          CHAPTER 900  REVIEW OF DECISION OF BOARD


901  Appeals--In General

902  Appeal to Court of Appeals for the Federal Circuit

903  Appeal by Civil Action

904  Access to Record During Appeal

905  Petition to Commissioner



901  Appeals--In General

15 U.S.C. 1071(a)(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 8, or an applicant for renewal, who is
dissatisfied with the decision of the Commissioner 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
Commissioner, shall, within twenty days after the appellant
has filed notice of appeal according to paragraph (2) of
this subsection, files notice with the Commissioner 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 Commissioner, within such time after the
date of the decision from which the appeal is taken as the
Commissioner prescribes, but in no case less than 60 days
after that date.

(3) The Commissioner 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
Commissioner forward the original or certified copies of
such documents during pendency of the appeal.  In an ex
parte case, the Commissioner 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
Commissioner 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 Commissioner, 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 1(b) before the mark is registered, if such
applicant cannot prevail without establishing constructive
use pursuant to section 7(c).

(b)(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 Commissioner 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 Commissioner
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 cancelled, or such other
matter as the issues in the proceeding require, as the facts
in the case may appear.  Such adjudication shall authorize
the Commissioner 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 1(b) before the mark is registered, if such
applicant cannot prevail without establishing constructive
use pursuant to section 7(c).

(2) The Commissioner 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 Commissioner, 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.

37 CFR 2.145 Appeal to court and civil acton.
(a) Appeal to U.S. Court of Appeals for the Federal Circuit.
An applicant for registration, or any party to an
interference, opposition, or cancellation proceeding or any
party to an application to register as a concurrent user,
hereinafter referred to as inter partes proceedings, who is
dissatisfied with the decision of the Trademark Trial and
Appeal Board and any registrant who has filed an affidavit
or declaration under section 8 of the Act or who has filed
an application for renewal and is dissatisfied with the
decision of the Commissioner (2.165, 2.184), may appeal to
the U.S. Court of Appeals for the Federal Circuit.  The
appellant must take the following steps in such an appeal:
     (1) In the Patent and Trademark Office give written
notice of appeal to the Commissioner (see paragraphs (b) and
(d) of this section);
     (2) In the court, file a copy of the notice of appeal
and pay the fee for appeal, as provided by the rules of the
Court.

(b) Notice of appeal.  (1) When an appeal is taken to the
U.S. Court of Appeals for the Federal Circuit, the appellant
shall give notice thereof in writing to the Commissioner,
which notice shall be filed in the Patent and Trademark
Office, within the time specified in paragraph (d) of this
section.  The notice shall specify the party or parties
taking the appeal and shall designate the decision or part
thereof appealed from.

(2) In inter partes proceedings, the notice must be served
as provided in 2.119.

(3) The notice, if mailed to the Office, shall be addressed
as follows:  Box 8, Commissioner of Patents and Trademarks,
Washington, DC 20231.

(c) Civil Action.  (1) Any person who may appeal to the U.S.
Court of Appeals for the Federal Circuit (paragraph (a) of
this section), may have remedy by civil action under section
21(b) of the Act.  Such civil action must be commenced
within the time specified in paragraph (d) of this section.

(2) Any applicant or registrant in an ex parte case who
takes an appeal to the U.S. Court of Appeals for the Federal
Circuit waives any right to proceed under section 21(b) of
the Act.

(3) Any adverse party to an appeal taken to the U.S. Court
of Appeals for the Federal Circuit by a defeated party in an
inter partes proceeding may file a notice with the
Commissioner within twenty days after the filing of the
defeated party's notice of appeal to the court (paragraph
(b) of this section), electing to have all further
proceedings conducted as provided in section 21(b) of the
Act.  The notice of election must be served as provided in
2.119.

(4) A party to a proceeding before the Trademark Trial and
Appeal Board which commences a civil action, pursuant to
Section 21(b) of the Act, seeking review of a decision of
the Board should file written notice thereof in the Patent
and Trademark Office, addressed to the Board, within one
month after the expiration of the time for appeal or civil
action, in order to avoid premature termination of the Board
proceeding.

(d) Time for appeal or civil action.  (1) The time for
filing the notice of appeal to the U.S. Court of Appeals for
the Federal Circuit (paragraph (b) of this section),or for
commencing a civil action (paragraph (c) of this section),
is two months from the date of the decision of the Trademark
Trial and Appeal Board or the Commissioner, as the case may
be.  If a request for rehearing or reconsideration or
modification of the decision is filed within the time
specified in 2.127(b), 2.129(c) or 2.144, or within any
extension of time granted thereunder, the time for filing an
appeal or commencing a civil action shall expire two months
after action on the request.  In inter partes cases, the
time for filing a cross-action or a notice of a cross-appeal
expires (i) 14 days after service of the notice of appeal or
the summons and complaint; or (ii) two months from the date
of the decision of the Trademark Trial and Appeal Board or
the Commissioner, whichever is later.

(2) The times specified in this section in days are calendar
days.  The times specified herein in months are calendar
months except that one day shall be added to any two-month
period which includes February 28.  If the last day of time
specified for an appeal, or commencing a civil action falls
on a Saturday, Sunday or Federal holiday in the District of
Columbia, the time is extended to the next day which is
neither a Saturday, Sunday nor a Federal holiday.

(3) If a party to an inter partes proceeding has taken an
appeal to the U.S. Court of Appeals for the Federal Circuit
and an adverse party has filed notice under section 21(a)(1)
of the Act electing to have all further proceedings
conducted under section 21(b) of the Act, the time for
filing a civil action thereafter is specified in section
21(a)(1) of the Act.  The time for filing a cross-action
expires 14 days after service of the summons and complaint.

(e) Extensions of time to commence judicial review.  The
Commissioner may extend the time for filing an appeal or
commencing a civil action (1) for good cause shown if
requested in writing before the expiration of the period for
filing an appeal or commencing a civil action, or (2) upon
written request after the expiration of the period for
filing an appeal or commencing a civil action upon a showing
that the failure to act was the result of excusable neglect.



