Federal Circuit Decides Case of First Impression on Article III Standing for Appeals from the Trademark Trial & Appeal Board

December 13, 2021

Brooklyn Brewery Corporation v. Brooklyn Brew Shop, 17 F.4th 129 (Fed. Cir. Oct. 27, 2021), presented a case of first impression for the Federal Circuit on establishing Article III standing to appeal a Trademark Trial & Appeal Board decision.  The Court held:  “To establish injury in fact in a trademark case, an opposer must demonstrate a concrete and particularized risk of interference with the rights that flow to it from registration of its own mark, or some other Article III injury. This does not require that an opposer show that it faces a risk of potential trademark infringement liability, though that could be sufficient to establish standing. It may also establish standing by showing that if a mark is not canceled, or if an application is granted, the very registration and use of the mark would cause the opposer concrete and particularized harm.” 17 F.4th at 138-39.  The Court further held that the test “for likelihood-of-confusion or descriptiveness purposes is whether the challenger and registrant compete in the same line of business and failure to cancel an existing mark, or to refuse registration of a new mark, would be likely to cause the opposer competitive injury.” Id. at 139.   The Court clarified that an opposer “cannot show standing by merely showing the registrant competes with the opposer and receives a benefit from an unlawful trademark;” rather, a “more particularized showing of harm is required.” Id.