106.03 Form of Submissions
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 meet the following requirements:
- (1) A paper submission must be printed in at least 11-point type and double-spaced, with the text on one side only of each sheet;
- (2) A paper submission must be 8 to 8.5 inches (20.3 to 21.5 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 manner 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 web site 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.
- (c) To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to § 2.125(e) must be submitted under a separate cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission with the confidential portions redacted must be submitted.
Submissions may be made to the Board on paper or via the Internet through ESTTA, (Electronic System for Trademark Trial and Appeals), the Board’s electronic filing system, as permitted by the rules or Board practice. For example, the rules provide that an opposition against a Trademark § 1 or § 44 application, or a request for extension of time to oppose a § 1 or § 44 application, may either be filed on paper or through ESTTA, but that an opposition against a Trademark Act § 66(a) application, or a request for extension of time to oppose a § 66(a) application, must be filed through ESTTA. [ Note 1.] The rules which previously permitted submissions on CD-ROM have been revoked; all submissions should now be made on paper or through ESTTA. [ Note 2.] See also TBMP § 703.02(i).
The requirements for each form of submission to the Board, including a confidential submission, are specified at 37 CFR § 2.126. The requirements for paper submissions are set out in 37 CFR § 2.126(a). A paper submission must be 8 to 8.5 inches wide and 11 to 11.69 inches long, and printed in at least 11-point type and double-spaced, with the text on one side only of each sheet. If a paper submission contains dividers, the dividers may not contain tabs or any devices that extend beyond the edges of the paper, and must be on the same size and weight paper as the submission.
In addition, a paper submission must not be stapled or bound. This is important because all paper submissions are scanned electronically into the Board’s electronic information system and removing staples or binding prior to scanning is difficult and time-consuming, especially where papers have been bound by machine. Moreover, disassembling stapled or bound papers can damage pages, resulting in jammed scanning equipment and increasing the possibility that pages will become lost or disordered during scanning. [ Note 3.]
A document filed with the Board must be either the original or a legible copy thereof, on good quality paper. [ Note 4.] See also TBMP § 107 (fax copies). Extra copies of a document should not be submitted. [ Note 5.]
The requirements for electronic submissions over the Internet can be found in 37 CFR § 2.126(b). Submissions over the Internet are made through ESTTA which is available on the USPTO website. [ Note 6.] Using ESTTA, a person can complete and submit forms, with attachments and/or exhibits, to the Board over the Internet, making an official filing online. ESTTA gives step-by-step instructions for properly completing a form. Available forms and instructions can be found at: http://estta.uspto.gov. For more information regarding ESTTA, see TBMP § 110.09.
The Board encourages use of ESTTA for the filing of all submissions in Board proceedings. ESTTA permits round-the-clock filing with real-time receipt confirmation, while reducing delay and the possibility of mishandling of submissions within the USPTO. Many ESTTA filings are processed automatically, with an appropriate Board order issuing within minutes of filing. ESTTA users are strongly urged to plan ahead. Because unexpected problems can occur, users should keep filing deadlines in mind and allow plenty of time to resolve any issue which may arise. The Board will provide general assistance to ESTTA filers but cannot guarantee that any problem will be resolved prior to a deadline. Except when filing extensions of time to oppose or oppositions to Madrid Protocol applications, ESTTA filing is optional. If ESTTA filing is not possible prior to a deadline for any reason, parties should timely submit their filings on paper using another accepted filing method (e.g., certificate of mailing and Priority Mail Express® procedures). See TBMP § 110, et seq. (Certificates of Mailing), and TBMP § 111, et seq. (Priority Mail Express®).
Use of ESTTA is mandatory for the filing of either extensions of time to oppose or notices of opposition against Madrid Protocol applications, i.e., applications under Trademark Act § 66(a), 15 U.S.C. § 1141f(a). The requirement for use of ESTTA for such filings enables the USPTO to fulfill its obligation to timely notify the International Bureau of the World Intellectual Property Organization of oppositions against requests for extension of protection under the Madrid Protocol. A request for an extension of time to oppose a Madrid Protocol application which is not filed through ESTTA will be denied. Similarly, a notice of opposition not filed through ESTTA against such an application will not be instituted. [ Note 7.] Once a notice of opposition is filed, subsequent submissions may be filed either on paper, or through ESTTA.