901.01  Avenues of Appeal

A party to a Board proceeding who is dissatisfied with the
decision of the Board is provided, under the Act, with two
possible (mutually exclusive) remedies.  The dissatisfied
party may either:
     (1) Appeal to the United States Court of Appeals for
the Federal Circuit, which will review the decision from
which the appeal is taken on the record before the PTO, or
     (2) Have remedy by civil action (in a United States
District Court), in which the court "may adjudge that an
applicant is entitled to a registration upon the application
involved, that a registration involved should be cancelled,
or such other matter as the issues in the proceeding
require, as the facts in the case may appear."
See Section 21 of the Act, 15 U.S.C. 1071, and 37 CFR
2.145.  See also Spraying Systems Co. v. Delavan Inc., 975
F.2d 387, 24 USPQ2d 1181 (7th Cir. 1992), and Alltrade Inc.
v. Uniweld Products Inc., 946 F.2d 622, 20 USPQ2d 1698 (9th
Cir. 1991).

In an inter partes proceeding, if a dissatisfied party
chooses to file an appeal to the Federal Circuit, any
adverse party may, within 20 days after the filing of the
notice of appeal, file notice that it elects to have the
appeal dismissed, and to have further proceedings conducted
instead by way of civil action.  See Section 21(a)(1) of the
Act, and 37 CFR 2.145(c)(3).  Within 30 days after the
filing of a notice of election by an adverse party, the
appellant must commence a civil action for review of the
Board's decision, failing which the Board's decision will
govern further proceedings in the case.  See Section
21(a)(1) of the Act, and 37 CFR 2.145(d)(3).

For a discussion of forum selection considerations, see Saul
Lefkowitz and Janet E. Rice, Adversary Proceedings Before
the Trademark Trial and Appeal Board, 75 Trademark Rep. 323,
400-405 (1985).



901.02  What May be Appealed

901.02(a)  Final Decision Versus Interlocutory Decision

The only type of Board decision which may be appealed,
whether to the United States Court of Appeals for the
Federal Circuit or by way of civil action, is a final
decision, i.e., a final dispositive ruling that ends
litigation on the merits before the Board.  Interlocutory
decisions or orders, i.e., decisions or orders that do not
put an end to the litigation before the Board, are not
appealable.  See Copelands' Enterprises Inc. v. CNV Inc.,
887 F.2d 1065, 12 USPQ2d 1562 (Fed. Cir. 1989).  See also
Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 853
F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988); Parker Brothers v.
Tuxedo Monopoly, Inc., 757 F.2d 254, 226 USPQ 11 (Fed. Cir.
1985); and Gal v. Israel Military Industries of the Ministry
of Defense of the State of Israel, 1 USPQ2d 1424 (Comm'r
1986).

Appealability is not limited to decisions issued by the
Board after final hearing.  Other types of Board decisions
are also appealable, in those cases where they put an end to
the litigation before the Board.  See, for example, Hewlett-
Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710
(Fed. Cir. 1991) (decision on 37 CFR 2.132(a) motion to
dismiss); Person's Co. v. Christman, 900 F.2d 1565, 14
USPQ2d 1477 (Fed. Cir. 1990) (decision on motion for summary
judgment); Jewelers Vigilance Committee Inc. v. Ullenberg
Corp., 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988)
(decision on motion for summary judgment); Stanspec Co. v.
American Chain & Cable Co., 531 F.2d 563, 189 USPQ 420 (CCPA
1976) (decision on motion to dismiss); and Williams v. Five
Platters, Inc., 510 F.2d 963, 184 USPQ 744 (CCPA 1975)
(decision on FRCP 60(b) motion to vacate).

On the other hand, if the Board resolves a merits issue
prior to final hearing, but other merits issues remain, that
is, the litigation is still before the Board as a whole, the
Board's decision on the merits issue is interlocutory,
rather than final, for purposes of judicial review.  For
example, in a case in which there is a counterclaim, if the
Board grants summary judgment only as to the counterclaim,
the case is not ripe for appeal until there has been a final
decision with respect to the original claim; similarly, if
the Board grants summary judgment only as to the original
claim, the case is not ripe for appeal until there has been
a final decision with respect to the counterclaim.  See
Interlocutory Decisions by the Trademark Trial and Appeal
Board, 1123 TMOG 36 (February 19, 1991), and Procter &
Gamble Co. v. Sentry Chemical Co., 22 USPQ2d 1589 (TTAB
1992).  See also Copelands' Enterprises Inc. v. CNV Inc.,
887 F.2d 1065, 12 USPQ2d 1562 (Fed. Cir. 1989).  When the
Board, prior to final hearing, issues a decision resolving
one or more, but not all, of the merits issues in a case
before it, it is the usual practice of the Board to include
in its decision the following statement:  "This decision is
interlocutory in nature.  Appeal may be taken within two
months after the entry of a final decision in the case."
See, for example, Interlocutory Decisions by the Trademark
Trial and Appeal Board, supra, and Procter & Gamble Co. v.
Sentry Chemical Co., supra.

When an appeal is taken from a decision of the Board, it is
the court to which an appeal is taken, not the Board, which
determines whether the involved decision is appealable, that
is, whether the court has jurisdiction to entertain the
appeal.  See R.G. Barry Corp. v. Mushroom Makers, Inc., 609
F.2d 1002, 204 USPQ 195 (CCPA 1979) (Board's attempted
"certification" of interlocutory decision as appealable
given no effect in Court's determination of whether it had
jurisdiction over the appeal), and Gal v. Israel Military
Industries of the Ministry of Defense of the State of
Israel, 1 USPQ2d 1424 (Comm'r 1986) (Commissioner has no
statutory authority to "certify" interlocutory orders of the
Board for appeal).  See also, with respect to jurisdiction
to entertain an appeal, Alltrade Inc. v. Uniweld Products
Inc., 946 F.2d 622, 20 USPQ2d 1698 (9th Cir. 1991).

When a final decision of the Board is reviewed on appeal,
interlocutory orders or decisions issued during the course
of the proceeding before the Board may also be reviewed if
they are "logically related" to the basic substantive issues
in the case.  See Dan Robbins & Associates, Inc. v. Questor
Corp., 599 F.2d 1009, 202 USPQ 100 (CCPA 1979), and
Palisades Pageants, Inc. v. Miss America Pageant, 442 F.2d
1385, 169 USPQ 790 (CCPA 1971), cert. denied, 404 U.S. 938,
171 USPQ 641 (1971).

A party may obtain review of an order or decision of the
Board which concerns matters of procedure (rather than the
central issue or issues before the Board), and does not put
an end to the litigation before the Board, by timely
petition to the Commissioner.  See TBMP 905, and
authorities cited therein.  A party may also file a request
with the Board for reconsideration of such an order or
decision.  See TBMP 518.

The mandamus procedure may not be used as a substitute for
the appeal procedure specified in Section 21 of the Act.
See Formica Corp. v. Lefkowitz, 590 F.2d 915, 200 USPQ 641
(CCPA 1979), cert. denied, 442 U.S. 917, 202 USPQ 159
(1979).



