902 Appeal To Court Of Appeals For The Federal Circuit
902.01 Notice Of Appeal
Trademark Act § 21(a)(2), 15 U.S.C. § 1071(a)(2) When an appeal is taken to the United States Court of Appeals for the Federal Circuit, the appellant shall file in the United States Patent and Trademark Office a written notice of appeal directed to the Director, within such time after the date of the decision from which the appeal is taken as the Director prescribes, but in no case less than 60 days after that date.
37 C.F.R. § 2.145 Appeal to court and civil action.
- (a) For an Appeal to the United States Court of Appeals for the Federal Circuit under section 21(a) of the Act.
- (1) An applicant for registration, or any party to an interference, opposition, or cancellation proceeding or any party to an application to register as a concurrent user, hereinafter referred to as inter partes proceedings, who is dissatisfied with the decision of the Trademark Trial and Appeal Board, and any registrant who has filed an affidavit or declaration under section 8 or section 71 of the Act or who has filed an application for renewal and is dissatisfied with the decision of the Director (§§ 2.165, 2.184), may appeal to the United States Court of Appeals for the Federal Circuit. It is unnecessary to request reconsideration by the Board before filing any such appeal; however, a party requesting reconsideration must do so before filing a notice of appeal.
- (2) In all appeals under section 21(a), the appellant must take the following steps:
- (i) File the notice of appeal with the Director, addressed to the Office of the General Counsel, as provided in § 104.2 of this chapter;
- (ii) File a copy of the notice of appeal with the Trademark Trial and Appeal Board via ESTTA; and
- (iii) Comply with the requirements of the Federal Rules of Appellate Procedure and Rules for the United States Court of Appeals for the Federal Circuit, including serving the requisite number of copies on the Court and paying the requisite fee for the appeal.
- (3) Additional requirements.
- (i) The notice of appeal shall specify the party or parties taking the appeal and shall designate the decision or part thereof appealed from.
- (ii) In inter partes proceedings, the notice of appeal must be served as provided in § 2.119.
37 C.F.R. § 104.2 Address for mail and service; telephone number.
(a) Mail under this part should be addressed to the
Office of the General Counsel
United States Patent and Trademark Office
P.O. Box 1450
Alexandria,Virginia 22313-1450
(b) Service by hand should be made during business hours to the
Office of the General Counsel,
10B20, Madison Building East,
600 Dulany Street,
Alexandria, Virginia 22313-1450
(c) The Office of the General Counsel may be reached by telephone at 571-272-7000 during business hours.
A party taking an appeal to the United States Court of Appeals for the Federal Circuit from a decision of the Board must give written notice thereof both to the Director and to the Court of Appeals for the Federal Circuit, and pay to the Court the fee required by the Court's rules. [ Note 1.]
Specifically, the original notice of appeal must be filed in the USPTO, within the time required by 37 C.F.R. § 2.145(d). [ Note 2.] See TBMP § 902.02. The certificate of mailing and certificate of transmission procedures described in 37 C.F.R. § 2.197, and the Priority Mail Express® procedure described in 37 C.F.R. § 2.198, are available for filing a notice of appeal with the Director. However, the notice of appeal filed with the Board must be through ESTTA. The notice must specify the party or parties taking the appeal and designate the decision or part thereof appealed from. However, reasons for appeal need not be given. [ Note 3.] A copy of the decision being appealed, and a copy of any decision on reconsideration thereof, should be attached to the notice of appeal. [ Note 4.] If the appeal is taken from a decision of the Board in an inter partes proceeding, a copy of the notice must be served on every other party to the proceeding, in the manner prescribed in 37 C.F.R. § 2.119. [ Note 5.] See TBMP § 113. The written notice, if mailed to the USPTO (rather than hand-delivered to the Office of the General Counsel), must be addressed to Office of the General Counsel, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. [ Note 6.]
Notices of appeal must be filed with the Board through ESTTA. For appeals of ex parte decisions, the applicant should select the ESTTA button "Appeal to CAFC"; for appeals of inter partes decisions, the appellant should select the button "Other Motions/Papers."
For information concerning the ways (i.e., by hand delivery, first-class mail, electronic filing, etc.) in which a notice of appeal may be filed with the Director, the filing date of a notice of appeal, and the address to be used on a notice of appeal mailed to the Director, see 37 C.F.R. § 104.2, 37 C.F.R. § 2.190, 37 C.F.R. § 2.195, 37 C.F.R. § 2.197, and 37 C.F.R. § 2.198.
