§ 1071. — Appeal to courts.
[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 2002]
[CITE: 15USC1071]
TITLE 15--COMMERCE AND TRADE
CHAPTER 22--TRADEMARKS
SUBCHAPTER I--THE PRINCIPAL REGISTER
Sec. 1071. Appeal to courts
(a) Persons entitled to appeal; United States Court of Appeals for the
Federal Circuit; waiver of civil action; election of civil
action by adverse party; procedure
(1) An applicant for registration of a mark, party to an
interference proceeding, party to an opposition proceeding, party to an
application to register as a lawful concurrent user, party to a
cancellation proceeding, a registrant who has filed an affidavit as
provided in section 1058 of this title, or an applicant for renewal, who
is dissatisfied with the decision of the Director or Trademark Trial and
Appeal Board, may appeal to the United States Court of Appeals for the
Federal Circuit thereby waiving his right to proceed under subsection
(b) of this section: Provided, That such appeal shall be dismissed if
any adverse party to the proceeding, other than the Director, shall,
within twenty days after the appellant has filed notice of appeal
according to paragraph (2) of this section, files notice with the
Director that he elects to have all further proceedings conducted as
provided in subsection (b) of this section. Thereupon the appellant
shall have thirty days thereafter within which to file a civil action
under subsection (b) of this section, in default of which the decision
appealed from shall govern the further proceedings in the case.
(2) When an appeal is taken to the United States Court of Appeals
for the Federal Circuit, the appellant shall file in the 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.
(3) The Director shall transmit to the United States Court of
Appeals for the Federal Circuit a certified list of the documents
comprising the record in the Patent and Trademark Office. The court may
request that the Director forward the original or certified copies of
such documents during pendency of the appeal. In an ex parte case, the
Director shall submit to that court a brief explaining the grounds for
the decision of the Patent and Trademark Office, addressing all the
issues involved in the appeal. The court shall, before hearing an
appeal, give notice of the time and place of the hearing to the Director
and the parties in the appeal.
(4) The United States Court of Appeals for the Federal Circuit shall
review the decision from which the appeal is taken on the record before
the Patent and Trademark Office. Upon its determination the court shall
issue its mandate and opinion to the Director, which shall be entered of
record in the Patent and Trademark Office and shall govern the further
proceedings in the case. However, no final judgment shall be entered in
favor of an applicant under section 1051(b) of this title before the
mark is registered, if such applicant cannot prevail without
establishing constructive use pursuant to section 1057(c) of this title.
(b) Civil action; persons entitled to; jurisdiction of court; status of
Director; procedure
(1) Whenever a person authorized by subsection (a) of this section
to appeal to the United States Court of Appeals for the Federal Circuit
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. The court may adjudge that an applicant is entitled
to a registration upon the application involved, that a registration
involved should be canceled, or such other matter as the issues in the
proceeding require, as the facts in the case may appear. Such
adjudication shall authorize the Director to take any necessary action,
upon compliance with the requirements of law. However, no final judgment
shall be entered in favor of an applicant under section 1051(b) of this
title before the mark is registered, if such applicant cannot prevail
without establishing constructive use pursuant to section 1057(c) of
this title.
(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. In suits brought hereunder, the record
in the 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 Patent and Trademark Office,
when admitted, shall have the same effect as if originally taken and
produced in the suit.
(4) Where there is an adverse party, such suit may be instituted
against the party in interest as shown by the records of the 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 be 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 District of Columbia 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.
(July 5, 1946, ch. 540, title I, Sec. 21, 60 Stat. 435; July 19, 1952,
ch. 950, Sec. 2, 66 Stat. 814; Pub. L. 85-609, Sec. 1(c), Aug. 8, 1958,
72 Stat. 540; Pub. L. 87-772, Sec. 12, Oct. 9, 1962, 76 Stat. 771; Pub.
L. 93-596, Sec. 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 93-600, Sec. 2,
Jan. 2, 1975, 88 Stat. 1955; Pub. L. 97-164, title I, Sec. 162(1), Apr.
