1201.01    Readiness of Case for Appeal

Trademark Act § 20 , 15 U.S.C. § 1070  Appeal from examiner to Trademark Trial and Appeal Board. An appeal may be taken to the Trademark Trial and Appeal Board from any final decision of the examiner in charge of the registration of marks upon the payment of the prescribed fee.

37 CFR § 2.63(b)   Final refusal or requirement. Upon review of a response, the examining attorney may state that the refusal(s) to register, or the requirement(s), is final.

  • (1) If the examining attorney issues a final action that maintains any substantive refusal(s) to register, the applicant may respond by timely filing:
    • (i) A request for reconsideration under paragraph (b)(3) of this section that seeks to overcome any substantive refusal(s) to register, and comply with any outstanding requirement(s),maintained in the final action; or
    • (ii) An appeal to the Trademark Trial and Appeal Board under §§ 2.141 and 2.142.
  • (2) If the examining attorney issues a final action that contains no substantive refusals to register, but maintains any requirement(s), the applicant may respond by timely filing:
    • (i) A request for reconsideration under paragraph (b)(3) of this section that seeks to comply with any outstanding requirement(s) maintained in the final action;
    • (ii) An appeal of the requirement(s) to the Trademark Trial and Appeal Board under §§ 2.141 and 2.142;
  • (3) Prior to the expiration of the time for filing an appeal or a petition, the applicant may file a request for reconsideration of the final action that seeks to overcome any substantive refusal(s) and/or comply with any outstanding requirement(s). Filing a request for reconsideration does not stay or extend the time for filing an appeal or petition. The Office will enter amendments accompanying requests for reconsideration after final action if the amendments comply with the rules of practice in trademark cases and the Act.

37 CFR § 2.141  Ex parte appeals from action of trademark examining attorney.

  • (a) An applicant may, upon final refusal by the trademark examining attorney , appeal to the Trademark Trial and Appeal Board upon payment of the prescribed fee for each class in the application for which an appeal is taken , within six months of the date of issuance of the final action . A second refusal on the same grounds may be considered as final by the applicant for purpose of appeal.

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 of 1946, are not considered to be appropriate subject matter for petitions to the Director.

On the first or any subsequent reexamination or reconsideration of an application for registration of a trademark, the examining attorney may state that the refusal of the registration or the insistence upon a requirement is final. [ Note 1.] When the examining attorney states that his or her action is final, the applicant’s response is limited to an appeal to the Board, or to compliance with any requirement, or to a petition to the Director if a petition is permitted by 37 CFR § 2.63(b). [ Note 2.] An applicant may, pursuant to 37 CFR § 2.63(b), file a request for reconsideration, but the submission of such a request does not automatically extend the applicant’s time for filing a notice of appeal. Thus, if an applicant submits a request for reconsideration within the six-month time period from the issue date of the final action, but does not file a notice of appeal within that time period, and if the request for reconsideration fails to persuade the examining attorney, and if the examining attorney does not issue a new final refusal, the application will be deemed abandoned. [ Note 3.]

An applicant may consider a second refusal on the same ground(s), or a repeated requirement, as final for purposes of appeal. [ Note 4.] All grounds and/or requirements must be repeated in order for the second refusal to be considered as final. [ Note 5.]

Thus, an application is ripe for appeal when the examining attorney issues a final action, and an appeal may also be taken from a second refusal on the same ground(s) or from a repeated requirement. [ Note 6.] However, an Office action that repeats one or more grounds for refusal or requirements but also raises a new ground or requirement may not be considered as final for purposes of appeal.

NOTES:

 1.   See Trademark Act § 12(b), 15 U.S.C. § 1062(b); 37 CFR § 2.63(b); TMEP § 714 and TMEP § 714.03.

 2.   See 37 CFR § 2.63(b); TMEP § 715.01. See also Trademark Act § 20, 15 U.S.C. § 1070, and TMEP § 1501.

 3.   In re GTE Education Services, 34 USPQ2d 1478, 1480 (Comm’r 1994).

 4.   See In re Roberts, 87 USPQ2d 1474, 1478 (TTAB 2008); In re MediaShare Corp., 43 USPQ2d 1304, 1305 n.2 (TTAB 1997); In re Hechinger Investment Co. of Delaware Inc., 24 USPQ2d 1053, 1054 n.2 (TTAB 1991); In re Citibank, N.A., 225 USPQ 612, 613 (TTAB 1985). See also 37 CFR § 2.141; TMEP § 1501.

 5.   In re Page, 51 USPQ2d 1660, 1662 n.2 (TTAB 1999).

 6.   See In re Roberts, 87 USPQ2d 1474, 1478 (TTAB 2008); In re Hechinger Investment Co. of Delaware Inc., 24 USPQ2d 1053, 1054 n.2 (TTAB 1991); In re Citibank, N.A., 225 USPQ 612, 613 (TTAB 1985). See also Trademark Act § 20, 15 U.S.C. § 1070; 37 CFR § 2.63(b); 37 CFR § 2.141; TMEP § 1501.