For further information concerning how to file a notice of appeal, contact the Office of the Solicitor in the USPTO at (571) 272-9035.
For filing notices of appeal in the Court of Appeals for the Federal Circuit, appellants must comply with the Federal Rules of Appellate Procedure and Rules for the United States Court of Appeals for the Federal Circuit. [ Note 7.] A copy of the decision being appealed, and a copy of any decision on reconsideration thereof, should be attached to the copy of the notice. [ Note 8.]
The Federal Circuit Rules and Forms can be found on the Court’s website at: www.cafc.uscourts.gov.
NOTES:
1. 37 C.F.R. § 2.145(a); Fed. Cir. R. 15.
2. Trademark Act § 21(a)(2), 15 U.S.C. § 1071(a)(2); 37 C.F.R. § 2.145(d).
5. See 37 C.F.R. § 2.145(a)(3)(ii).
6. See 37 C.F.R. § 104.2.
7. See 37 C.F.R. § 2.145(a)(2)(iii).
8. See the website for the Court of Appeals for the Federal Circuit at: www.cafc.uscourts.gov.
902.02 Time For Filing Notice Of Appeal, Cross-Appeal
Trademark Act § 21(a)(2), 15 U.S.C. § 1071(a)(2) When an appeal is taken to the United States Court of Appeals for the Federal Circuit, the appellant shall file in the United States Patent and Trademark Office a written notice of appeal directed to the Director, within such time after the date of the decision from which the appeal is taken as the Director prescribes, but in no case less than 60 days after that date.
37 C.F.R. § 2.145(d) Time for appeal or civil action.
- (1) For an appeal under section 21(a). The notice of appeal filed pursuant to section 21(a) of the Act must be filed with the Director no later than sixty-three (63) days from the date of the final decision of the Trademark Trial and Appeal Board or the Director. In inter partes cases, the time for filing a notice of cross-appeal expires 14 days after service of the notice of appeal or 63 days from the date of the decision of the Trademark Trial and Appeal Board or the Director, whichever is later.
- (2) For a notice of election under 21(a)(1) and a civil action pursuant to such notice of election. The times for filing a notice of election under section 21(a)(1) and for commencing a civil action pursuant to a notice of election are governed by section 21(a)(1) of the Act.
- (3) For a civil action under section 21(b). A civil action must be commenced no later than sixty-three (63) days after the date of the final decision of the Trademark Trial and Appeal Board or Director. In inter partes cases, the time for filing a cross-action expires 14 days after service of the summons and complaint or 63 days from the date of the decision of the Trademark Trial and Appeal Board or the Director, whichever is later.
- (4) Time computation.
- (i) If a request for rehearing or reconsideration or modification of the Board decision is filed within the time specified in § 2.127(b), § 2.129(c), or § 2.144, or within any extension of time granted thereunder, the time for filing an appeal or commencing a civil action shall expire no later than sixty-three (63) days after action on the request.
- (ii) Holidays. The times specified in this section in days are calendar days. If the last day of time specified for an appeal, notice of election, or commencing a civil action falls on a Saturday, Sunday or Federal holiday in the District of Columbia, the time is extended to the next day which is neither a Saturday, Sunday nor a Federal holiday in the District of Columbia pursuant to § 2.196.
37 C.F.R. § 2.145(e) Extension of time.
- (1) The Director, or the Director’s designee, may extend the time for filing an appeal, or commencing a civil action, upon written request if:
- (i) Requested before the expiration of the period for filing an appeal or commencing a civil action, and upon a showing of good cause; or
- (ii) Requested after the expiration of the period for filing an appeal or commencing a civil action, and upon a showing that the failure to act was the result of excusable neglect.
- (2) The request must be filed as provided in § 104.2 of this chapter and addressed to the attention of the Office of the Solicitor. A copy of the request should also be filed with the Trademark Trial and Appeal Board via ESTTA.
The time for filing a notice of appeal to the United States Court of Appeals for the Federal Circuit ("Federal Circuit") is sixty-three (63) days from the date of the Board decision which is the subject of the appeal. [ Note 1.] If the last day for filing an appeal falls on a Saturday, Sunday or Federal holiday in the District of Columbia, then the time is extended to the next day which is not a Saturday, Sunday or Federal holiday. [ Note 2.] When the Board enters judgment in favor of a Trademark Act §1(b), 15 U.S.C. § 1051(b) applicant subject to that party’s establishment of constructive use (see TBMP § 901.02(b)), the time for filing an appeal runs from the date of the entry of judgment subject to establishment of constructive use. [ Note 3.]
