with a broad range of
goods, including figurines, trading cards,
sportswear, medallions, coins, and pre-
paid telephone cards,” id. at 1093, Bank,
who is analogously situated, likewise has
standing.

Bank Pr. Br. at 8-10 (emphases in original).

II. THE IMPOSITION OF SANCTIONS

WAS SUCH AN ABUSE OF AUTHOR-
ITY THAT THIS COURT SHOULD
EXERCISE ITS SUPERVISORY AUTH-
ORITY IN ORDER TO VACATE IT

The Subject Order, referring to the TTAB proceed-

ing and to Doyle v. Al Johnson’s Swedish Restaurant
& Butik, Inc., 101 U.S.P.Q.2d 1780, 2012 WL 695211
(T.T.A.B. 2012), in which Bank represented the peti-
tioner, states:

We conclude that this appeal and Mr.

Bank’s motion for sanctions are frivolous.
Mr. Bank filed multiple petitions with the
TTAB regarding the Goats on the Roof
Registration, all of which were dismissed

13
 for, inter alia, standing. Mr. Bank was
afforded the opportunity to revise his
petition and remedy the standing defect,
which he did not do. Despite the fact that
Mr. Bank was informed by the TTAB that
his disparagement claim was based on an
unconstitutional and stricken section of
the Lanham Act, he raises it again before
this court. Based on these facts and our
analysis, Mr. Bank’s appeal is frivolous.
See Finch v. Hughes Aircraft Co., 926
F.2d 1574, 1583 (Fed. Cir. 1991) . . . .
Accordingly, we grant Swedish Restaur-
ant’s motion for costs and attorney fees,
including the costs and fees incurred in
relation to the parties’ sanctions motions,
and deny Mr. Bank’s motion for sanc-
tions.

Appx. A, 10a-11a (emphases added).

First, and most importantly, the appeal was not

frivolous; indeed, it was meritorious. The same is true
of Bank’s motion for sanctions (Doc. 33).

Second, Rule 38 of the Federal Rules of Appellate

Procedure, pursuant to which the court imposed
sanctions, see Appx. A, 9a-10a, does not even authorize
sanctions based on the proceeding from which the
appeal is taken, let alone a separate proceeding, such
as Doyle. See Boyer v. BNSF Railway Co., 824 F.3d
694, 711 (7th Cir. 2016) (“Rule 38 necessarily focuses
on what a party has done in the appellate court rather

14
than the district court,” citing Roth v. Green, 466 F.3d
1179, 1188 (10th Cir. 2006), and In re 60 E. 80th St.
Equities, Inc., 218 F.3d 109, 118, n.4 (2d Cir. 2000)
(emphasis added)).

Third, the alleged basis of standing in Doyle had

nothing to do with disparagement in any event. See
Doyle, 2012 WL 695211 at *1.

Fourth, Doyle was not binding on the Court of

Appeals.

Fifth, the notion that sanctions were supported by

the fact that Bank did not “revise his petition and
remedy the standing defect” wrongly assumes that
there was such a defect and that it was so great that
Bank’s decision not to amend the petition rendered the
appeal frivolous.

Sixth, in Finch v. Hughes Aircraft Co., 926 F.2d

1574 (Fed. Cir. 1991), the court found that an attorney
who was a “member[] of the bar of th[e] court,” id. at
1583, and had “litigated in th[e] court previously,” id.
at 1583, n.7, “ha[d] made no attempt to address the
overwhelming authority against his position, much less
rebut that authority,” id. at 1580, as a result of which
the court, as a Rule 38 sanction, “award[ed] to [the]
appellee [] double its cost.” Id. at 1583 (emphasis
added).

Unlike the attorney in Finch, Bank is not admitted

to the bar of the Federal Circuit and had not
previously litigated in that court (in any capacity).

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More importantly, however, Bank addressed each of
the bases upon which the TTAB made its ruling and
neither ignored, nor failed to rebut, authority against
his position, the only such authority having been
Doyle, which, again, was not binding on the Court of
Appeals. See Bank Pr. Br. at 12-13. Indeed, Bank
should have prevailed on the appeal.