901.02(b)  Judgment Subject to Establishment of Constructive
Use

In an inter partes proceeding before the Board, no final
judgment will be entered in favor of an applicant under
Section 1(b) of the Act, 15 U.S.C. 1051(b), before the mark
is registered, if such applicant cannot prevail without
establishing constructive use pursuant to Section 7(c) of
the Act, 15 U.S.C. 1057(c).  See Sections 21(a)(4) and
21(b)(1) of the Act.  Rather, in those cases where the Board
finds that a Section 1(b) applicant is entitled to prevail
only if it establishes constructive use, the Board will
enter judgment in favor of that applicant, subject to the
applicant's establishment of constructive use.  See 37 CFR
2.129(d), and Zirco Corp. v. American Telephone and
Telegraph Co., 21 USPQ2d 1542 (TTAB 1991).  If, after entry
of that judgment, the Section 1(b) applicant files an
acceptable statement of use, and obtains a registration,
thus establishing its constructive use, final judgment will
be entered in behalf of the Section 1(b) applicant.  If, on
the other hand, the Section 1(b) applicant fails to
establish constructive use, that is, fails to file an
acceptable statement of use and obtain a registration,
judgment will instead be entered in favor of the adverse
party.

When the Board enters judgment in favor of a Section 1(b)
applicant subject to that party's establishment of
constructive use, the time for filing an appeal or
commencing a civil action for review of the Board's decision
runs from the date of the entry of judgment subject to
establishment of constructive use.  See 37 CFR 2.129(d),
and Zirco Corp. v. American Telephone and Telegraph Co., 21
USPQ2d 1542 (TTAB 1991).



902  Appeal to Court of Appeals for the Federal Circiut

902.01  Notice of Appeal

15 U.S.C. 1071(a)(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 Commissioner,
within such time after the date of the decision from which
the appeal is taken as the Commissioner prescribes, but in
no case less than 60 days after that date.

37 CFR 2.145 Appeal to court and civil acton.
(a) Appeal to U.S. Court of Appeals for the Federal Circuit.
An applicant for registration, or any party to an
interference, opposition, or cancellation proceeding or any
party to an application to register as a concurrent user,
hereinafter referred to as inter partes proceedings, who is
dissatisfied with the decision of the Trademark Trial and
Appeal Board and any registrant who has filed an affidavit
or declaration under section 8 of the Act or who has filed
an application for renewal and is dissatisfied with the
decision of the Commissioner (2.165, 2.184), may appeal to
the U.S. Court of Appeals for the Federal Circuit.  The
appellant must take the following steps in such an appeal:
     (1) In the Patent and Trademark Office give written
notice of appeal to the Commissioner (see paragraphs (b) and
(d) of this section);
     (2) In the court, file a copy of the notice of appeal
and pay the fee for appeal, as provided by the rules of the
Court.

(b) Notice of appeal.  (1) When an appeal is taken to the
U.S. Court of Appeals for the Federal Circuit, the appellant
shall give notice thereof in writing to the Commissioner,
which notice shall be filed in the Patent and Trademark
Office, within the time specified in paragraph (d) of this
section.  The notice shall specify the party or parties
taking the appeal and shall designate the decision or part
thereof appealed from.

(2) In inter partes proceedings, the notice must be served
as provided in 2.119.

(3) The notice, if mailed to the Office, shall be addressed
as follows:  Box 8, Commissioner of Patents and Trademarks,
Washington, DC 20231.

A party taking an appeal to the United States Court of
Appeals for the Federal Circuit from a decision of the Board
must give written notice thereof both to the Commissioner
and to the Court of Appeals for the Federal Circuit, and pay
to the Court the fee required by the Court's rules.  See 37
CFR 2.145(a) and 2.145(b).

Specifically, the original notice of appeal must be filed in
the PTO, within the time required by 37 CFR 2.145(d) (see
TBMP 902.02).  See Section 21(a)(2) of the Act, 15 U.S.C.
1071(a)(2); 37 CFR 2.145(a) and 2.145(b)(1); and Appeals
to the Federal Circuit From PTO, 1120 TMOG 22, 24 (November
13, 1990).  The certificate of mailing and certificate of
transmission procedures described in 37 CFR 1.8, and the
certificate of "Express Mail" procedure described in 37 CFR
1.10, are available for filing a notice of appeal.  The
notice must specify the party or parties taking the appeal
and designate the decision or part thereof appealed from.
However, reasons for appeal need not be given.  See 37 CFR
2.145(b)(1), and Appeals to the Federal Circuit From PTO,
supra.  A copy of the decision being appealed, and a copy of
any decision on reconsideration thereof, should be attached
to the notice of appeal.  See Appeals to the Federal Circuit
From PTO, supra.  If the appeal is taken from a decision of
the Board in an inter partes proceeding, a copy of the
notice must be served upon every other party to the
proceeding, in the manner prescribed in 37 CFR 2.119 (see
TBMP 113).  See 37 CFR 2.145(b)(2).

For information concerning the ways (i.e., by hand delivery,
first-class mail, etc.) in which a notice of appeal may be
filed in the PTO, the filing date of a notice of appeal, and
the address to be used on a notice of appeal mailed to the
PTO, see 37 CFR 1.6, 1.8, 1.10, and 2.145(b)(3); Waiver of
Certificate of Mailing Requirement Under 37 CFR 1.10, 1174
TMOG 92 (May 16, 1995); Filing of a Notice of Appeal to the
Court of Appeals for the Federal Circuit in the Patent and
Trademark Office, 1113 TMOG 29 (April 17, 1990); and Appeals
to the Federal Circuit From PTO, 1120 TMOG 22, 24 (November
13, 1990) (NOTE:  the two 1990 Official Gazette notices must
be read in light of subsequent rule amendments--for example,
the 37 CFR 1.8 certificate procedures are now applicable to
a notice of appeal from a decision of the Board, but were
not in 1990).  For further information concerning how to
file a notice of appeal, contact the Office of the Solicitor
in the PTO.

Three copies of the notice of appeal must be filed in the
Court of Appeals for the Federal Circuit (NOTE:  while 37
CFR 2.145(a) requires the filing of only one copy of the
notice with the Federal Circuit, Federal Circuit Rule
15(a)(1) requires that three copies of the notice be filed
with the Federal Circuit), and the appeal fee required by
the rules of the Court must be paid to the Court.  See 37
CFR 2.145(a).  A copy of the decision being appealed, and a
copy of any decision on reconsideration thereof, should be
attached to the copy of the notice.  See Appeals to the
Federal Circuit From PTO, 1120 TMOG 22, 24 (November 13,
1990).



