
From the U.S. Code Online via GPO Access
[wais.access.gpo.gov]
[Laws in effect as of January 2, 2001]
[Document not affected by Public Laws enacted between
  January 2, 2001 and January 28, 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.