If a request for rehearing, reconsideration, or modification of the Board’s decision is filed within the time specified in 37 C.F.R. § 2.127(b), 37 C.F.R. § 2.129(c), or 37 C.F.R. § 2.144, or within any extension of time granted thereunder, the time for filing an appeal expires sixty-three (63) days after action on the request. [ Note 4.] If the last day for filing an appeal falls on a Saturday, Sunday or Federal holiday in the District of Columbia, then the time is extended to the next day which is not a Saturday, Sunday or Federal holiday. [ Note 5.] Because the Board’s rules do not permit a second or subsequent request for reconsideration, only a timely first request for reconsideration or modification will toll the time for filing an appeal.
In an inter partes case, the time for filing a notice of cross-appeal expires (1) 14 days after service of the notice of appeal, or (2) 63 days from the date of the Board decision which is the subject of the appeal, whichever is later. [ Note 6.]
The certificate of mailing and certificate of transmission procedures described in 37 C.F.R. § 2.197, and the Priority Mail Express® procedure described in 37 C.F.R. § 2.198, are available for filing a notice of appeal or a notice of cross-appeal with the Director. However, the notice of appeal filed with the Board must be through ESTTA.
If a written request to extend the time for appeal is filed before the expiration of the appeal period, the Director may grant the request on a showing of good cause. If the request is not filed until after the expiration of the appeal period, the Director may grant the request only on a showing that the failure to act was the result of excusable neglect. [ Note 7.] A request for an extension of time to file an appeal should be addressed to the attention of the Office of the General Counsel, as provided in 37 C.F.R. § 104.2, and directed to the attention of the Solicitor. See 37 C.F.R. § 2.146(e)(2).
It is the Director, through the Office of the Solicitor in the Office of the General Counsel, not the Board, who determines whether a notice of appeal has been timely filed. If the Director determines that a notice of appeal was not timely, the Director notifies the clerk of the Federal Circuit thereof. The clerk in turn issues an order to the appellant to show cause why the appeal should not be dismissed, and refers appellant’s response to the Court. [ Note 8.]
An appellant that has received an order to show cause from the clerk of the Federal Circuit may file a request under 37 C.F.R. § 2.145(e) for an extension of time to file an appeal, accompanied by a showing that the late filing of the notice of appeal was the result of excusable neglect. The request should be filed in the Office of the General Counsel and directed to the attention of the Solicitor, which will notify the clerk of the Court of the Director’s decision on the request.
NOTES:
1. Trademark Act § 21(a)(2), 15 U.S.C. § 1071(a)(2); 37 C.F.R. § 2.145(d)(1).
2. 37 C.F.R. § 2.145(d)(4)(ii).
3. 37 C.F.R. § 2.129(d); Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544-45 (TTAB 1991) (judgment entered in favor of applicant subject to applicant’s establishment of constructive use).
5. 37 C.F.R. § 2.145(d)(4)(ii).
8. See Fed. Cir. R. 15(b)(2).
902.03 Appeal To Federal Circuit Waives Appeal By Civil Action
A party which takes an appeal to the United States Court of Appeals for the Federal Circuit from a decision of the Board thereby waives its right to have remedy by way of civil action under Trademark Act § 21(b), 15 U.S.C. § 1071(b). [ Note 1.] See TBMP § 903.05.
However, in an inter partes case, if an adverse party, in response to the notice of appeal to the Federal Circuit, files a notice electing to have further proceedings conducted instead by way of civil action, the appeal to the Federal Circuit will be dismissed, and the party that filed the appeal must commence a civil action, within 30 days after the filing of the notice of election, for review of the appealed decision, failing which that decision will govern further proceedings in the case. See TBMP § 901.01 and TBMP § 902.04.
NOTES:
1. Trademark Act § 21(a)(1), 15 U.S.C. § 1071(a)(1) (party which appeals to the Federal Circuit thereby waives its right to proceed under Trademark Act § 21(b)); 37 C.F.R. § 2.145(b)(1) (applicant in ex parte case which takes an appeal to the Federal Circuit waives any right to proceed under Trademark Act § 21(b)). Cf. Trademark Act § 21(b)(1), 15 U.S.C. § 1071 (b)(1) (party dissatisfied with decision of Board may, unless appeal has been taken to the Federal Circuit, have remedy by civil action).
