903 Review By Civil Action
903.01 Notice Of Civil Action
37 C.F.R. § 2.145(c)(3) The party initiating an action for review of a Board decision in an inter partes case under section 21(b) of the Act must file notice thereof with the Trademark Trial and Appeal Board via ESTTA no later than five business days after filing the complaint in the district court. The notice must identify the civil action with particularity by providing the case name, case number, and court in which it was filed. A copy of the complaint may be filed with the notice. Failure to file the required notice can result in termination of the Board proceeding and further action within the United States Patent and Trademark Office consistent with the final Board decision.
A party which commences a civil action, under Trademark Act § 21(b), 15 U.S.C. § 1071(b) seeking review of a decision of the Board should file written notice thereof with the Board no later than five business days after filing the complaint in the district court. The notice to the Board must be filed through ESTTA. Failure to notify the Board of the commencement of the civil action may result in premature termination of the proceeding. [ Note 1.] That is, if the Board is unaware of the commencement of the civil action, the Board will treat its own decision as final, and will take steps, based on such judgment, to close out the proceeding file and give effect to its judgment. See TBMP § 806. When review of a decision in ex parte appeal is sought by way of a civil action in district court, the applicant should select the ESTTA button "Appeal to District Court." For review of an inter partes decision, the party should select the ESTTA button "Review of Order or Decision of the Board."
NOTES:
903.02 Parties To And Service Of Civil Action
Trademark Act § 21(b), 15 U.S.C. § 1071(b) Civil action; persons entitled to; jurisdiction of court; status of Director; procedure.
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- (2) The Director shall not be made a party to an inter partes proceeding under this subsection, but he shall be notified of the filing of the complaint by the clerk of the court in which it is filed and shall have the right to intervene in the action.
- (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. ...
- (4) Where there is an adverse party, such suit may be instituted against the party in interest as shown by the records of the United States Patent and Trademark Office at the time of the decision complained of, but any party in interest may become a party to the action. ...
When a party to a Board inter partes proceeding appeals a decision of the Board by commencing a civil action seeking review of the decision, the Director shall not be made a party to the civil action. However, the clerk of the court in which the civil action is filed must notify the Director of the filing of the complaint, and the Director has the right to intervene in the action. [ Note 1.]
The suit may be instituted against the party in interest as shown by the records of the USPTO at the time of the decision of which review is sought, but any party in interest may become a party to the action. [ Note 2.]
When an applicant in an ex parte proceeding appeals a decision of the Board by commencing a civil action seeking review of the decision, a copy of the complaint must be served on the USPTO Director (who is a party to the proceeding) and a copy must be filed with the Board through ESTTA. [ Note 3.] When review is sought for an ex parte decision, the party should select the ESTTA button "Appeal to District Court." Service of a complaint on the Director is governed by Fed. R. Civ. P. 4(i), "Serving the United States, Its Agencies, Corporations, Officers, or Employees." 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. [ Note 4.]
A registrant involved in an ex parte expungement or reexamination proceeding may appeal a decision of the Board only to the United States Court of Appeals for the Federal Circuit. [ Note 5.]
NOTES:
1. Trademark Act § 21(b)(2), 15 U.S.C. § 1071(b)(2).
2. Trademark Act § 21(b)(4), 15 U.S.C. § 1071(b)(4).
3. Trademark Act § 21(b)(3), 15 U.S.C. § 1071(b)(3), 37 C.F.R. § 2.145(c)(2).
4. See 37 C.F.R. § 104.2; Fed. R. Civ. P. 4(i).
5. Trademark Act § 21(b)(1), 15 U.S.C. § 1071(b)(2).
903.03 Place Of Civil Action
Trademark Act § 21(b)(4), 15 U.S.C. § 1071(b)(4) Where there is an adverse party, such suit may be instituted against the party in interest as shown by the records of the United States Patent and Trademark Office at the time of the decision complained of, but any party in interest may become a party to the action. If there are adverse parties residing in a plurality of districts not embraced within the same State, or an adverse party residing in a foreign country, the United States District Court for the Eastern District of Virginia shall have jurisdiction and may issue summons against the adverse parties directed to the marshal of any district in which any adverse party resides. Summons against adverse parties residing in foreign countries may be served by publication or otherwise as the court directs.