902.02  Time for Filing Notice of Appeal, Cross-Appeal

15 U.S.C. 1071(a)(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 Commissioner,
within such time after the date of the decision from which
the appeal is taken as the Commissioner prescribes, but in
no case less than 60 days after that date.

37 CFR 2.145(d) Time for appeal or civil action.  (1) The
time for filing the notice of appeal to the U.S. Court of
Appeals for the Federal Circuit (paragraph (b) of this
section),or for commencing a civil action (paragraph (c) of
this section), is two months from the date of the decision
of the Trademark Trial and Appeal Board or the Commissioner,
as the case may be.  If a request for rehearing or
reconsideration or modification of the decision is filed
within the time specified in 2.127(b), 2.129(c) or 2.144,
or within any extension of time granted thereunder, the time
for filing an appeal or commencing a civil action shall
expire two months after action on the request.  In inter
partes cases, the time for filing a cross-action or a notice
of a cross-appeal expires (i) 14 days after service of the
notice of appeal or the summons and complaint; or (ii) two
months from the date of the decision of the Trademark Trial
and Appeal Board or the Commissioner, whichever is later.

(2) The times specified in this section in days are calendar
days.  The times specified herein in months are calendar
months except that one day shall be added to any two-month
period which includes February 28.  If the last day of time
specified for an appeal, or commencing a civil action falls
on a Saturday, Sunday or Federal holiday in the District of
Columbia, the time is extended to the next day which is
neither a Saturday, Sunday nor a Federal holiday.

(3) If a party to an inter partes proceeding has taken an
appeal to the U.S. Court of Appeals for the Federal Circuit
and an adverse party has filed notice under section 21(a)(1)
of the Act electing to have all further proceedings
conducted under section 21(b) of the Act, the time for
filing a civil action thereafter is specified in section
21(a)(1) of the Act.  The time for filing a cross-action
expires 14 days after service of the summons and complaint.

37 CFR 2.145(e) Extensions of time to commence judicial
review.  The Commissioner may extend the time for filing an
appeal or commencing a civil action (1) for good cause shown
if requested in writing before the expiration of the period
for filing an appeal or commencing a civil action, or (2)
upon written request after the expiration of the period for
filing an appeal or commencing a civil action upon a showing
that the failure to act was the result of excusable neglect.

The time for filing a notice of appeal to the United States
Court of Appeals for the Federal Circuit is two months from
the date of the Board decision which is the subject of the
appeal.  See Section 21(a)(2) of the Act, 15 U.S.C.
1071(a)(2); 37 CFR 2.145(d)(1); and Appeals to the Federal
Circuit From PTO, 1120 TMOG 22, 24 (November 13, 1990).
When the Board enters judgment in favor of a Section 1(b),
15 U.S.C. 1051(b), applicant subject to that party's
establishment of constructive use (see  TBMP 901.02(b)),
the time for filing an appeal runs from the date of the
entry of judgment subject to establishment of constructive
use.  See 37 CFR 2.129(d), and Zirco Corp. v. American
Telephone and Telegraph Co., 21 USPQ2d 1542 (TTAB 1991).

If a request for rehearing, reconsideration, or modification
of the Board's decision is filed within the time specified
in 37 CFR 2.127(b), 2.129(c), or 2.144, or within any
extension of time granted thereunder, the time for filing an
appeal expires two months after action on the request.  See
37 CFR 2.145(d)(1).

In an inter partes case, the time for filing a notice of
cross-appeal expires (1) 14 days after service of the notice
of appeal, or (2) two months from the date of the Board
decision which is the subject of the appeal, whichever is
later.  See 37 CFR 2.145(d)(1), and Appeals to the Federal
Circuit From PTO, 1120 TMOG 22, 24 (November 13, 1990).

The certificate of mailing and certificate of transmission
procedures described in 37 CFR 1.8, and the certificate of
"Express Mail" procedure described in 37 CFR 1.10, are
available for filing a notice of appeal or a notice of cross-
appeal.

If a written request to extend the time for appeal is filed
before the expiration of the appeal period, the Commissioner
may grant the request upon a showing of good cause.  If the
request is not filed until after the expiration of the
appeal period, the Commissioner may grant the request only
upon a showing that the failure to act was the result of
excusable neglect.  See 37 CFR 2.145(e), and Appeals to the
Federal Circuit From PTO, 1120 TMOG 22, 24 (November 13,
1990).  A request for an extension of time to file an appeal
should be directed to the attention of the Office of the
Solicitor.  See Appeals to the Federal Circuit From PTO,
supra.

It is the Commissioner, not the Board, who determines
whether a notice of appeal has been timely filed.  If the
Commissioner determines that a notice of appeal was not
timely, the Commissioner notifies the Clerk of the Federal
Circuit thereof.  The Clerk in turn issues an order to the
appellant to show cause why the appeal should not be
dismissed, and refers appellant's response to the Court.
See Federal Circuit Rule 15(b)(1), and Appeals to the
Federal Circuit From PTO, 1120 TMOG 22, 24 (November 13,
1990).

An appellant which has received an order to show cause from
the Clerk of the Federal Circuit may file a request under 37
CFR 2.145(e) for an extension of time to file an appeal,
accompanied by a showing that the late filing of the notice
of appeal was the result of excusable neglect.  The request
should be filed in the Office of the Solicitor, which will
notify the Clerk of the Commissioner's decision on the
request.  A decision by the Commissioner granting the
request will discharge the order to show cause.  See Appeals
to the Federal Circuit From PTO, 1120 TMOG 22, 24 (November
13, 1990).



902.03  Appeal to Federal Circuit Waives Appeal by Civil
Action

A party which takes an appeal to the United States Court of
Appeals for the Federal Circuit from a decision of the Board
thereby waives its right to have remedy by way of civil
action under Section 21(b) of the Act, 15 U.S.C. 1071(b).
See Section 21(a)(1) of the Act, 15 U.S.C. 1071(a)(1)
(party which appeals to the Federal Circuit thereby waives
its right to proceed under Section 21(b) of the Act), and 37
CFR 2.145(c)(2) (applicant in ex parte case which takes an
appeal to the Federal Circuit waives any right to proceed
under Section 21(b) of the Act).  Cf. Section 21(b)(1) of
the Act, 15 U.S.C. 1071(b)(1) (party dissatisfied with
decision of Board may, unless appeal has been taken to the
Federal Circuit, have remedy by civil action), and TBMP
5903.05.

