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).

 5.   37 C.F.R. § 2.145(d)(3).