Generally, a civil action under Trademark Act § 21(b), 15 U.S.C. § 1071(b), may be brought in any Federal district court which has jurisdiction over the person. However, if there are adverse parties residing in a plurality of districts not embraced within the same state, or an adverse party residing in a foreign country, the United States District Court for the Eastern District of Virginia has jurisdiction. [ Note 1.]
In ex parte cases, for purposes of venue under 28 U.S.C. § 1391(e), the USPTO resides in the Eastern District of Virginia. [ Note 2.]
NOTES:
1. Trademark Act § 21(b)(4), 15 U.S.C. § 1071(b)(4). See, e.g., Pro-Football Inc. v. Harjo, 284 F. Supp. 2d 96, 68 USPQ2d 1225, 1228 (D.D.C. 2003) (U.S. District Court of the District of Columbia has jurisdiction where defendants reside in plurality of districts not within the same state), aff’d, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009), cert. denied, 130 S. Ct. 631 (2009); Del-Viking Productions Inc. v. Estate of Johnson, 31 USPQ2d 1063, 1064 (W.D. Pa. 1994) (civil action improperly brought in Pennsylvania was transferred to U.S. District Court for the District of Columbia in view of existence of multiple adverse parties residing in different states). Please Note: At the time these cases were decided, 15 U.S.C. § 1071(b)(4) expressly provided for jurisdiction in the United States District Court for the District of Columbia. The statute was subsequently amended to provide jurisdiction in the United States District Court for the Eastern District of Virginia.
Compare regarding application of "first to file" rule, Alltrade Inc. v. Uniweld Products Inc., 946 F.2d 622, 20 USPQ2d 1698, 1703 (9th Cir. 1991) (district court erred in dismissing rather than staying second-filed suit); and, regarding the transfer of an action to a different forum, Chocoladefabriken Lindt & Sprungli Aktiengesellschaft v. Rykoff-Sexton Inc., 24 USPQ2d 1236, 1238 (S.D.N.Y. 1992) (civil action filed in New York transferred to California where defendant’s witnesses and relevant documents and records were located).
2. See 35 U.S.C. § 1(b) ("The United States Patent and Trademark Office shall be deemed, for purposes of venue in civil actions, to be a resident of the district in which its principal office is located, except where jurisdiction is otherwise provided by law."). The USPTO’s headquarters are located in Alexandria, Virginia, which is in the Eastern District of Virginia.
903.04 Time For Filing Civil Action, Cross-Action
Trademark Act § 21(b)(1), 15 U.S.C. § 1071(b)(1) Whenever a person authorized by subsection (a) of this section to appeal to the United States Court of Appeals for the Federal Circuit, except for a registrant subject to an ex parte expungement proceeding or an ex parte reexamination proceeding, is dissatisfied with the decision of the Director or Trademark Trial and Appeal Board, said person may, unless appeal has been taken to said United States Court of Appeals for the Federal Circuit, have remedy by a civil action if commenced within such time after such decision, not less than sixty days, as the Director appoints or as provided in subsection (a) of this section. . . .
- (d) Time for appeal or civil action.
- (1) For an appeal under section 21(a). The notice of appeal filed pursuant to section 21(a) of the Act must be filed with the Director no later than sixty-three (63) days from the date of the final decision of the Trademark Trial and Appeal Board or the Director. In inter partes cases, the time for filing a notice of cross-appeal expires 14 days after service of the notice of appeal or 63 days from the date of the decision of the Trademark Trial and Appeal Board or the Director, whichever is later.
- (2) For a notice of election under 21(a)(1) and a civil action pursuant to such notice of election. The times for filing a notice of election under section 21(a)(1) and for commencing a civil action pursuant to a notice of election are governed by section 21(a)(1) of the Act.
- (3) For a civil action under section 21(b). A civil action must be commenced no later than sixty-three (63) days after the date of the final decision of the Trademark Trial and Appeal Board or Director. In inter partes cases, the time for filing a cross-action expires 14 days after service of the summons and complaint or 63 days from the date of the decision of the Trademark Trial and Appeal Board or the Director, whichever is later.
- (4) Time computation.
- (i) If a request for rehearing or reconsideration or modification of the Board decision is filed within the time specified in § 2.127(b), § 2.129(c), or § 2.144, or within any extension of time granted thereunder, the time for filing an appeal or commencing a civil action shall expire no later than sixty-three (63) days after action on the request.