Filers may call the Board with questions about filing at (571) 272-8500 or (800) 786-9199 (toll free). Alternatively, filers may send non-urgent email inquiries to ESTTA@uspto.gov, and include a description of the problem, the ESTTA tracking number and Board proceeding number (if any), and a telephone number for contact. The Board will respond to email inquiries within two business days. The email address is for technical ESTTA questions only. Documents will not be accepted for filing by email.
Exhibits to a submission are also subject to the requirements of 37 CFR § 2.126. Exhibits pertaining to a paper submission must be filed on paper and must comply with the requirements for a paper submission. [ Note 8.] Exhibits pertaining to an electronic submission must be filed electronically through ESTTA as an attachment to the submission and conform to the requirements for electronic submissions. [ Note 9.] See TBMP § 110.09(c)(3) regarding size limitations.
As with any paper submission, paper exhibits may not contain tabs, dividers or any such devices that extend beyond the edges of the paper, and moreover, may not be stapled or bound. However, it is acceptable to use binder clips or rubber bands, or similar devices that would allow for easy separation of the papers for scanning.
Exhibits that are large, bulky, valuable, or breakable may be photographed or otherwise reproduced so that an appropriate paper or digitized image of the exhibits can be filed with the Board in lieu of the originals. Exhibits consisting of videotapes or audiotapes of commercials, demonstrations, etc., may not be filed electronically.
The requirements for confidential submissions are specified in 37 CFR § 2.126(c). To be handled as confidential, and kept out of the public record, submissions to the Board that are confidential must be filed under a separate cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission with the confidential portions redacted must also be submitted. [ Note 10.] The Board strongly recommends that confidential materials be filed through ESTTA using the "CONFIDENTIAL" option. See TBMP § 120.02 and TBMP § 412.04 for information on filing confidential materials.
The Board, in its discretion, may refuse to enter and consider submissions which are not in compliance with 37 CFR § 2.126.
Format of submissions. Apart from the identification, signature, and form requirements referred to above, there is no particular format that submissions to the Board must follow. Nor does the Office have printed forms for any documents filed in Board proceedings. Where possible, parties are encouraged to include a citation to the TTABVUE entry and page number, e.g., 1 TTABVUE 2.
NOTES:
1. 37 CFR § 2.101(b) (filing of oppositions); 37 CFR § 2.102(a) (filing of extensions of time to oppose).
2. See Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1654-55 (TTAB 2014) (parties may not, by agreement, override Trademark Rule 2.126 provisions for form of submissions; however, video and audio recordings of evidence such as commercials may be submitted on CD-ROM).
3. See RULES OF PRACTICE FOR TRADEMARK-RELATED FILINGS UNDER THE MADRID PROTOCOL IMPLEMENTATION ACT , 68 Fed. Reg. 55748, 55760 (September 26, 2003).
4. 37 CFR § 2.193. See also Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba Watermark Cruises, 107 USPQ2d 1750, 1758, n.16 (TTAB 2013) ("the onus is on the party making the submissions to ensure that, at a minimum, all materials are clearly readable by the adverse party and the Board"), aff’d, 565 F. App’x. 900 (Fed. Cir. 2014) (mem.).
5. DeLorme Publishing Co. v. Eartha’s Inc., 60 USPQ2d 1222, 1222 n.1 (TTAB 2000) (papers should be filed in single copies only unless otherwise required by rule); ITC Entertainment Group Ltd. v. Nintendo of Am. Inc., 45 USPQ2d 2021, 2022-23 (TTAB 1998) (unnecessary copies and attachments to motions resulted in undue delay and a waste of Board resources); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1708 n.1 (TTAB 1994).
6. 37 CFR § 2.2(g); 37 CFR § 2.126 (b).
7. In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019, 2021 (TTAB 2005).