902.04 Notice Of Election To Have Review By Civil Action
Trademark Act Section 21(a)(1), 15 U.S.C. § 1071(a)(1) An applicant for registration of a mark, party to an interference proceeding, party to an opposition proceeding, party to an application to register as a lawful concurrent user, party to a cancellation proceeding, a registrant who has filed an affidavit as provided in section 1058 or section 71 of this title, or an applicant for renewal, who is dissatisfied with the decision of the Director or Trademark Trial and Appeal Board, may appeal to the United States Court of Appeals for the Federal Circuit thereby waiving his right to proceed under subsection (b) of this section: Provided, That such appeal shall be dismissed if any adverse party to the proceeding, other than the Director, shall, within twenty days after the appellant has filed notice of appeal according to paragraph (2) of this subsection, files notice with the Director that he elects to have all further proceedings conducted as provided in subsection (b) of this section. Thereupon the appellant shall have thirty days thereafter within which to file a civil action under subsection (b), of this section, in default of which the decision appealed from shall govern the further proceedings in the case.
37 C.F.R. § 2.145(b)(2) If an adverse party to an appeal taken to the United States Court of Appeals for the Federal Circuit by a defeated party in an inter partes proceeding elects to have all further review proceedings conducted under section 21(b) of the Act, that party must take the following steps:
- (i) File a notice of election with the Director, addressed to the Office of the General Counsel, as provided in § 104.2 of this chapter;
- (ii) File a copy of the notice of election with the Trademark Trial and Appeal Board via ESTTA; and
- (iii) Serve the notice of election as provided in § 2.119.
- * * * *
- (d)(2) For a notice of election under 21(a)(1) and a civil action pursuant to such notice of election. The times for filing a notice of election under section 21(a)(1) and for commencing a civil action pursuant to a notice of election are governed by section 21(a)(1) of the Act.
- * * * *
When a defeated party in an inter partes proceeding before the Board takes an appeal to the United States Court of Appeals for the Federal Circuit, any adverse party may, within 20 days after the filing of the notice of appeal, file a notice with the Director as provided in 37 C.F.R. § 104.2 electing to have all further proceedings conducted by way of civil action, under Trademark Act § 21(b), 15 U.S.C. § 1071 (b) seeking review of the decision that was the subject of the appeal. [ Note 1.] As with a notice of appeal, the notice of election, if delivered by mail to the Director, must be addressed to Office of the General Counsel, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. The certificate of mailing and certificate of transmission procedures described in 37 C.F.R. § 2.197, and the Priority Mail Express® procedure described in 37 C.F.R. § 2.198, are available for filing a notice of election. A copy of the notice must be filed with the Board through ESTTA and be served on every other party to the proceeding, in the manner prescribed in 37 C.F.R. § 2.119. [ Note 2.] See TBMP § 113. A copy of the notice must also be filed with the Federal Circuit. [ Note 3.]
If an adverse party files a notice electing to have further proceedings conducted by way of civil action under Trademark Act § 21(b), the appeal to the Federal Circuit will be dismissed, (Fed. Cir. R. 15(e)) and the party that filed the appeal must commence a civil action, within 30 days after the filing of the notice of election, for review of the appealed decision, failing which that decision will govern further proceedings in the case. [ Note 4.] Any cross-action must be filed within 14 days after service of the summons and complaint in the civil action. [ Note 5.]
NOTES:
1. Trademark Act § 21(a)(1), 15 U.S.C. § 1071(a)(1); 37 C.F.R. § 2.145(b)(2).
2. 37 C.F.R. § 2.145(b)(2)(ii) and 37 C.F.R. § 2.145(b)(2)(iii).
3. Fed. Cir. R. 15(e).
4. Trademark Act § 21(a)(1), 15 U.S.C. § 1071(a)(1); 37 C.F.R. § 2.145(d)(2).
902.05 Information Concerning Times Specified In 37 C.F.R. § 2.145
37 C.F.R. § 2.145(d)(4)(ii) Holidays. The times specified in this section in days are calendar days. If the last day of time specified for an appeal, notice of election, or commencing a civil action falls on a Saturday, Sunday or Federal holiday in the District of Columbia, the time is extended to the next day which is neither a Saturday, Sunday nor a Federal holiday in the District of Columbia pursuant to § 2.196.
