902.01 Notice Of Appeal
Trademark Act § 21(a)(2), 15 U.S.C. § 1071(a)(2) When an appeal is taken to the United States Court of Appeals for the Federal Circuit, the appellant shall file in the United States Patent and Trademark Office a written notice of appeal directed to the Director, within such time after the date of the decision from which the appeal is taken as the Director prescribes, but in no case less than 60 days after that date.
37 C.F.R. § 2.145 Appeal to court and civil action.
- (a) For an Appeal to the United States Court of Appeals for the Federal Circuit under section 21(a) of the Act.
- (1) An applicant for registration, a registrant in an ex parte expungement or reexamination proceeding, any party to an interference, opposition, or cancellation, or any party to an application to register as a concurrent user, hereinafter referred to as inter partes proceedings, who is dissatisfied with the decision of the Trademark Trial and Appeal Board, and any registrant who has filed an affidavit or declaration under section 8 or section 71 of the Act, or filed an application for renewal under section 9 of the Act, and is dissatisfied with the decision of the Director (§§ 2.165 and 2.184 and § 7.40 of this chapter), may appeal to the United States Court of Appeals for the Federal Circuit. It is unnecessary to request reconsideration before filing any such appeal; however, any request to reconsider the decision must be made before filing a notice of appeal.
- (2) In all appeals under section 21(a), the appellant must take the following steps:
- (i) File the notice of appeal 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 appeal with the Trademark Trial and Appeal Board via ESTTA; and
- (iii) Comply with the requirements of the Federal Rules of Appellate Procedure and Rules for the United States Court of Appeals for the Federal Circuit, including serving the requisite number of copies on the Court and paying the requisite fee for the appeal.
- (3) The following requirements must also be satisfied:
- (i) The notice of appeal shall specify the party or parties taking the appeal and shall designate the decision or part thereof appealed from.
- (ii) In inter partes proceedings, the notice of appeal must be served as provided in § 2.119.
37 C.F.R. § 104.2 Address for mail and service; telephone number.
(a) Mail under this part should be addressed to the
Office of the General Counsel
United States Patent and Trademark Office
P.O. Box 1450
Alexandria,Virginia 22313-1450
(b) Service by hand should be made during business hours to the
Office of the General Counsel,
10B20, Madison Building East
600 Dulany Street
Alexandria, Virginia
(c) The Office of the General Counsel may be reached by telephone at 571-272-7000 during business hours.
A party taking an appeal to the United States Court of Appeals for the Federal Circuit from a decision of the Board must give written notice thereof both to the Director and to the Court of Appeals for the Federal Circuit, and pay to the Court the fee required by the Court’s rules. [ Note 1.]
Specifically, the original notice of appeal must be filed in the USPTO, within the time required by 37 C.F.R. § 2.145(d). [ Note 2.] See TBMP § 902.02. The certificate of mailing procedure 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 appeal with the Director. However, the notice of appeal filed with the Board must be through ESTTA. The notice must specify the party or parties taking the appeal and designate the decision or part thereof appealed from. However, reasons for appeal need not be given. [ Note 3.] A copy of the decision or order being appealed, and a copy of any decision on reconsideration thereof, should be attached to the notice of appeal. [ Note 4.] If the appeal is taken from a decision of the Board in an inter partes proceeding, a copy of the notice must be served on every other party to the proceeding, in the manner prescribed in 37 C.F.R. § 2.119. [ Note 5.] See TBMP § 113. The written notice, if mailed to the USPTO (rather than hand-delivered to the Office of the General Counsel), must be addressed to Office of the General Counsel, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. [ Note 6.]
Notices of appeal must be filed with the Board through ESTTA. For appeals of ex parte decisions, the applicant or registrant should select the ESTTA button "Appeal to CAFC"; for appeals of inter partes decisions, the appellant should select the button "Review of Order or Decision of the Board." For information on ESTTA filing of notices of appeal in civil actions see TBMP § 903.01.
For information concerning the ways (i.e., by hand delivery, first-class mail, electronic filing, etc.) in which a notice of appeal may be filed with the Director, the filing date of a notice of appeal, and the address to be used on a notice of appeal mailed to the Director, see 37 C.F.R. § 104.2, 37 C.F.R. § 2.190, 37 C.F.R. § 2.195, 37 C.F.R. § 2.197, and 37 C.F.R. § 2.198.
For further information concerning how to file a notice of appeal, contact the Office of the Solicitor in the USPTO at (571) 272-9035.
For filing notices of appeal in the Court of Appeals for the Federal Circuit, appellants must comply with the Federal Rules of Appellate Procedure and Rules for the United States Court of Appeals for the Federal Circuit. [ Note 7.] A copy of the decision being appealed, and a copy of any decision on reconsideration thereof, should be attached to the copy of the notice. [ Note 8.]
The Federal Circuit Rules and Forms can be found on the Court’s website at: www.cafc.uscourts.gov.
Note that effective July 1, 2020, the Federal Circuit has adopted amendments to Federal Circuit Rules of Practice and the Federal Circuit Attorney Discipline Rules. These amendments apply to all cases and documents filed or pending on or after July 1, 2020 unless otherwise ordered.
NOTES:
1. 37 C.F.R. § 2.145(a); Fed. Cir. R. 15.
2. Trademark Act § 21(a)(2), 15 U.S.C. § 1071(a)(2); 37 C.F.R. § 2.145(d).
5. See 37 C.F.R. § 2.145(a)(3)(ii).
6. See 37 C.F.R. § 104.2.
7. See 37 C.F.R. § 2.145(a)(2)(iii).
8. See the website for the Court of Appeals for the Federal Circuit at: www.cafc.uscourts.gov.