- (ii) Holidays. The times specified in this section in days are calendar days. If the last day of time specified for an appeal, notice of election, or commencing a civil action falls on a Saturday, Sunday or Federal holiday in the District of Columbia, the time is extended to the next day which is neither a Saturday, Sunday nor a Federal holiday in the District of Columbia pursuant to § 2.196.
- (e) Extensions of time.
- (1) The Director, or the Director’s designee, may extend the time for filing an appeal, or commencing a civil action, upon written request if:
- (i) Requested before the expiration of the period for filing an appeal or commencing a civil action, and upon a showing of good cause; or
- (ii) Requested after the expiration of the period for filing an appeal or commencing a civil action, and upon a showing that the failure to act was the result of excusable neglect.
- (2) The request must be filed as provided in § 104.2 of this chapter and addressed to the attention of the Office of the Solicitor. A copy of the request should also be filed with the Trademark Trial and Appeal Board via ESTTA.
- (1) The Director, or the Director’s designee, may extend the time for filing an appeal, or commencing a civil action, upon written request if:
The time for commencing a civil action under Trademark Act § 21(b), 15 U.S.C. § 1071(b), is sixty-three (63) days from the date of the Board decision of which review is sought. [ Note 1.] If the last day for filing an appeal falls on a Saturday, Sunday or Federal holiday in the District of Columbia, then the time is extended to the next day which is not a Saturday, Sunday or Federal holiday. [ Note 2.] A civil action is commenced by the filing of a complaint with the court. [ Note 3.] When the Board enters judgment in favor of a Trademark Act § 1(b), 15 U.S.C. § 1051(b), applicant subject to that party’s establishment of constructive use (see TBMP § 901.02(b)), the time for commencing a civil action for review of the Board’s decision runs from the date of the entry of judgment subject to establishment of constructive use. [ Note 4.]
If a request for rehearing, reconsideration, or modification of the Board’s decision is filed within the time specified in 37 C.F.R. § 2.127(b), 37 C.F.R. § 2.129(c), or 37 C.F.R. § 2.144, or within any extension of time granted thereunder, the time for commencing a civil action expires sixty-three (63) days after action on the request. [ Note 5.] If the last day for filing an appeal falls on a Saturday, Sunday or Federal holiday in the District of Columbia, then the time is extended to the next day which is not a Saturday, Sunday or Federal holiday. [ Note 6.] Because the Board’s rules do not permit a second or subsequent request for reconsideration, only a timely first request for reconsideration or modification will toll the time for commencing a civil action. In an inter partes case, the time for filing a cross-action expires (1) 14 days after service of the summons and complaint, or (2) sixty-three (63) from the date of the Board decision which is the subject of the civil action, whichever is later. [ Note 7.]
If a written request to extend the time for commencing a civil action is filed before the expiration of the period for commencing a civil action, the USPTO may grant the request on a showing of good cause. If the request is not filed until after the expiration of the period for commencing a civil action, the USPTO may grant the request only on a showing that the failure to act was the result of excusable neglect. [ Note 8.] A request for an extension of time to file an appeal should be addressed to the Office of the General Counsel, as provided in 37 C.F.R. § 104.2, and directed to the attention of the Solicitor. See 37 C.F.R. § 2.145(e)(2).
NOTES:
1. Trademark Act § 21(b)(1), 15 U.S.C. § 1071(b)(1) (not less than 60 days); 37 C.F.R. § 2.145(d)(3) (63 days). See, e.g., RxD Media, LLC v. IP Application Development LLC, 125 USPQ2d 1801, 1816 (TTAB 2018) ("The time for filing an appeal or for commencing a civil action will run from the date of this decision."), aff’d, 377 F. Supp. 3d 588, (E.D. Va. 2019), aff’d, 986 F.3d 361, 2021 USPQ2d 81 (4th Cir. 2021).
2. 37 C.F.R. § 2.145(d)(4)(ii).
3. Fed. R. Civ. P. 3.
4. 37 C.F.R. § 2.129(d). See, e.g., RxD Media, LLC v. IP Application Development LLC, 125 USPQ2d 1801, 1816 (TTAB 2018) (judgment entered in favor of applicant subject to applicant’s establishment of constructive use), aff’d, 377 F. Supp. 3d 588 (E.D. Va. 2019), aff’d, 986 F.3d 361, 2021 USPQ2d 81 (4th Cir. 2021). Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544-45 (TTAB 1991) (same).
