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Trademark Application Examination and Appeals Procedure

1. At least two actions are available with the examiner, initial examination (§1062[a]) and re-examination (six months after refusal to register with possible subsequent re-examinations at six month intervals thereafter) §1062(b).
2. Appeal to the Trademark Trials and Appeals Board §1070
3. Civil action, including de novo review, in District Court (in the District Court for the District of Columbia if the parties are not in the same state or the same District within a state or a party resides in a foreign country); Subsequent appeal to the corresponding Circuit Court §1071(b)(1)
   • If there is no adverse party, a copy of the complaint must be served on the Director of the Patent and Trademark Office and the party initiating the action must bear all reasonable costs and expenses.
   • The record of the Patent and Trademark Office will be admitted on motion of any party and is treated as if it were original evidence in the civil action.
     • All costs and expenses associated with the admission of the record are allocated in the court's discretion.
   • Marks in intent to use applications must have become fully registered or be in constructive use for a favorable judgment to be awarded their holder.
4. Appeal to the Court of Appeals for the Federal Circuit (in lieu of the civil action in item 3.) §1071(a)(1)
   • Within twenty days after filing, an adverse party other than the Director of the Patent and Trademark Office may elect §1071(b) proceedings instead
     • The party initiating the §1071(a)(1) proceedings then must commence §1071(b) proceedings in 30 days or the decision being appealed from will control
   • Notice of the §1071(a)(1) appeal must be given to the Director of the Patent and Trademark Office within 60 days of the decision being appealed
   • Marks in intent to use applications must have become fully registered or be in constructive use for a favorable judgment to be awarded their holder.
5. Appeal to the Supreme Court

• Items two through five above also apply to interference proceedings, oppositions, concurrent use proceedings, cancellations, §1058 affidavits and renewals.

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