TMEP 1610: Court Orders Concerning Registrations

October 2017 Edition of the TMEP

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1610    Court Orders Concerning Registrations

The USPTO must rectify the register and make appropriate entry upon its records in response to a court order certified to the USPTO pursuant to 15 U.S.C. §1119.  That section provides:

In any action involving a registered mark the court may determine the right to registration, order the cancellation of registrations, in whole or in part, restore cancelled registrations, and otherwise rectify the register with respect to the registrations of any party to the action.  Decrees and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Patent and Trademark Office, and shall be controlled thereby.

Any such order affecting a registration must be certified to the USPTO, and should be addressed to the Office of the Solicitor, Mail Stop 8, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.  37 C.F.R. §1.1(a)(3)(iii).  An uncertified copy of the court order is unacceptable.  If the registration affected by the order is the subject of a pending or suspended inter partes proceeding at the Trademark Trial and Appeal Board, that fact should be noted in a cover letter to the Office of the Solicitor.  Once the USPTO receives the certified order, appropriate action will typically be taken by the USPTO without the necessity of any submission by an interested party.  However, if it would be helpful for purposes of determining the scope or effect of an order, the USPTO may, at the Director’s discretion, issue a show cause order directing the registrant and parties to the action from which the order arose to respond and provide information or arguments regarding the order.