Applying Arthrex to the TTAB: Are Administrative Trademark Judges Constitutionally Appointed? (RECORDING)

On October 13, 2020, the Supreme Court agreed to review two questions bearing on the constitutionality of the process by which administrative law judges are appointed to the Patent Trial and Appeal Board. Each has its origins in the Federal Circuit’s decision a year earlier in Arthrex v. Smith & Nephew, which vacated a USPTO inter partes review after finding that USPTO Administrative Patent Judges’ (APJs) appointments by the Secretary of Commerce was unconstitutional. APJs “exercise[d] significant authority” in carrying out their responsibility to “oversee discovery,” “apply the rules of Federal Evidence,” “hear oral arguments,” “issue final written decisions containing fact findings and legal conclusions,” and “decide the patentability of the claims at issue.” The “discretion and supervision” provided by the Secretary of Commerce and the USPTO Director was insufficient to render them inferior officers because APJs could “independently render a final decision on behalf of the United States” and “the Director d[id] not have the sole authority to review or vacate any decision by a panel of APJs.” The Patent Act currently provides only a limited power to remove APJs. Consequently, the court found that APJs are “principal officers” who “must be appointed by the President and confirmed by the Senate; because they were not, the current structure of the Board violated the Appointments Clause.” The court remedied the violation by “partial invalidation of the statutory limitations on the removal of APJs” before remanding the action. In its May decision in Virnetx Inc. v. Cisco Systems, the Federal Circuit expanded Arthrex beyond inter partes review and other AIA trials.  

While the patent community awaits the resolution of Arthrex with regard to APJs, its applicability to Trademark Trial and Appeal Board judges is a question occupying trademark practitioners. Since Arthrex, at least two unsuccessful litigants before the TTAB have appealed to the Federal Circuit and asked that court to apply Arthrex to hold the appointments process for TTAB judges unconstitutional. Although the Federal Circuit has so far declined to rule on the applicability of Arthrex to TTAB judges’ appointments in those cases, the court will inevitably face that issue, whether in either of the two pending appeals squarely presenting it or in a future one. And, of course, the Supreme Court’s disposition of the questions before it will very likely inform the Federal Circuit’s holdings on the trademark side.  

TTAB judges are appointed and protected by the same statutory provisions as pre-Arthrex APJs. They oversee appeals of trademark examiner decisions, as well as adversarial proceedings between parties: oppositions (party opposes an application after publication in the Official Gazette) and cancellations (party seeks to cancel an existing registration), final decisions in which are subject to appeal to an Art. III court.  

The USPTO’s briefs in Soler-Somahano v. Coca-Cola Co. and Schiedmayer Celesta GmbH v. Piano Factory Grp. argue that a different statutory regime gives the Director of the United States Patent and Trademark Office clear control over the actions of TTAB judges, and substantially greater control than the Arthrex panel said the Director had over administrative patent judges. Consequently, those briefs assert that Arthrex is not applicable in the TTAB context. Our panel of experts will review the Federal Circuit’s reasoning in Arthrex and consider the authority exercised by TTAB judges in fulfilling their statutory responsibilities to review examiner decisions and oversee oppositions and cancellations. They will discuss: 

  • Whether the USPTO Director exercises different levels of supervision and control over TTAB judges and their decision-making than over PTAB judges. 
  • The Director’s ability to decide matters before the TTAB on his or her own authority. 
  • Whether differences in the statutes and USPTO rules of practice governing TTAB and PTAB proceedings, including the non-appealability of PTAB institution decisions, preclude an expansion of Arthrex to TTAB judges. 
  • Whether the nature of the different rights adjudicated by PTAB and TTAB judges affects the analysis of the degree of authority the judges exercise. 

Ted Davis (Moderator)


Kilpatrick Townsend & Stockton LLP

is a partner in the Atlanta office of Kilpatrick Townsend & Stockton LLP, where he has practiced trademark, copyright, false advertising, and unfair competition law since 1990. Outside the office, he has taught as an adjunct professor at the Emory University and University of Georgia law schools and has testified before Congress on trade dress and Internet issues. He is currently a member of IPO’s U.S. Trademark Law Committee, as well as a past chair of the American Bar Association Section of Intellectual Property Law and a past member of the Board of Directors of the International Trademark Association.  Ted received his undergraduate degree from Davidson College and his law degree from the University of Virginia. He is a member of the Georgia, New York, and District of Columbia bars. 

Adam Charnes


Kilpatrick Townsend & Stockton LLP

is a partner at Kilpatrick Townsend & Stockton LLP and focuses his practice on appellate and constitutional litigation. A former law clerk to Supreme Court Justice Anthony M. Kennedy, Mr. Charnes has extensive experience in cases pending in federal and state courts of appeals across the nation, including the United States Supreme Court. Mr. Charnes recently successfully argued Thryv, Inc. v. Click to Call Technologies, L.P., 140 S. Ct. 1367 (2020). In addition to intellectual property matters, he has argued appeals involving such diverse areas of the law as ERISA, tax, product liability, contracts, business torts, trade secrets, environmental law, and Indian law. Mr. Charnes is a fellow of the prestigious American Academy of Appellate Lawyers. 

Arti Rai

Elvin R. Latty Professor of Law and co-Director, The Center for Innovation Policy

Duke University Law School

, Elvin R. Latty Professor of Law and co-Director, >span class="TextRun SCXW206512466 BCX0" xml:lang="EN-US" lang="EN-US"> at Duke Law, is an internationally recognized expert in intellectual property (IP) law, innovation policy, administrative law, and health law. Rai's research on innovation law and policy in biotechnology, pharmaceuticals, and software has been funded by NIH, the Kauffman Foundation, and the Woodrow Wilson Center.  She has served as the chief policy advisor to the Director of the U.S. Patent and Trademark Office; a member of the National Advisory Council for Human Genome Research; and as a public member of the Administrative Conference of the United States.  Rai has also served on, or as a reviewer for, numerous National Academies of Science committees. 

Jeffrey Samuels

Professor Emeritus

The University of Akron School of Law

is a Professor Emeritus at The University of Akron School of Law.  From August 1998 to June 2014, he served as the David L. Brennan Professor of Law and Director of the Center for Intellectual Property Law and Technology at The University of Akron School of Law.  From November 1987 until January 1993, Mr. Samuels served as the Assistant Commissioner (now Commissioner) for Trademarks at the United States Patent and Trademark Office. After leaving the PTO, Mr. Samuels engaged in the private practice of law. From 2003-2008, chaired the PTO’s Trademark Public Advisory Committee. Mr. Samuels currently serves as an expert witness and consultant in trademark matters and as a panelist under various domain name dispute procedures.


Applying Arthrex to the TTAB: Are Administrative Trademark Judges Constitutionally Appointed? (RECORDING)
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