However, in an inter partes case, if an adverse party, in
response to the notice of appeal to the Federal Circuit,
files a notice electing to have further proceedings
conducted instead by way of civil action, the appeal to the
Federal Circuit will be dismissed, and the party which filed
the appeal must commence a civil action, within 30 days
after the filing of the notice of election, for review of
the appealed decision, failing which that decision will
govern further proceedings in the case.  See TBMP 901.01
and 902.04.



902.04  Notice of Election to Have Review by Civil Action

15 U.S.C. 1071(a)(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 8, or an applicant for renewal, who is
dissatisfied with the decision of the Commissioner 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
Commissioner, shall, within twenty days after the appellant
has filed notice of appeal according to paragraph (2) of
this subsection, files notice with the Commissioner 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.

37 CFR 2.145(c)(3) Any adverse party to an appeal taken to
the U.S. Court of Appeals for the Federal Circuit by a
defeated party in an inter partes proceeding may file a
notice with the Commissioner within twenty days after the
filing of the defeated party's notice of appeal to the court
(paragraph (b) of this section), electing to have all
further proceedings conducted as provided in section 21(b)
of the Act.  The notice of election must be served as
provided in 2.119.

37 CFR 2.145(d)(3) If a party to an inter partes proceeding
has taken an appeal to the U.S. Court of Appeals for the
Federal Circuit and an adverse party has filed notice under
section 21(a)(1) of the Act electing to have all further
proceedings conducted under section 21(b) of the Act, the
time for filing a civil action thereafter is specified in
section 21(a)(1) of the Act.  The time for filing a cross-
action expires 14 days after service of the summons and
complaint.

When a defeated party in an inter partes proceeding before
the Board takes an appeal to the United States Court of
Appeals for the Federal Circuit, any adverse party may,
within 20 days after the filing of the notice of appeal,
file a notice with the Commissioner electing to have all
further proceedings conducted by way of civil action, under
Section 21(b) of the Act, 15. U.S.C. 1071(b), seeking
review of the decision which was the subject of the appeal.
See Section 21(a)(1) of the Act, 15 U.S.C. 1071(a)(1), and
37 CFR 2.145(c)(3).  The certificate of mailing and
certificate of transmission procedures described in 37 CFR
1.8, and the certificate of "Express Mail" procedure
described in 37 CFR 1.10, are available for filing a notice
of election.  A copy of the notice must be served upon every
other party to the proceeding, in the manner prescribed in
37 CFR 2.119 (see TBMP 113).  See 37 CFR 2.145(c)(3).  A
copy of the notice must also be filed with the Federal
Circuit.  See Federal Circuit Rule 15(e).

If an adverse party files a notice electing to have further
proceedings conducted by way of civil action under Section
21(b) of the Act, the appeal to the Federal Circuit will be
dismissed, and the party which filed the appeal must
commence a civil action, within 30 days after the filing of
the notice of election, for review of the appealed decision,
failing which that decision will govern further proceedings
in the case.  See Section 21(a)(1) of the Act, and 37 CFR
2.145(d)(3).  Any cross-action must be filed within 14 days
after service of the summons and complaint in the civil
action.  See 37 CFR 2.145(d)(3).



902.05  Information Concerning Times Specified in 37 CFR
2.145

37 CFR 2.145(d)(2) The times specified in this section in
days are calendar days.  The times specified herein in
months are calendar months except that one day shall be
added to any two-month period which includes February 28.
If the last day of time specified for an appeal, or
commencing a civil action falls on a Saturday, Sunday or
Federal holiday in the District of Columbia, the time is
extended to the next day which is neither a Saturday, Sunday
nor a Federal holiday.

In 37 CFR 2.145 (which concerns appeals and civil actions
seeking review of Board decisions), the times specified in
days are calendar days, while the times specified in months
are calendar months (except that one day is added to any two-
month period which includes February 28).  If the last day
of the time allowed for filing an appeal falls on a
Saturday, Sunday, or Federal holiday in the District of
Columbia, the time for filing an appeal is extended to the
next day which is not a Saturday, Sunday, or Federal
holiday.  See 37 CFR 2.145(d)(2).



902.06  Certified List

When notice is filed in the PTO of an appeal to the United
States Court of Appeals for the Federal Circuit from a
decision of the Board, the Commissioner sends to the Federal
Circuit a statement indicating whether the notice of appeal
was considered timely filed, and a certified list of the
documents comprising the record in the PTO, i.e., a
certified copy of the list of docket entries on the file
jacket containing the PTO record of the proceeding (cf.
TBMP 120.01), accompanied by a copy of the decision
appealed..  See Section 21(a)(3) of the Act, 15 U.S.C.
1071(a)(3); Federal Circuit Rules 15(b)(1) and 17(b)(1);
and Appeals to the Federal Circuit From PTO, 1120 TMOG 22,
24 (November 13, 1990).  A copy of the certified list is
mailed by the PTO to every party to the proceeding.  See
Federal Circuit Rule 17(c) and Appeals to the Federal
Circuit From PTO, supra.

When the Federal Circuit receives the notice of appeal and
the certified list, the Court dockets the appeal, and gives
notice to all parties of the date of docketing.  See Federal
Circuit Rule 15(b)(1), and Appeals to the Federal Circuit
From PTO, 1120 TMOG 22, 24 (November 13, 1990).  The
appellant's time in which to file its initial brief runs
from the date of service of the certified list or the date
of docketing the appeal, whichever is later.  Because an
appeal is not docketed until after the certified list is
served in appeals from Board decisions, the appellant's time
for filing its brief normally runs from the date of
docketing.  See Federal Circuit Rule 31(a), and Appeals to
the Federal Circuit From PTO, supra.



902.07  Appeal Briefs, Appendix, etc.

For information concerning other matters of practice and
procedure during an appeal to the United States Court of
Appeals for the Federal Circuit from a Board decision,
including information concerning motions, briefs, the
appendix to the briefs, oral argument, etc., see Federal
Circuit Rules, and Appeals to the Federal Circuit From PTO,
1120 TMOG 22 (November 13, 1990).  For information
concerning the appendix, in particular, see Federal Circuit
Rules 30 and 32, and Appeals to the Federal Circuit From
PTO, supra, at page 25.