903.05 Information Concerning Times Specified In 37 C.F.R. § 2.145
37 C.F.R. § 2.145(d)(4)(ii) Holidays. The times specified in this section in days are calendar days. If the last day of time specified for an appeal, notice of election, or commencing a civil action falls on a Saturday, Sunday or Federal holiday in the District of Columbia, the time is extended to the next day which is neither a Saturday, Sunday nor a Federal holiday in the District of Columbia pursuant to § 2.196.
In 37 C.F.R. § 2.145 (which concerns appeals and civil actions seeking review of Board decisions), the times specified in days are calendar days. If the last day of the time allowed for commencing a civil action falls on a Saturday, Sunday, or Federal holiday in the District of Columbia, the time for commencing a civil action is extended to the next day which is not a Saturday, Sunday, or Federal holiday. [ Note 1.]
NOTES:
903.06 Civil Action Precluded By Appeal To Federal Circuit
In a proceeding before the Board, a party that is dissatisfied with the decision of the Board may have remedy by way of civil action, unless an appeal to the United States Court of Appeals for the Federal Circuit has been taken. [ Note 1.] See TBMP § 902.03.
However, in an inter partes case, if an appeal has been taken to the Federal Circuit, and a party adverse to the appellant 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 which 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. See TBMP § 901.01 and TBMP § 902.04. [ Note 2.]
NOTES:
1. Trademark Act § 21(b)(1), 15 U.S.C. § 1071(b)(1). Cf. 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)). 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.").
2. See Belmora LLC v. Bayer Consumer Care AG, 84 F. Supp. 3d 490, 115 USPQ2d 1032, 1036 (E.D. Va. 2015) (Belmora filed notice of appeal of Board’s decision to Federal Circuit; Bayer then filed a notice of election to have review by civil action), vacated and remanded, 819 F.3d 697 (4th Cir. 2016), cert denied, 137 S. Ct. 1202 (2017), aff’d on remand, 338 F. Supp. 3d 477 (E.D. Va. 2018), vacated and remanded on other grounds, 987 F.3d 284, 2021 USPQ2d 126 (4th Cir. 2021), cert. denied, 142 S. Ct. 483 (2021).
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."). "All the expenses of the proceeding," including but not limited to expert witness fees, copying, and travel, 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).
A registrant involved in an ex parte expungement or reexamination proceeding may appeal a decision of the Board only to the United States Court of Appeals for the Federal Circuit. [ Note 2.]
NOTES:
1. Trademark Act § 21(b)(3), 15 U.S.C. § 1071(b)(3). See, e.g., Sandvik Aktiebolag v. Samuels, 20 USPQ2d 1879, 1880 (D.D.C. 1991) (USPTO’s expert witness fees must be reimbursed); Realvirt, LLC v. Lee, 220 F. Supp. 3d 695 (E.D. Va. 2016), vacated as to attorneys’ fees, 734 F. App’x 754 (Fed. Cir. Aug. 14, 2018).
Please Note: The U.S. Supreme Court in Peter v. NantKwest, Inc., ___U.S.___, 140 S. Ct. 365, 2019 USPQ2d 474054, at *7 (2019), aff’g NantKwest, Inc. v. Iancu, 898 F.3d 1177, 127 USPQ2d 1497 (Fed. Cir. 2018) (en banc), held that the USPTO, in a civil action under the similar expense payment provisions of 35 U.S.C. § 145, cannot recover the salaries of its legal personnel, and in effect, implicitly rejected the Fourth Circuit’s holding in Shammas v. Focarino, 784 F.3d 219, 114 USPQ2d 1489, 1492 (4th Cir. 2015), cert. denied sub nom. Shammas v. Hirschfeld, 136 S. Ct. 1376 (2016), that awarded legal fees under the expense payment provision of 15 U.S.C. § 1071(b)(3). In Hyatt v. Hirshfeld, 16 F.4th 855, 858-866 (Fed. Cir. 2021), the Federal Circuit affirmed the district court’s denial of the USPTO’s request for expert witness fees, finding that the phrase "[a]ll the expenses of the proceedings" in 35 U.S.C. § 145 does not invoke expert witness fees with the clarity required to overcome the American Rule presumption against fee-shifting.
2. Trademark Act § 21(b)(1), 15 U.S.C. § 1071(b)(1).