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 § 903.06.
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. [ Note 2.] 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). See Snyder’s Lance, Inc. v. Frito Lay North America, Inc., 991 F.3d 512, 2021 USPQ2d 318, at *16 (4th Cir. 2021) ("[A] party seeking review of a subsequent Trademark Board decision may seek review in either the Federal Circuit or the district court, even if the Trademark Board’s initial decision was reviewed by the Federal Circuit.").