902.08  Special Provisions for Ex Parte Cases

If an applicant in an ex parte case takes an appeal to the
United States Court of Appeals for the Federal Circuit from
a decision of the Board, the applicant thereby waives its
right to proceed by way of civil action under Section 21(b)
of the Act, 15 U.S.C. 1071(b).  See Section 21(a)(1) of the
Act, 15 U.S.C. 1071(a)(1), and 37 CFR 2.145(c)(2).

On appeal to the Federal Circuit in an ex parte case, the
Commissioner files a brief in support of the Board's
decision.  See Section 21(a)(3) of the Act, 15 U.S.C.
1071(a)(3).



903  Appeal by Civil Action

903.01  Notice of Civil Action

37 CFR 2.145(c)(4) A party to a proceeding before the
Trademark Trial and Appeal Board which commences a civil
action, pursuant to Section 21(b) of the Act, seeking review
of a decision of the Board should file written notice
thereof in the Patent and Trademark Office, addressed to the
Board, within one month after the expiration of the time for
appeal or civil action, in order to avoid premature
termination of the Board proceeding.

A party which commences a civil action, under Section 21(b)
of the Act, 15 U.S.C. 1071(b) seeking review of a decision
of the Board should file written notice thereof in the PTO,
addressed to the Board, within one month after the
expiration of the time for appeal or civil action.  Failure
to notify the Board of the commencement of the civil action
may result in premature termination of the proceeding by the
PTO.  See 37 CFR 2.145(c)(4).  That is, the PTO, being
unaware of the commencement of the civil action, will treat
the Board's decision as governing further proceedings in the
case, and will take steps, based on the judgment entered in
that decision, to close out the proceeding file and give
effect to the judgment.  See TBMP 806.



903.02  Parties to Civil Action

15 U.S.C. 1071(b)(2) The Commissioner 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 Commissioner, 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.

When a party to a Board inter partes proceeding appeals a
decision of the Board by commencing a civil action seeking
review of the decision, the Commissioner shall not be made a
party to the civil action.  However, the clerk of the court
in which the civil action is filed must notify the
Commissioner of the filing of the complaint, and the
Commissioner has the right to intervene in the action.  See
Section 21(b)(2) of the Act, 15 U.S.C. 1071(b)(2).

The suit may be instituted against the party in interest as
shown by the records of the PTO at the time of the decision
of which review is sought, but any party in interest may
become a party to the action.  See Section 21(b)(4) of the
Act, 15 U.S.C. 1071(b)(4).

When an applicant in an ex parte proceeding appeals a
decision of the Board by commencing a civil action seeking
review of the decision, a copy of the complaint must be
served on the Commissioner (who is a party to the
proceeding).  See Section 21(b)(3) of the Act, 15 U.S.C.
1071(b)(3).



903.03  Place of Civil Action

15 U.S.C. 1071(b)(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.

Generally, a civil action under Section 21(b) of the Act, 15
U.S.C. 1071(b), may be brought in any Federal district
court which has jurisdiction over the person.  However, if
there are 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 has
jurisdiction.  See Section 21(b)(4), 15 U.S.C. 1071(b)(4);
Del-Viking Productions Inc. v. Estate of Johnson, 31 USPQ2d
1063 (W.D.Pa. 1994); and Saul Lefkowitz and Janet E. Rice,
Adversary Proceedings Before the Trademark Trial and Appeal
Board, 75 Trademark Rep. 323, 405-407 (1985).  Cf. Alltrade
Inc. v. Uniweld Products Inc.,  946 F.2d 622, 20 USPQ2d 1698
(9th Cir. 1991), and Chocoladefabriken Lindt & Sprungli
Aktiengesellschaft v. Rykoff-Sexton Inc., 24 USPQ2d 1236
(S.D.N.Y. 1992).



903.04  Time for Filing Civil Action, Cross-Action

15 U.S.C. 1071(b)(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 Commissioner 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 Commissioner 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
cancelled, or such other matter as the issues in the
proceeding require, as the facts in the case may appear.
Such adjudication shall authorize the Commissioner 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 1(b) before the mark is
registered, if such applicant cannot prevail without
establishing constructive use pursuant to section 7(c).

37 CFR 2.145(d) Time for appeal or civil action.  (1) The
time for filing the notice of appeal to the U.S. Court of
Appeals for the Federal Circuit (paragraph (b) of this
section),or for commencing a civil action (paragraph (c) of
this section), is two months from the date of the decision
of the Trademark Trial and Appeal Board or the Commissioner,
as the case may be.  If a request for rehearing or
reconsideration or modification of the decision is filed
within the time specified in 2.127(b), 2.129(c) or 2.144,
or within any extension of time granted thereunder, the time
for filing an appeal or commencing a civil action shall
expire two months after action on the request.  In inter
partes cases, the time for filing a cross-action or a notice
of a cross-appeal expires (i) 14 days after service of the
notice of appeal or the summons and complaint; or (ii) two
months from the date of the decision of the Trademark Trial
and Appeal Board or the Commissioner, whichever is later.

                        *     *     *

(e) Extensions of time to commence judicial review.  The
Commissioner may extend the time for filing an appeal or
commencing a civil action (1) for good cause shown if
requested in writing before the expiration of the period for
filing an appeal or commencing a civil action, or (2) upon
written request after the expiration of the period for
filing an appeal or commencing a civil action upon a showing
that the failure to act was the result of excusable neglect.

The time for commencing a civil action under Section 21(b)
of the Act, 15 U.S.C. 1071(b), is two months from the date
of the Board decision of which review is sought.  See
Section 21(b)(1) of the Act, 15 U.S.C. 1071(b)(1); 37 CFR
2.145(d)(1); and Appeals to the Federal Circuit From PTO,
1120 TMOG 22, 24 (November 13, 1990).  A civil action is
commenced by the filing of a complaint with the court.  See
FRCP 3.  When the Board enters judgment in favor of a
Section 1(b), 15 U.S.C. 1051(b), applicant subject to that
party's establishment of constructive use (see TBMP
901.02(b)), the time for commencing a civil action for
review of the Board's decision runs from the date of the
entry of judgment subject to establishment of constructive
use.  See 37 CFR 2.129(d), and Zirco Corp. v. American
Telephone and Telegraph Co., 21 USPQ2d 1542 (TTAB 1991).

If a request for rehearing, reconsideration, or modification
of the Board's decision is filed within the time specified
in 37 CFR 2.127(b), 2.129(c), or 2.144, or within any
extension of time granted thereunder, the time for
commencing a civil action expires two months after action on
the request.  See 37 CFR 2.145(d)(1).

