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 Trademark Act §37, 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.

Thus, §37 authorizes the USPTO to take, upon court order, actions concerning registrations. Id.; see also Piano Wellness, LLC v. Williams, Opp. No. 91191633, 2018 TTAB LEXIS 169, at *3 (2018).

If a federal court has issued an order concerning a registration under §37, a party to the court action who is requesting that the USPTO take action on the order must make the request in writing and do the following:

1. (1) Submit a certified copy of the order to the Director, addressed to the Office of the Solicitor, Mail Stop 8, P.O. Box 1450, Alexandria, Virginia 22313-1450; and
2. (2) If the party is aware of proceedings concerning the involved registration that are pending or suspended before the Trademark Trial and Appeal Board (Board), file a copy of such order with the Board via the Board’s electronic filing system.

37 C.F.R. §2.177(a)(1)-(2).

A party requesting that the USPTO take action on an order must follow the above procedures even if the court’s docket indicates that the court certified the order to the USPTO as this does not mean that the USPTO received the order.

A petition is not required to submit the certified court order. 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.

Timing of request. A party should not submit a request to take action on an order until after the court proceeding has been finally determined. A court proceeding is not considered finally determined until an order or ruling that ends the litigation has been rendered and noticed, and the time for any appeal or other further review has expired with no further review sought. 37 C.F.R. §2.177(b).

After the court proceeding has been finally determined and 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. 37 C.F.R. §2.177(c). 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. Id.