In 37 C.F.R. § 2.145 (which concerns appeals and civil actions seeking review of Board decisions), the times specified in days are calendar days. If the last day of the time allowed for filing an appeal falls on a Saturday, Sunday, or Federal holiday in the District of Columbia, the time for filing an appeal is extended to the next day which is not a Saturday, Sunday, or Federal holiday. [ Note 1.]
NOTES:
902.06 Certified List
Trademark Act § 21(a)(3), 15 U.S.C. § 1071(a)(3) The Director shall transmit to the United States Court of Appeals for the Federal Circuit a certified list of the documents comprising the record in the United States Patent and Trademark Office. The court may request that the Director forward the original or certified copies of such documents during pendency of the appeal. In an ex parte case, the Director shall submit to that court a brief explaining the grounds for the decision of the United States Patent and Trademark Office, addressing all the issues involved in the appeal. The court shall, before hearing an appeal, give notice of the time and place of the hearing to the Director and the parties in the appeal.
When notice is filed in the USPTO of an appeal to the United States Court of Appeals for the Federal Circuit from a decision of the Board, the Director, via the Office of the Solicitor, sends to the Federal Circuit a statement indicating whether the notice of appeal was considered timely filed, and a certified list of the documents comprising the record in the USPTO, i.e., a certified copy of the list of docket entries containing the USPTO record of the proceeding. [ Note 1.] The Office of the Solicitor mails a copy of the certified list to every party to the proceeding. [ Note 2.]
When the Federal Circuit receives the notice of appeal and the certified list, the Court dockets the appeal, and gives notice to all parties of the date of docketing. [ Note 3.] The appellant’s time in which to file its initial brief runs from the date of service of the certified list or the date of docketing the appeal, whichever is later. Because an appeal is not docketed until after the certified list is served in appeals from Board decisions, the appellant’s time for filing its brief normally runs from the date of docketing. [ Note 4.]
NOTES:
1. Trademark Act § 21(a)(3), 15 U.S.C. § 1071(a)(3); Fed. Cir. R. 15(b)(1) and 17(b)(1).
2. Fed. Cir. R. 17(c).
3. Fed. Cir. R. 15(b)(3).
4. Fed. Cir. R. 31(a).
902.07 Appeal Briefs, Appendix, Etc.
For information concerning other matters of practice and procedure during an appeal to the United States Court of Appeals for the Federal Circuit from a Board decision, including information concerning motions, briefs, the appendix to the briefs, oral argument, etc., see the Federal Circuit Rules on the Court’s website at www.cafc.uscourts.gov.
For information concerning the appendix to the briefs, in particular, see Fed. Cir. R. 30 and 32.
902.08 Special Provisions for Ex Parte Cases
Trademark Act § 21(a)(3), 15 U.S.C. § 1071(a)(3) In an ex parte case, the Director shall submit to that court a brief explaining the grounds for the decision of the United States Patent and Trademark Office, addressing all the issues involved in the appeal. The court shall, before hearing an appeal, give notice of the time and place of the hearing to the Director and the parties in the appeal.
37 C.F.R. § 2.145(b)(1) Any applicant or registrant in an ex parte case who takes an appeal to the United States Court of Appeals for the Federal Circuit waives any right to proceed under Section 21(b) of the Act.
If an applicant in an ex parte case takes an appeal to the United States Court of Appeals for the Federal Circuit from a decision of the Board, the applicant thereby waives its right to proceed by way of civil action under Trademark Act § 21(b), 15 U.S.C. § 1071(b). [ Note 1.]
On appeal to the Federal Circuit in an ex parte case, the Director, via the Office of the Solicitor, files a brief in support of the Board’s decision. [ Note 2.]
Questions regarding the determination of the contents of the appendix pursuant to Fed. Cir. R. 30(b) should be directed to the Office of the Solicitor.
In situations where the original appellee in an appeal of an inter partes case does not appear, the USPTO may move and the Federal Circuit may grant leave for the Director to participate to defend the Board’s decision. In such cases, the Court may substitute the Director as appellee and revise the caption of the appeal to reflect its ex parte nature. [ Note 3.]
NOTES:
1. Trademark Act § 21(a)(1), 15 U.S.C. § 1071(a)(1); 37 C.F.R. § 2.145(b)(1).
2. Trademark Act § 21(a)(3), 15 U.S.C. § 1071(a)(3).
3. In re Bose Corp., 580 F.3d. 1240, 91 USPQ2d 1938, 1939 (Fed. Cir. 2009) (upon motion by Director, USPTO was substituted by Court for appellee that did not appear).