Intellectual Property News and Reports

Plaintiffs Bacardi & Company Limited and Bacardi USA, Inc. (collectively, Bacardi) claim that the Director of the United States Patent and Trademark Office (PTO) violated Section 9 of the Lanham Act, 15 U.S.C. § 1059, and the PTO’s own regulations by purporting to renew a trademark registration ten years after it expired. Bacardi sued under the Administrative Procedure Act (APA), 5 U.S.C. § 702, to set aside the allegedly unlawful agency action. The district court believed the Lanham Act precluded judicial review under the APA and so dismissed Bacardi’s lawsuit for lack of subject matter jurisdiction. We conclude that the Lanham Act does not foreclose an APA action for judicial review of the PTO’s compliance with statutes and regulations governing trademark registration renewal. We therefore reverse the district court’s judgment.

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