2, 1982, 96 Stat. 49; Pub. L. 98-620, title IV, Sec. 414(b), Nov. 8,
1984, 98 Stat. 3363; Pub. L. 100-667, title I, Sec. 120, Nov. 16, 1988,
102 Stat. 3942; Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV,
Sec. 4732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A-583.)
Codification
Pub. L. 93-596, which provided for the substitution of ``Patent and
Trademark Office'' for ``Patent Office'' each time appearing in this
chapter, became effective Jan. 2, 1975, as did Pub. L. 93-600, which in
the course of amending subsecs. (a)(3) and (4) of this section, referred
merely to ``Patent Office''. ``Patent and Trademark Office'' has been
substituted for ``Patent Office'' in subsecs. (a)(3) and (4) on
authority of Pub. L. 93-596.
Prior Provisions
Acts Feb. 20, 1905, ch. 592, Secs. 9, 22, 33 Stat. 727, 729; Mar. 2,
1929, ch. 488, Sec. 2(b), 45 Stat. 1478.
Amendments
1999--Pub. L. 106-113 substituted ``Director'' for ``Commissioner''
wherever appearing.
1988--Subsec. (a)(1). Pub. L. 100-667, Sec. 120(1), made technical
amendments to references in the original act to subsection (b) of this
section resulting in no change in text, and substituted ``paragraph (2)
of this subsection'' for ``subsection (a)(2) of this section'' and
``action under subsection'' for ``action under said subsection''.
Subsec. (a)(4). Pub. L. 100-667, Sec. 120(2), inserted provision
that no final judgment be entered before mark is registered if applicant
cannot prevail without establishing constructive use.
Subsec. (b)(1). Pub. L. 100-667, Sec. 120(3), made technical
amendments to references in the original act to subsection (a) of this
section resulting in no change in text and inserted provision that no
final judgment be entered before mark is registered if applicant cannot
prevail without establishing constructive use.
Subsec. (b)(3). Pub. L. 100-667, Sec. 120(4), amended first sentence
generally. Prior to amendment, first sentence read as follows: ``In all
cases where there is no adverse party, a copy of the complaint shall be
served on the Commissioner; and all the expenses of the proceedings
shall be paid by the party bringing them, whether the final decision is
in his favor or not.''
1984--Subsec. (a)(2). Pub. L. 98-620 substituted provisions
requiring the appellant to file a written notice of appeal in the Patent
and Trademark Office directed to the Commissioner for provisions
requiring the appellant to file the notice of appeal with the
Commissioner, and struck out provision which required the notice of
appeal to specify the party or parties taking the appeal, to designate
the decision or part thereof appealed from, and to state that the appeal
was being taken to the United States Court of Appeals for the Federal
Circuit.
Subsec. (a)(3). Pub. L. 98-620 substituted provisions requiring the
Commissioner to transmit to the United States Court of Appeals for the
Federal Circuit a certified list of the documents comprising the record
in the Patent and Trademark Office for provisions which required the
Commissioner to transmit to the court certified copies of all the
necessary original papers and evidence in the case specified by the
appellant, and any additional papers and evidence specified by the
appellee, and inserted provision that the court may request that the
Commissioner forward the original or certified copies of such documents
during the pendency of the appeal.
Subsec. (a)(4). Pub. L. 98-620 substituted provisions requiring the
court to review the decision from which the appeal is taken on the
record before the Patent and Trademark Office, and, upon its
determination, to issue its mandate and opinion to the Commissioner for
provisions which required the court to decide such appeal on the
evidence produced before the Patent and Trademark Office and to return
to the Commissioner a certificate of its proceedings and decision.
1982--Subsecs. (a)(1), (2), (b)(1). Pub. L. 97-164 substituted
``United States Court of Appeals for the Federal Circuit'' for ``United
States Court of Customs and Patent Appeals'' and ``Court of Customs and
Patent Appeals'' wherever appearing.
