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. [ Note 1.] 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 2.]

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 3.] 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 4.]

The Federal Circuit is often referred to in Board decisions as "our primary reviewing court." [ Note 5.]

NOTES:

 1.   Compare Snyder’s-Lance , Inc., v. Frito-Lay North America, 414 F. Supp. 3d 822, 2019 USPQ2d 401574, at *4, *7 (W.D.N.C.) ("the plain language of the statute does not allow a dissatisfied party who has taken an appeal to the Federal Circuit under §1071(a) to later exercise the option to file a civil action under §1071(b)"; plaintiffs waived their right to appeal to the district court the Board’s decision on remand from the Federal Circuit), appeal filed, No. 19-2316 (4th Cir. Nov. 20, 2019) with Gillette Co. v. "42" Products Ltd., 435 F.2d 1114, 168 USPQ 197, 199-200 (9th Cir. 1970) (where dissatisfied party seeking appeal of unfavorable decision of Board on remand was not the dissatisfied party who filed the earlier appeal to the Court of Patent Appeals, party was not foreclosed from appealing to the district court by way of civil action).

 2.   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); Jean Alexander Cosmetics, Inc. v. L'Oreal USA, Inc., 458 F.3d 244, 80 USPQ2d 1470, 1479 (3d Cir. 2006) (discussing prevailing party’s ability to appeal Board decision); 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); Snyder’s Lance, Inc., v. Frito-Lay North America, 414 F. Supp. 3d 822, 2019 USPQ2d 401574, at *3 (W.D.N.C.) ("Under Section 1071 a dissatisfied party has two options for appeal. It may appeal to the Federal Circuit under 15 U.S.C. §1071(a) or it may appeal by filing a civil action in a District Court under 15 U.S.C. §1071(b)."), appeal filed, No. 19-2316 (4th Cir. Nov. 20, 2019); RxD Media, LLC v. IP Application Development LLC, 377 F. Supp. 3d 588, 591 (E.D. Va.) (a party to an opposition proceeding dissatisfied with the result of a TTAB decision may either appeal that decision to the Federal Circuit or commence a de novo civil action in a federal district court where it is permitted to conduct discovery and submit new evidence and testimony), appeal filed, No. 19-1461 (4th Cir. April 30, 2019); Combe Inc. v. Dr. August Wolff GmbH & Co., 382 F. Supp. 3d 429, 443 (E.D. Va.) (in a § 1071(b) action, "the parties to the action have the right to admit the PTO record as well as any new evidence not presented to the PTO that is admissible under the Federal Rules of Evidence and Civil Procedure"), appeal filed, No. 19-1674 (4th Cir. June 24, 2019); 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).

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

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

 5.   See, e.g., Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *5 (TTAB) ("Our primary reviewing court, the U.S. Court of Appeals for the Federal Circuit …"), cancellation order vacated by default judgment, No. 0:19-cv-61614-DPG (S.D. Fla. Dec. 17, 2019); In re Ocean Technology, Inc., 2019 USPQ2d 450686, *5 (TTAB 2019) ("The Board and our primary reviewing court (the Federal Circuit and its predecessor the Court of Customs and Patent Appeals)..."); 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).