1203.01    Form of Brief

37 CFR § 2.126  Form of submissions to the Trademark Trial and Appeal Board.

  • (a) Submissions may be made to the Trademark Trial and Appeal Board on paper where Board practice or the rules in this part permit. A paper submission, including exhibits and depositions, must m eet the following requirements:
    • (1) A paper submission must be printed in at least 11-point type and double-spaced, with text on one side only of each sheet;
    • (2) A paper submission must be 8 to 8.5 inches (20.3 to 21. 6 cm) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs or other such devices extending beyond the edges of the paper;
    • (3) If a paper submission contains dividers, the dividers must not have any extruding tabs or other devices, and must be on the same size and weight paper as the submission;
    • (4) A paper submission must not be stapled or bound;
    • (5) All pages of a paper submission must be numbered and exhibits shall be identified in the mann er prescribed in § 2.123(g)(2);
    • (6) Exhibits pertaining to a paper submission must be filed on paper and comply with the requirements for a paper submission .
  • (b) Submissions may be made to the Trademark Trial and Appeal Board electronically via the Internet where the rules in this part or Board practice permit, according to the parameters established by the Board and published on the website of the Office. Text in an electronic submission must be in at least 11-point type and double-spaced. Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission.

37 CFR § 2.142(b)(2)   Briefs must be submitted in written form and must meet the requirements prescribed in § 2.126. Each brief shall contain an alphabetic al index of cited cases. Without prior leave of the Trademark Trial and Appeal Board, a brief shall not exceed twenty-five pages in length in its entirety, including the table of contents, index of cases, description of the record, statement of the issues, recitation of t he facts, argument , and summary.

A brief filed in an ex parte appeal to the Board must conform to the requirements of37 CFR §  2.142 (b) (2)  as well as the general requirements for submissions to the Board specified in 37 CFR §  2.126. [ Note 1.]

Only one copy of the brief should be submitted. The twenty-five page limit for an appeal brief does not refer to any exhibits attached to the brief. However, appendices or exhibits to a brief may not be used to avoid the page limitation. [ Note 2.] Material that was not previously made of record should not be submitted with the appeal brief. See TBMP § 1203.02(e) and TBMP § 1207.01. Also, the appeal brief is associated with the application file, so papers that are already in the application should not, as a matter of course, be resubmitted as exhibits to the brief. [ Note 3.] Most appeal briefs are far less than the twenty-five pages allowed by the rule and, given the limited issues and record in an appeal, the Board will rarely grant a motion for leave to exceed the twenty-five page limit. [ Note 4.] If an applicant files a brief that exceeds the twenty-five page limit without prior leave of the Board, the brief will not be considered, although the failure to file a conforming brief will not be treated as a failure to file a brief which would result in the dismissal of the appeal. [ Note 5.] In such a situation, the examining attorney will still file his or her brief, and the applicant may file a reply brief, although the reply brief must be limited to arguments that reply to the arguments made in the examining attorney’s brief; it may not be used as a substitute for a main brief, and any arguments that are not properly the subject of a reply brief will not be considered.

The brief should indicatethat it is an appeal brief, and include information identifying the application in which it is filed, namely, the applicant’s name, the serial number and filing date of the application, and the mark sought to be registered. [ Note 6.] An appeal brief should include an alphabetical index of cited cases [ Note 7.], and the case citation should include a citation to The United States Patent Quarterly (USPQ) if the case has appeared in that publication. See TBMP § 101.03 and TBMP § 1203.02(f). [ Note 8.] The brief need not include the formal requirements, such as a table of contents and description of the record, of a trial brief. [ Note 9.] If such items are included, however, they will count as part of the twenty-five page limit. When referring to the record, the applicant and examining attorney are encouraged to include a citation to the prosecution history for the application, currently the TSDR database (Trademark Status and Document Retrieval). Citation format may be by date, description of filing and page number, for example: November 4, 2013 Office Action, TSDR p. 2. Where appropriate, reference to the TTABVUE entry and page number, e.g., 1 TTABVUE 2, is also suggested.

If a great deal of evidence has been submitted during the examination/prosecution of the application, in the respective briefs the applicant and the examining attorney are encouraged to highlight the most probative evidence. [ Note 10.]

The brief should not include a proposed amendment, a request for remand, or a request for an oral hearing, within the body of the brief. [ Note 11.] Such requests should be filed by separately captioned papers. See TBMP § 1205.01, TBMP § 1207.02 and TBMP § 1216.

For further information concerning the form and contents of the examining attorney’s appeal brief, in particular, see TMEP Appendix A .

