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U.S. Code as of:
01/19/04
Section 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.
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