1610 Court Orders Concerning Registrations
The USPTO must rectify the register and make appropriate entry upon its records in response to a court order certified to the USPTO pursuant to §37 of the Trademark Act, 15 U.S.C. §1119. That section provides:
In any action involving a registered mark the court may determine the right to registration, order the cancellation of registrations, in whole or in part, restore cancelled registrations, and otherwise rectify the register with respect to the registrations of any party to the action. Decrees and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Patent and Trademark Office, and shall be controlled thereby.
Thus, §37 authorizes the USPTO to take, upon court order, actions concerning registrations. Id.; see also Piano Wellness, LLC v. Williams, 126 USPQ2d 1739, 1741 (TTAB 2018).
Any such order affecting a registration must be certified by the court. To submit a certified court order to the USPTO, it must be sent to the Office of the Solicitor, Mail Stop 8, P.O. Box 1450, Alexandria, Virginia 22313-1450. 37 C.F.R. §1.1(a)(3)(iii). Even if the court’s docket indicates that the court certified the order to the USPTO, that does not mean that the USPTO received it. Therefore, a party wanting the USPTO to act on the court order must obtain a certified copy of the order and submit it to the Office of the Solicitor. A petition is not required to submit the certified court order. An uncertified copy of the court order is unacceptable. If the registration affected by the order is the subject of a pending or suspended inter partes proceeding at the Trademark Trial and Appeal Board, that fact should be noted in a cover letter to the Office of the Solicitor.
Once the USPTO receives the certified order, appropriate action will typically be taken by the USPTO without the necessity of any submission by an interested party. However, if it would be helpful for purposes of determining the scope or effect of an order, the USPTO may, at the Director’s discretion, issue a show cause order directing the registrant and parties to the action from which the order arose to respond and provide information or arguments regarding the order.
The USPTO normally will not act on a district court order until such proceedings are finally determined. Typically, the USPTO considers the proceedings to be finally determined when: (1) a decision on the merits of the case (i.e., a dispositive ruling or verdict that ends litigation on the merits) has been rendered; (2) a final judgment has been entered; (3) no pertinent post-judgment motion has been filed under Fed. R. Civ. P. 59(e); and (4) the period to file an appeal of the district court’s order to a court of appeals has expired with no appeal being filed, or, if an appeal is filed, until after the mandate issues and the time for petitioning for review to the U.S. Supreme Court has expired with no review being sought, and if U.S. Supreme Court review is sought, until after the Supreme Court denies a petition for certiorari or if it grants certiorari, until after the Supreme Court issues its decision.