901.01    Avenues Of Appeal

A party to a Board proceeding who is dissatisfied with the decision of the Board is provided, under the Act, with two possible (mutually exclusive) remedies. The dissatisfied party may either:

  • (1) Appeal to the United States Court of Appeals for the Federal Circuit ("Federal Circuit"), which will review the decision from which the appeal is taken on the record before the USPTO, or
  • (2) Have remedy by civil action (in a United States District Court), in which the court "may adjudge that an applicant is entitled to a registration upon the application involved, that a registration involved should be cancelled, or such other matter as the issues in the proceeding require, as the facts in the case may appear." [ Note 1.]

In an inter partes proceeding, if a dissatisfied party chooses to file an appeal to the Federal Circuit, any adverse party may, within 20 days after the filing of the notice of appeal, file notice that it elects to have the appeal dismissed, and to have further proceedings conducted instead by way of civil action. [ Note 2.] Within 30 days after the filing of a notice of election by an adverse party, the appellant must commence a civil action for review of the Board’s decision, failing which the Board’s decision will govern further proceedings in the case. [ Note 3.]

The Federal Circuit is often referred to in Board decisions as "our primary reviewing court." [ Note 4.]

NOTES:

 1.   Trademark Act § 21, 15 U.S.C. § 1071; 37 C.F.R. § 2.145. See Shammas v. Focarino, 784 F.3d 219, 114 USPQ2d 1489, 1490 (4th Cir. 2015) (dissatisfied trademark applicant may seek review of an adverse ruling on his trademark application either by appealing the ruling to the Court of Appeals for the Federal Circuit or by commencing an action in a federal district court), cert. denied sub nom. Shammas v. Hirschfeld, 136 S. Ct. 1376, (2016); CAE Inc. v. Clean Air Engineering Inc., 267 F.3d 660, 60 USPQ2d 1449, 1458 (7th Cir. 2001) (choice of appealing TTAB decision in inter partes case to Federal Circuit on closed record of Board proceedings or a federal district court with the option of presenting additional evidence); Spraying Systems Co. v. Delavan Inc., 975 F.2d 387, 24 USPQ2d 1181, 1183 (7th Cir. 1992) (appeal to district court is in part an appeal and in part a new action); Alltrade Inc. v. Uniweld Products Inc., 946 F.2d 622, 20 USPQ2d 1698, 1703 (9th Cir. 1991) (where winning and losing party each appealed to different district court; discussion of appealability of those aspects of a ruling with which "winning" party is dissatisfied, and dismissal, stay or transfer of second-filed appeal); Product Source International, LLC v. Nahshin, 112 F. Supp. 3d 383 (E.D. Va. 2015) (applicant who is dissatisfied with final decision of TTAB has choice of appealing the decision to the Court of Appeals for the Federal Circuit or a remedy by civil action in district court).

 2.   Trademark Act § 21(a)(1), 15 U.S.C. § 1071(a)(1); 37 C.F.R. § 2.145(b)(2).

 3.   Trademark Act § 21(a)(1), 15 U.S.C. § 1071(a)(1); 37 C.F.R. § 2.145(d)(3).

 4.   In re Thor Tech, 90 USPQ2d 1634, 1637 (TTAB 2009); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1024 (TTAB 2009); Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501, n.2 (TTAB 2008); Carefirst of Maryland Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1514 (TTAB 2005), aff’d, 479 F.3d 825, 81 USPQ2d 1919 (Fed. Cir. 2007).