El Burro, Inc. v. Knuckle Sandwich LLC
- Vince Chhabria
- 3:23-cv-03782
- U.S. District Court · Northern District of California
- 3
In El Burro v. Knuckle Sandwich, Judge Chhabria denied dismissal, ruling that missing a five-day Trademark Board notice did not remove jurisdiction.
El Burro, Inc. and Knuckle Sandwich LLC; Knuckle Sandwich LLC was required to file an answer within 14 days of the order.
What happened
El Burro, Inc. sued Knuckle Sandwich LLC after a decision by the Trademark Trial and Appeal Board. Knuckle Sandwich argued that El Burro’s failure to notify the Board within five days meant the federal court could not hear the case.
The court explained that the governing statute required El Burro to file the civil action within the required time, and Knuckle Sandwich did not dispute that El Burro met that deadline. The five-day notice requirement appeared only in a regulation, not in the statute, and the court viewed it as an administrative measure for the Board rather than a condition on the federal court’s power.
The court denied Knuckle Sandwich’s motion to dismiss. Judge Chhabria ordered Knuckle Sandwich to file its answer within 14 days of the order.
The detailed version
- El Burro, Inc. v. Knuckle Sandwich LLC · No. 3:23-cv-03782
- Vince Chhabria
- Dec. 20, 2023
Background
El Burro, Inc. filed a civil action following a decision by the Trademark Trial and Appeal Board (TTAB). Knuckle Sandwich LLC moved to dismiss, arguing that El Burro’s failure to comply with the five-day deadline in 37 C.F.R. § 2.145(c)(3) for notifying the TTAB of the lawsuit deprived the district court of jurisdiction—its legal authority to hear the case.
The court noted that 15 U.S.C. § 1071(b) permits a party to bring a civil action within the period set by the statute and the applicable time limit. Knuckle Sandwich did not dispute that El Burro filed this case within that statutory time frame. The statute does not require the party filing the civil action to notify the TTAB.
Court’s Analysis
The court rejected Knuckle Sandwich’s reliance on cases involving environmental statutes that expressly required pre-suit notice. In those cases, regulations supplied details about notices required by the statutes. Here, by contrast, the governing statute contains no comparable TTAB-notice requirement.
The court also distinguished Federal Circuit cases involving missed appeal deadlines or an explicit statutory notice requirement. Those cases did not establish that the five-day notice provision in 37 C.F.R. § 2.145(c)(3) is jurisdictional. The court further reasoned that the regulation’s language indicates that the notice serves as a housekeeping measure to help the TTAB track cases and close its proceedings. It does not state that notifying the TTAB is a prerequisite to the district court’s authority to hear the civil action.
Disposition
The court denied Knuckle Sandwich LLC’s motion to dismiss. Knuckle Sandwich’s answer was due within 14 days of the order. Judge Vince Chhabria entered the order on December 20, 2023.
Read the full 3-page opinion on CourtListener, the free public archive maintained by the Free Law Project.