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).