1202.02 Time for Appeal
An appeal to the Board may be taken from any final action, second refusal on the same ground(s), or repeated requirement issued by the examining attorney during the ex parte prosecution of an application for registration, except that a formal requirement which was the subject of a petition decided by the Director may not thereafter be the subject of an appeal to the Board. [ Note 1.] See TBMP § 1201.01 and TBMP § 1201.05.
An appeal to the Board must be filed within six months from the date of the action from which the appeal is taken. [ Note 2.] If a notice of appeal is timely filed, but the appeal fee is not, the appeal will be untimely, and the application will be deemed to have been abandoned. See TBMP § 1202.01.
The preferable method for filing a notice of appeal to the Board is through ESTTA in the manner prescribed in 37 CFR § 2.126(b), and is strongly encouraged. For more information regarding filing via ESTTA, see TBMP § 110.09. However, a notice of appeal also may be filed by facsimile transmission (unlike other correspondence to be filed with the Board) [ Note 3.], as well as by any of the ordinary methods for filing correspondence intended for the Board. [ Note 4.] See TBMP § 106.03, TBMP § 107, TBMP § 110.09, and TBMP § 1202.03. The certificate of mailing and certificate of transmission procedures described in 37 CFR § 2.197, and the"Priority Mail Express®" procedure described in 37 CFR § 2.198, are available for the filing of an appeal to the Board. [ Note 5.] TBMP § 110 and TBMP § 111.
During the period between issuance of a final action and expiration of the time for filing an appeal therefrom, an applicant may file a request for reconsideration, with or without an amendment and/or new evidence. [ Note 6.] TBMP § 1204. However, the filing of a request for reconsideration will not serve to stay the time for filing an appeal (or for petitioning the Director, if appropriate). [ Note 7.] TBMP § 1201.05. If, upon the examining attorney’s consideration of the request, all refusals and requirements are not withdrawn, and no appeal or other proper response to the final refusal has been filed during the six months following issuance of the final action, the application will be abandoned. [ Note 8.] Thus, if an applicant that has filed a request for reconsideration of a final action wishes to preserve its right to appeal in the event that the request is unsuccessful, the applicant must file an appeal prior to the expiration of the six-month period following issuance of the final action.
If an appeal is late-filed, but the applicant timely filed some other response to the appealed action, such as an amendment or request for reconsideration, the Board will issue a written action informing the applicant of the lateness of its appeal; stating that the late appeal cannot be entertained by the Board; and forwarding the application to the examining attorney for appropriate action with respect to the document that was timely filed. An applicant may petition the Director to revive an application for failure to file a timely appeal, as an appeal is considered a response to an Office action. [ Note 9.] However, the unintentional delay standard of 37 CFR § 2.66(a) (revival of abandoned applications) does not apply to applications that were abandoned due to an incomplete response after a final Office action. A request for reconsideration that is not accompanied by a notice of appeal is considered an incomplete response. Therefore, if an applicant files a request for reconsideration but fails to timely file a notice of appeal, and the examining attorney denies the request for reconsideration, it is the Director’s practice to deny a petition to revive in such circumstances. [ Note 10.] If an applicant files a petition to revive for the purpose of filing an appeal, it is preferable to file the notice of appeal electronically through ESTTA. However, the petition to revive should be filed through TEAS, and should include a statement that a notice of appeal is being filed with the Board. If the petition and notice of appeal are filed as paper submissions, the notice of appeal should be filed with the Board, but the petition to revive, which is filed with the Director, should indicate that a notice of appeal is being filed with the Board.
NOTES:
1. See TMEP § 1501.
2. See Trademark Act § 12(b), 15 U.S.C. § 1062; 37 CFR § 2.142(a).
3. See 37 CFR § 2.195(d)(3). The only paper that may be filed with the Board by facsimile transmission is the notice of appeal.
4. See 37 CFR § 2.195; 37 CFR § 2.126.
5. See 37 CFR § 2.197; 37 CFR § 2.198. Many documents that are filed in connection with the prosecution of an application, including the application itself and an amendment to allege use, may not be filed using the "Priority Mail Express" procedure. See TMEP § 305.03. However, the "Priority Mail Express®" procedure is available for filing a notice of appeal. Further, the only paper that may be filed by facsimile transmission with the Board is the notice of appeal.
6. See 37 CFR § 2.63(b). See also TMEP § 715.02 and TMEP § 715.03.
7. See 37 CFR § 2.63(b); TMEP § 715.03 and TMEP § 715.03(c).
8. See 37 CFR § 2.63(b) and 37 CFR § 2.142 (a). See also TMEP § 715.03(a).
9. See 37 CFR § 2.66(a) and TMEP § 1714 et seq.
10. See TMEP § 1501 regarding notices of appeal, TMEP § 715.03 et seq. regarding requests for reconsideration, and TMEP § 1714.01(f)(ii)(A) regarding situations in which the unintentional delay standard does not apply.