1975--Subsec. (a)(2). Pub. L. 93-600 substituted provisions relating
to filing of notice of appeal with the Commissioner and the contents of
such notice of appeal, for provisions relating to giving notice of
appeal to the Commissioner and requiring filing in the Patent Office
reasons for appeal.
Subsec. (a)(3). Pub. L. 93-600 inserted provision requiring the
Commissioner to furnish the court with a brief explaining the grounds of
the decision of the Office.
Pub. L. 93-596 substituted ``Patent and Trademark Office'' for
``Patent Office''.
Subsec. (a)(4). Pub. L. 93-600 substituted ``decide'' for ``hear and
determine'' and struck out ``Upon its determination,'' before ``the
court shall return'' and provision requiring the decision to be confined
to the points set forth in the reasons of appeal.
Pub. 93-596 substituted ``Patent and Trademark Office'' for ``Patent
Office'' in two places.
Subsec. (b)(3), (4). Pub. L. 93-596 substituted ``Patent and
Trademark Office'' for ``Patent Office''.
1962--Pub. L. 87-772 amended section generally, and among other
changes, incorporated with necessary changes in language, the various
provisions of Title 35, Patents, relating to the procedure of appeals to
the Court of Customs and Patent Appeals and review by civil action in
patent cases, which had previously been incorporated by reference only.
1958--Pub. L. 85-609 authorized appeals by persons dissatisfied with
the decision of the Trademark Trial and Appeal Board, and substituted
``Trademark Trial and Appeal Board'' for ``Commissioner'' in proviso.
1952--Act July 19, 1952, substituted references to new title 35 for
repealed section of title 35.
Effective Date of 1999 Amendment
Amendment by Pub. L. 106-113 effective 4 months after Nov. 29, 1999,
see section 1000(a)(9) [title IV, Sec. 4731] of Pub. L. 106-113, set out
as a note under section 1 of Title 35, Patents.
Effective Date of 1988 Amendment
Amendment by Pub. L. 100-667 effective one year after Nov. 16, 1988,
see section 136 of Pub. L. 100-667, set out as a note under section 1051
of this title.
Effective Date of 1984 Amendment
Amendment by Pub. L. 98-620 applicable to proceedings pending in the
Patent and Trademark Office on Nov. 8, 1984, and to appeals pending in
the United States Court of Appeals for the Federal Circuit on that date,
see section 414(c) of Pub. L. 98-620, set out as a note under section
142 of Title 35, Patents.
Effective Date of 1982 Amendment
Amendment by Pub. L. 97-164 effective Oct. 1, 1982, see section 402
of Pub. L. 97-164, set out as a note under section 171 of Title 28,
Judiciary and Judicial Procedure.
Effective Date of 1975 Amendments
Amendment by Pub. L. 93-600 effective Jan. 2, 1975, but not to
affect any suit, proceeding, or appeal then pending, see section 4 of
Pub. L. 93-600, set out as a note under section 1063 of this title.
Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4 of
Pub. L. 93-596, set out as a note under section 1111 of this title.
Effective Date of 1958 Amendment
For effective date and applicability of amendment by Pub. L. 85-609,
see section 3 of Pub. L. 85-609, set out as a note under section 1067 of
this title.
Repeal and Effect on Existing Rights
Repeal of inconsistent provisions, effect of this chapter on pending
proceedings and existing registrations and rights under prior acts, see
notes set out under section 1051 of this title.
Transfer of Functions
For transfer of functions of other officers, employees, and agencies
of Department of Commerce, with certain exceptions, to Secretary of
Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950,
Secs. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in
the Appendix to Title 5, Government Organization and Employees.
Reorganization Plan No. 5 of 1950
Amendment by Pub. L. 85-609 as subject to Reorganization Plan No. 5
of 1950, see note set out under section 1067 of this title.
Section Referred to in Other Sections
This section is referred to in title 28 section 1295.