In an inter partes case, the time for filing a cross-action
expires (1) 14 days after service of the summons and
complaint, or (2) two months from the date of the Board
decision which is the subject of the civil action, whichever
is later.  See 37 CFR 2.145(d)(1).

If a written request to extend the time for commencing a
civil action is filed before the expiration of the period
for commencing a civil action, the Commissioner may grant
the request upon a showing of good cause.  If the request is
not filed until after the expiration of the period for
commencing a civil action, the Commissioner may grant the
request only upon a showing that the failure to act was the
result of excusable neglect.  See 37 CFR 2.145(e).
Cf.Appeals to the Federal Circuit From PTO, 1120 TMOG 22, 24
(November 13, 1990).  A request for an extension of time to
file an appeal should be directed to the attention of the
Office of the Solicitor.  Cf. Appeals to the Federal Circuit
From PTO, supra.



903.05  Information Concerning Times Specified in 37 CFR
52.145

37 CFR 2.145(d)(2) The times specified in this section in
days are calendar days.  The times specified herein in
months are calendar months except that one day shall be
added to any two-month period which includes February 28.
If the last day of time specified for an appeal, or
commencing a civil action falls on a Saturday, Sunday or
Federal holiday in the District of Columbia, the time is
extended to the next day which is neither a Saturday, Sunday
nor a Federal holiday.

In 37 CFR 2.145 (which concerns appeals and civil actions
seeking review of Board decisions), the times specified in
days are calendar days, while the times specified in months
are calendar months (except that one day is added to any two-
month period which includes February 28).  If the last day
of the time allowed for commencing a civil action falls on a
Saturday, Sunday, or Federal holiday in the District of
Columbia, the time for commencing a civil action is extended
to the next day which is not a Saturday, Sunday, or Federal
holiday.  See 37 CFR 2.145(d)(2).



903.06  Civil Action Precluded by Appeal to Federal Circuit

In a proceeding before the Board, a party which is
dissatisfied with the decision of the Board may have remedy
by way of civil action, unless an appeal to the United
States Court of Appeals for the Federal Circuit has been
taken.  See Section 21(b)(1) of the Act, 15 U.S.C.
1071(b)(1).  Cf. Section 21(a)(1) of the Act, 15 U.S.C.
1071(a)(1) (party which appeals to the Federal Circuit
thereby waives its right to proceed under Section 21(b) of
the Act); 37 CFR 2.145(c)(2) (applicant in ex parte case
which takes an appeal to the Federal Circuit waives any
right to proceed under Section 21(b) of the Act); and TBMP
902.03.

However, in an inter partes case, if an appeal has been
taken to the Federal Circuit, and a party adverse to the
appellant files a notice electing to have further
proceedings conducted instead by way of civil action, the
appeal to the Federal Circuit will be dismissed, and the
party which filed the appeal must commence a civil action,
within 30 days after the filing of the notice of election,
for review of the appealed decision, failing which that
decision will govern further proceedings in the case.  See
TBMP 901.01 and 902.04.



903.07  Special Provisions for Ex Parte Cases

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
Commissioner, 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.

When an applicant in an ex parte case seeks review of a
decision of the Board by way of civil action under Section
21(b) of the Act, 15 U.S.C. 1071(b), all the expenses of
the proceeding 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.  See Section 21(b)(3) of the Act, 15 U.S.C.
1071(b)(3).



904  Access to Record During Appeal

904.01  Access During Appeal to Federal Circuit

During an appeal to the United States Court of Appeals for
the Federal Circuit, from a decision of the Board in an
inter partes case, the Board retains the original PTO record
of the case.  However, when it deems necessary, the Federal
Circuit may, upon motion or sua sponte, order transmission
(via the Office of the Solicitor) of the original or
certified copies of the record, or portions thereof, or the
physical exhibits, at any time during the pendency of the
appeal.  See Section 21(a)(3) of the Act, 15 U.S.C.
1071(a)(3), and Federal Circuit Rule 17(a).

The Board will permit a party, or its attorney or other
authorized representative, to inspect and copy any portions
of the record, including papers, transcripts, and exhibits,
which are not subject to a protective order.  Any portions
of the record which are subject to a protective order may be
inspected and copied only in accordance with the terms of
the protective order, unless the Federal Circuit amends,
modifies, or annuls the protective order, in which case
access by a party, or its attorney or other authorized
representative, to the record will be governed by the
Court's order.  See Federal Circuit Rules 17(d) and 17(e).

During an appeal to the Federal Circuit from a decision of
the Board in an ex parte case, the subject application file
is kept at the Office of the Solicitor.  Any request for
access to the application should be directed to the Office
of the Solicitor.



904.02  Access During Appeal by Civil Action

During a civil action seeking review of a decision of the
Board in an inter partes case, the Board retains the
original PTO record of the case.  The Board will release the
original record for submission (via the Office of the
Solicitor) to the court in which the civil action is pending
only upon order of the court.

The Board will permit a party, or its attorney or other
authorized representative, to inspect and copy any portions
of the record, including papers, transcripts, and exhibits,
which are not subject to a protective order.  Any portions
of the record which are subject to a protective order may be
inspected and copied only in accordance with the terms of
the protective order, unless the court amends, modifies, or
annuls the protective order, in which case access by a
party, or its attorney or other authorized representative,
to the record will be governed by the court's order.

During a civil action seeking review of a decision of the
Board in an ex parte case, the subject application file is
kept at the Office of the Solicitor.  Any request for access
to the application should be directed to the Office of the
Solicitor.



905  Petition to the Commissioner

37 CFR 2.146 Petitions to the Commissioner.
(a) Petition may be taken to the Commissioner: (1) From any
repeated or final formal requirement of the examiner in the
ex parte prosecution of an application if permitted by
2.63(b); (2) in any case for which the Act of 1946, or
Title 35 of the United States Code, or this Part of Title 37
of the Code of Federal Regulations specifies that the matter
is to be determined directly or reviewed by the
Commissioner; (3) to invoke the supervisory authority of the
Commissioner in appropriate circumstances; (4) in any case
not specifically defined and provided for by this Part of
Title 37 of the Code of Federal Regulations; (5) in an
extraordinary situation, when justice requires and no other
party is injured thereby, to request a suspension or waiver
of any requirement of the rules not being a requirement of
the Act of 1946.

(b) Questions of substance arising during the ex parte
prosecution of applications, including, but not limited to,
questions arising under sections 2, 3, 4, 5, 6 and 23 of the
Act of 1946, are not considered to be appropriate subject
matter for petitions to the Commissioner.