Briefs may be filed through the Board’s ESTTA online system or as a paper submission. Filing via ESTTA is strongly encouraged. Please Note: 37 CFR § 2.126  has been amended such that briefs may no longer be filed on CD-ROM.

NOTES:

 1.   In some instances, an examining attorney appeal brief may mistakenly appear to exceed the 25-page limitation in TTABVUE, the Board's online docketing system. See e.g., In re Sela Products. LLC, 107 USPQ2d 1580, 1585 (TTAB 2013) (examining attorney appeal brief complied with page limitation); Cf. In re Cordua Restaurants LP, 110 USPQ2d 1227, 1229 n. 2 (TTAB 2014) ("The Board notes that applicant’s appeal brief was single-spaced. Trademark Rule 2.126(b) 37 C.F.R. § 2.126(b) requires all briefs submitted to be double-spaced.").

 2.   In re Psygnosis Ltd., 51 USPQ2d 1594, 1596 (TTAB 1999) (applicant’s attempt to submit discussion as an appendix to brief treated by Board as an attempt to circumvent the Board’s order denying waiver of page limitation, and sanctions imposed); Harjo v. Pro-Football Inc., 45 USPQ2d 1789, 1792 (TTAB 1998) (appendices may not be used as a subterfuge to avoid the page limitation).

 3.   In re Sela Products. LLC, 107 USPQ2d 1580, 1584 (TTAB 2013) ("It is of far more utility to the Board for the applicant and examining attorney to provide citations directly to the record and, when there are a large number of attachments to an Office action or response, to the specific page number where the attachment may be found."); In re City of Houston, 101 USPQ2d 1534, 1536 (TTAB 2012) (no need to attach additional copies to appeal brief of materials already of record; examining attorney’s objections to the duplicative exhibits is overruled because striking the materials already of record would be pointless), aff’d 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013); In re SL&E Training Stable Inc.,88 USPQ2d 1216, 1220 n.9 (TTAB 2008) (attaching exhibits to brief of material already of record only adds to the bulk of the file, and requires Board to determine whether attachments had been properly made of record); In re Thor Tech Inc., 85 USPQ2d 1474, 1475 n.3 (TTAB 2007) (attaching evidence from record to briefs is duplicative and is unnecessary).

 4.   See In re Psygnosis Ltd., 51 USPQ2d 1594, 1596 (TTAB 1999) (applicant’s request for a waiver in order to include an additional 10 pages denied).

 5.   See In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (Board refused to consider applicant’s 29page brief).

 6.   Cf. TMEP § 302.03(a).

 7.   37 CFR § 2.142(b)(2).

 8.   In re Carlson, 91 USPQ2d 1198, 1199 n.2 (TTAB 2009).

 9.   Cf. 37 C.F.R. §  2.128 (b).

 10.   See In re Michalko, 110 USPQ2d 1949, 1951-52 (TTAB 2014) ("Because we must determine whether attachments to briefs are properly of record, citation to the attachment requires examination of the attachment and then an attempt to locate the same evidence in the record developed during the prosecution of the application, requiring more time and effort than would have been necessary if citations directly to the prosecution history were provided.") (citing this section));In re Lorillard Licensing Co., 99 USPQ2d 1312, 1315 (TTAB 2011) (attachment to brief of hundreds of pages of exhibits already of record not helpful; instead it would have been helpful to identify, by date of submission and page number in Office’s TDR database, the material being referenced in the brief); In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1265 (TTAB 2011) (Board would be very critical if examining attorney were to submit an inordinate number of registrations); In re Max Cap it al Group Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010) ("The Board frowns equally upon an applicant or examining attorney submitting hundreds of pages of evidence in the hope that as the Board wades through it we will find something that is probative. When they believe that it is necessary to submit a significant amount of such material, it is incumbent on the applicant and the examining attorney to specify in their briefs those pieces of evidence that they believe are most persuasive of their respective positions, so that the Board can consider that evidence in particular."); In re 1 st USA Realty Professionals Inc., 84 USPQ2d 1581, 1585 n.5 (TTAB 2007) ("submitting a large number of third-party registrations without highlighting particularly relevant ones in the appeal brief is not helpful").

 11.   In re Future Ads LLC, 103 USPQ2d 1571, 1573 (TTAB 2012) (claim of acquired distinctiveness raised for first time in reply brief should have been made in a separate request for remand); In re HerbalScience Group LLC, 96 USPQ2d 1321, 1323 (TTAB 2010) (request for remand should be filed by a separate paper, appropriately captioned "Request for Remand," rather than by a request buried within a paragraph in the middle of a brief).