903.07 Special Provisions For Ex Parte Civil Actions
Trademark Act § 21(b)(3), 15 U.S.C. § 1071(b)(3) In any case where there is no adverse party, a copy of the complaint shall be served on the Director, and, unless the court finds the expenses to be unreasonable, all the expenses of the proceeding shall be paid by the party bringing the case, whether the final decision is in favor of such party or not. In suits brought hereunder, the record in the United States Patent and Trademark Office shall be admitted on motion of any party, upon such terms and conditions as to costs, expenses, and the further cross-examination of the witnesses as the court imposes, without prejudice to the right of any party to take further testimony. The testimony and exhibits of the record in the United States Patent and Trademark Office, when admitted, shall have the same effect as if originally taken and produced in the suit.
When an applicant in an ex parte case seeks review of a decision of the Board by way of civil action under Trademark Act § 21(b), 15 U.S.C. § 1071(b), it must effect service on the USPTO Director pursuant to Fed. R. Civ. P. 4(i) ("Serving the United States and its Agencies, Corporations, Officers, or Employees."), and "all the expenses of the proceeding," including but not limited to expert witness fees, copying, travel, and expenses for personnel time spent in defense of the action, must be paid by the applicant which brought the suit, whether the final decision is in favor of the applicant or not, unless the court finds the expenses to be unreasonable. [ Note 1.] Under Fed. R. Civ. P. 4(i), copies of the complaint and summons must be served in a timely manner on the USPTO Director, the U.S. Attorney for the district where the action is brought, and the Attorney General of the United States. Service of the summons and complaint on the USPTO Director must be made to the Office of General Counsel as indicated in 37 C.F.R.. § 104.2 and a copy of the notice of appeal must be filed with the Board through ESTTA as indicated in 37 C.F.R. § 2.145(a)(2)(ii).
NOTES:
1. Trademark Act § 21(b)(3), 15 U.S.C. § 1071(b)(3). See Shammas v. Focarino, 784 F.3d 219, 224 (4th Cir. 2015) ("We . . . conclude[e] that the imposition of all expenses on a plaintiff in an ex parte proceeding, regardless of whether he wins or loses . . . [constitutes] . . . an unconditional compensatory charge imposed on a dissatisfied applicant who elects to engage the PTO in a district court proceeding. And we conclude that this compensatory charge encompasses the PTO’s salary expenses for the attorneys and paralegals who represent the Director."), cert. denied sub nom, Shammas v. Hirschfeld, 136 S. Ct. 1376 (2016).