(c) Every petition to the Commissioner shall include a
statement of the facts relevant to the petition, the points
to be reviewed, the action or relief that is requested, and
the requisite fee (see 2.6).  Any brief in support of the
petition shall be embodied in or accompany the petition.
When facts are to be proved in ex parte cases (as in a
petition to revive an abandoned application), the proof in
the form of affidavits or declarations in accordance with
2.20, and any exhibits, shall accompany the petition.

(d) A petition on any matter not otherwise specifically
provided for shall be filed within sixty days from the date
of mailing of the action from which relief is requested.

(e)(1) A petition from the denial of a request for an
extension of time to file a notice of opposition shall be
filed within fifteen days from the date of mailing of the
denial of the request and shall be served on the attorney or
other authorized representative of the applicant, if any, or
on the applicant.  Proof of service of the petition shall be
made as provided by 2.119(a).  The applicant may file a
response within fifteen days from the date of service of the
petition and shall serve a copy of the response on the
petitioner, with proof of service as provided by 2.119(a).
No further paper relating to the petition shall be filed.

(2) A petition from an interlocutory order of the Trademark
Trial and Appeal Board shall be filed within thirty days
after the date of mailing of the order from which relief is
requested.  Any brief in response to the petition shall be
filed, with any supporting exhibits, within fifteen days
from the date of service of the petition.  Petitions and
responses to petitions, and any papers accompanying a
petition or response, under this subsection shall be served
on every adverse party pursuant to 2.119(a).

(f) An oral hearing will not be held on a petition except
when considered necessary by the Commissioner.

(g) The mere filing of a petition to the Commissioner will
not act as a stay in any appeal or inter partes proceeding
that is pending before the Trademark Trial and Appeal Board
nor stay the period for replying to an Office action in an
application except when a stay is specifically requested and
is granted or when 2.63(b) and 2.65 are applicable to an
ex parte application.

(h) Authority to act on petitions, or on any petition, may
be delegated by the Commissioner.

The only type of Board decision which may be appealed,
whether to the United States Court of Appeals for the
Federal Circuit or by way of civil action, is a final
decision, i.e., a "final dispositive ruling that ends
litigation on the merits" before the Board.  Interlocutory
decisions or orders, i.e., decisions or orders that do not
put an end to the litigation before the Board, are not
appealable.  Appealability is not limited to decisions
issued by the Board after final hearing.  Other types of
Board decisions are also appealable, in those cases where
they put an end to the litigation before the Board.  See
TBMP 901.02(a), and cases cited therein.

When a final decision of the Board is reviewed on appeal,
interlocutory orders or decisions issued during the course
of the proceeding before the Board may also be reviewed if
they are "logically related" to the basic substantive issues
in the case.  See TBMP 901.02(a), and cases cited therein.

In an inter partes proceeding, a party may obtain review of
an order or decision of the Board which concerns matters of
procedure (rather than the central issue or issues before
the Board), and does not put an end to the litigation before
the Board, by timely petition to the Commissioner.  See 37
CFR 2.146; Chesebrough-Pond's Inc. v. Faberge, Inc., 618
F.2d 776, 205 USPQ 888 (CCPA 1980); Palisades Pageants, Inc.
v. Miss America Pageant, 442 F.2d 1385, 169 USPQ 790 (CCPA
1971), cert. denied, 404 U.S. 938, 171 USPQ 641 (1971); Miss
Nude Florida, Inc. v. Drost, 198 USPQ 485 (Comm'r 1977);
Martin Marietta Corp. v. Lith-Kem Corp., 184 USPQ 492
(Comm'r 1974); Aloe Creme Laboratories, Inc. v. Magic of
Aloe, Inc., 182 USPQ 45 (Comm'r 1973); Hudson Pharmaceutical
Corp. v. Laboratorios Hosbon, S.A., 177 USPQ 707 (Comm'r
1973); Johnson & Johnson v. Cenco Medical/Health Supply
Corp., 177 USPQ 586 (Comm'r 1973); Outdoor Sports
Industries, Inc. v. Joseph & Feiss Co., 177 USPQ 533 (Comm'r
1973); and Bayley's Restaurant v. Bailey's of Boston, Inc.,
170 USPQ 43 (Comm'r 1971).  For further information
concerning which Board decisions are petitionable and which
are appealable, see the foregoing decisions.  Cf. 37 CFR
2.146(b) (questions of substance arising during the ex parte
prosecution of applications, including, but not limited to,
questions arising under Sections 2, 3, 4, 5, 6, and 23 of
the Act, 15 U.S.C. 1052, 1053, 1054, 1055, 1056, and 1091,
are not considered to be appropriate subject matter for
petition to the Commissioner).

A petition to the Commissioner from an interlocutory order
or decision of the Board, in a Board inter partes
proceeding, must be filed within 30 days after the mailing
date of the order or decision from which relief is
requested.  Any brief in response to the petition must be
filed, with any supporting exhibits, within 15 days from the
date of service of the petition.  Petitions from an
interlocutory order or decision of the Board, responses to
such petitions, and any papers accompanying a petition or
response, must be served on every adverse party in the
manner prescribed in 37 CFR 2.119(a) (see TBMP 113).  See
37 CFR 2.146(e)(2).

For information concerning a petition to the Commissioner
from the denial, or from the granting, of a request for an
extension of time to file a notice of opposition, see 37 CFR
2.146(e)(1), and TBMP 211.02.

A petition on any matter not otherwise specifically provided
for must be filed within 60 days from the mailing date of
the action from which relief is requested.  See 37 CFR
2.146(d).

The mere filing of a petition to the Commissioner will not
act as a stay in any ex parte appeal or inter partes
proceeding pending before the Board.  See 37 CFR 2.146(g);
In re Unistar Radio Networks Inc., 30 USPQ2d 1390 (Comm'r
1993); and In re Rent A Boxx Moving Systems Inc., 25 USPQ2d
1399 (Comm'r 1992).

A petition to the Commissioner must include a statement of
the facts relevant to the petition, the points to be
reviewed, the action or relief requested, and the fee
required by 37 CFR 2.6.  Any brief in support of the
petition must be embodied in or accompany the petition.
When facts are to be proved in ex parte cases, the proof, in
the form of affidavits or declarations in accordance with 37
CFR 2.20, and any exhibits, must accompany the petition.
See 37 CFR 2.146(c).

An oral hearing will not be held on a petition to the
Commissioner except when considered necessary by the
Commissioner.  See 37 CFR 2.146(f).

For further information concerning petitions to the
Commissioner, see 37 CFR 2.146.  Cf. TMEP 1701-1705.

