Here (below) is something you don’t see every day. It’s a summary order [UPDATE: amended and corrected on August 18, 2021] in IOB Realty v. Patsy’s, the latest installment in the endless PATSY’S trademark litigation saga. There’s no sense in summarizing a summary order — but, really, wow. (Not that the previous opinion in an “unrelated” Patsy’s matter was just a bunch of calamari. Really — wow.)
And I was there!
Now, if you were there, frankly you’d have experienced it very differently from the way this opinion would make it appear. You’d have experienced the sight of a very long-serving, respected but evidently impatient, NOT to say cranky, Southern District of New York judge sticking his finger in the eyes of the Second Circuit following a remand:
In May of last year, a panel of this Court vacated the district court’s order and judgment regarding the matter now before us. Of concern to the panel was that, rather than applying the law within the strictures of the Federal Rules of Civil Procedure, Judge Stanton crafted a remedy that he concluded would address the “reality” of the situation.
On remand, the district court was instructed to (1) “state whether it is granting or denying the motions for summary judgment,” and (2) “explain the basis for its authority to order the PTO to grant I.O.B. Realty’s pending trademark applications and to register the PATSY’S PIZZERIA marks.”
Upon receiving that order, the district court filed a “response to order of remand,” explaining that “[t]he judgment granted full relief to the parties, and there was no purpose, even an academic one, in separately addressing the summary judgment motions”; on June 4, 2020, it then issued essentially the same judgment as before, verbatim, in which it again ordered the PTO to grant I.O.B.’s application and to register the PATSY’S PIZZERIA mark.
Well, that won’t do. So, on our client’s appeal from that, the Second Circuit left nothing to chance:2d-Circuit-Amended-Order-August-18-2021
But see how delicately the court handled it. Our client wanted the judge’s head on a pike, of course, and its ire was understandable. And indeed this time the Court of Appeals entered summary judgment under Rule 56 based on its de novo review, instead of remanding again. Sure, the Circuit (a different panel… hmm) could have done that the first time (and begged it to) … but you know how things work these days in the federal courts. Kicking the can down the road is what they do.
Still, the Second Circuit’s delicacy is a life lesson, really. Not only did the panel not torture everyone involved to make sure the district court did it their way, but it gave the trial court every benefit of the doubt while acknowledging that he blew it. Ultimately, it worked out well enough for Patsy’s Brand, our client.
Kudos to my friends, my former partner Joel MacMull and our colleague Brian Block of Mandelbaum Salsburg in Roseland, New Jersey.