Seventh, Finch also found that the attorney had

sought to litigate claims that were precluded by res
judicata, see Finch, 926 F.2d at 1577, and duplicative
of another pending action, see id., and that the
attorney “[had] not oppose[d] the [district court’s]
dismissal [of the claims] and therefore waived his right
to appeal,” id., at 1580, but, “argue[d], for the first time
[on appeal], that th[e] dismissal was improper,” id., at
1577, even though “[i]t is well-settled that, absent
exceptional circumstances, a party cannot raise on
appeal legal issues not raised and considered in the
trial forum.” Id.

Finally, Finch found:

Not one word is offered in [the attorney’s]

reply brief in defense of his opening brief.
Nor did he make a credible defense of the
statements in his briefs or the basis of his
appeal when explicitly invited to do so at
oral argument before the court. [The
attorney]’s failure to explain and defend
his reasons for appealing and his post-
filing conduct, even when asked to do so,
further confirms our view that his frivo-

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 lous appeal and misconduct before us
merit sanctions.

Id. at 1582 (emphases added).

The Subject Order, further confusing the question

of standing with the question of the merits, states:

[T]he sole standing argument that Mr.

Bank raised before the TTAB, A.A. 6-8
[(Appx. B, 16a-20a)], and recites on
appeal, [Bank Pr. Br. at] 9, is that the
Swedish Restaurant’s trade dress was
disparaging to himself as it “is
demeaning to” goats, A.A. 15 [(Bank’s
TTAB Petition, ¶ 1)]. Yet as Mr. Bank
conceded before the TTAB, the Supreme
Court’s decision in Matal v. Tam, 137 S.
Ct. 1744, 1764 (2017), foreclosed his
argument, as it held unconstitutional
the prohibition on the registration of
disparaging marks under the Lanham
Act. A.A. 31-32 [(Appx. B, 18a)]
(explaining that, following the issuance of
Tam, Mr. Bank “acknowledge[d] that
disparagement [wa]s no longer a
cognizable claim under the [Lanham]
Act”). In Tam, the Court held as unconst-
itutional 15 U.S.C. § 1052(a) of the Lan-
ham Act, concluding that its prohibition
on disparaging marks was invalid under
the First Amendment protection of
speech. See Tam, 137 S. Ct. at 1765. To

17
 the extent that Mr. Bank relies upon
disparagement either as the grounds for
his petition or . . . to establish his stand-
ing, the argument is without merit after
Tam.

Appx. A, 6a (emphases added; brackets in original).

First, the extent to which “Bank relie[d] upon dis-
paragement . . . as the grounds for his petition,” as
opposed to having done so “to establish his standing,”
is none, both before the TTAB and the Court of
Appeals.

Second, the Court of Appeals’ claim that Bank

“conceded,” before the TTAB, that Bank’s “sole stand-
ing argument” was “foreclosed” by Tam is perfectly
false. Although the TTAB rejected Bank’s position on
the question of whether Tam precluded disparagement
as the basis of Bank’s standing, the TTAB, unlike the
Court of Appeals, accurately characterized Bank’s
argument; indeed, the TTAB did so on the very pages
that the Court of Appeals cited as containing the
TTAB’s finding of Bank’s ‘concession,’ see Appx. B,
17a-19a, and, specifically, id., 18a (“Petitioner
acknowledges that disparagement is no longer a cog-
nizable claim under the [Lanham] Act. Petitioner
argues, however, that his allegations that the mark
is offensive to him are sufficient to support a pleading
of standing. Accordingly, Petitioner argues that
although he ‘may not rely upon the offensiveness of
[Respondent’s] trademark in order to prevail on the
merits … the foreclosure upon such reliance has
nothing to do with standing….’” (emphases added,

18
except bold-only emphases; citations omitted)); id. (“as
acknowledged by Petitioner, the only ground for
cancellation is the claim of functionality” (emphases
added)); id., 19a (“Petitioner may not rely upon allega-
tions that the involved mark is personally offensive
to him to plead his standing to assert a claim that the
involved mark is functional” (emphases added;
footnote omitted)).

As the TTAB understood, Bank, far from having

“conceded” that Tam had foreclosed disparagement as
the basis of Bank’s standing, had argued the exact
opposite.

CONCLUSION

This Petition should be granted.

Respectfully submitted,

TODD C. BANK
TODD C. BANK,
ATTORNEY AT LAW, P.C.
119-40 Union Turnpike
Fourth Floor
Kew Gardens, New York 11415
(718) 520-7125
[email protected]

Counsel for Petitioner

APRIL, 2019

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