1202.01 In General
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 C.F.R. § 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.
- (b) The applicant must pay an appeal fee for each class from which the appeal is taken. If the applicant does not pay an appeal fee for at least one class of goods or services before expiration of the six-month statutory filing period, the application will be abandoned. In a multiple-class application, if an appeal fee is submitted for fewer than all classes, the applicant must specify the class(es) in which the appeal is taken. If the applicant timely submits a fee sufficient to pay for an appeal in at least one class, but insufficient to cover all the classes, and the applicant has not specified the class(es) to which the fee applies, the Board will issue a written notice setting a time limit in which the applicant may either pay the additional fees or specify the class(es) being appealed. If the applicant does not submit the required fee or specify the class(es) being appealed within the set time period, the Board will apply the fee(s) to the class(es) in ascending order, beginning with the lowest numbered class.
37 C.F.R. § 2.142(a) Any appeal filed under the provisions of § 2.141 must be filed within six months from the date of the final refusal or the date of the action from which the appeal is taken. An appeal is taken by filing a notice of appeal in written form, as prescribed in § 2.126, and paying the appeal fee.
An appeal to the Board from an examining attorney’s final action, second refusal on the same ground(s), or repeated requirement, is taken by timely filing, see TBMP § 1202.02, in the Office both a notice of appeal and the prescribed appeal fee. [ Note 1.] See TBMP § 1202.04. If the notice of appeal and fee are not timely filed, the application will be deemed to have been abandoned, and the Board cannot entertain the appeal unless the applicant successfully petitions the Director to revive the application. [ Note 2.]
All requirements that have been made by the examining attorney, but which are not to be the subject of appeal, should be complied with prior to the filing of an appeal, and the statement of issues in the brief should note such compliance. [ Note 3.] If an applicant that files an appeal to the Board fails to comply with such a requirement, the refusal to register may be affirmed by the Board for failure to comply with that requirement, regardless of the disposition made by the Board of the issue or issues that are the subject of appeal. See TBMP § 1201.04.
If an application contains multiple classes, and a final refusal or requirement pertains to some, but not all, of the classes in the application, the applicant has the option of (i) filing an appeal for the application as a whole (paying the appeal fee only for the classes for which it wishes to appeal), or (ii) filing a request to divide the application to sever those classes for which there has been no final requirement or refusal and filing an appeal only for the class(es) to which the final refusal or requirement pertains. In the former case, the application will not be published for opposition (or a registration will not issue in the case of an application on the Supplemental Register) for those classes for which no refusal or requirement was made final until after the appeal is decided. Similarly, if a final refusal or requirement pertains to some but not all of the goods or services in a single class, the applicant has the option of filing a request to divide the application to sever those goods or services from that class. If no request to divide the application is filed, the application may not proceed to publication (or, in the case of an application on the Supplemental Register, to registration) for those goods or services for which no refusal or requirement has been made, until after the appeal is decided. If a request to divide the application is filed, see TBMP § 1205.02, the classes, or the goods or services within a class, for which there is no final requirement or refusal which have been divided out of the application will proceed to publication or registration, as appropriate, and an appeal will be instituted for the remaining classes for which an appeal has been filed. If goods or services have been divided out of a single class, an appeal will be instituted for the application with the remaining goods or services in that class. See TBMP § 1202.05.
If an application contains multiple classes and the applicant wishes to appeal a final refusal or requirement in some but not all of the classes, the applicant should indicate in the notice of appeal the classes in which the refusal or requirement is being appealed. Any remaining classes for which there is a final refusal or requirement that is not the subject of the appeal will be deemed abandoned. [ Note 4.] However, if the applicant has also filed a request for reconsideration for those classes, after instituting the appeal with respect to the classes which are the subject of the appeal, the Board will remand the application to the examining attorney to consider the request for reconsideration. If the examining attorney is not persuaded by the request for reconsideration, the classes for which no appeal has been filed will be deemed abandoned unless the examining attorney issues a nonfinal Office action or a new final refusal (thereby giving the applicant additional time to file a notice of appeal with respect to these classes).
NOTES:
1. See 37 C.F.R. § 2.6(a)(18). See also Trademark Act § 20, 15 U.S.C. § 1070; 37 C.F.R. § 2.141 and 37 C.F.R. § 2.142(a); TMEP § 1501.
2. See Trademark Act § 12(b), 15 U.S.C. § 1062; 37 C.F.R. § 2.65(a); 37 C.F.R. § 2.66. See also TMEP § 718.02, TMEP § 1501.04, TMEP § 1714, and TMEP § 1714.01(a).
4. See In re MGA Entertainment Inc., 84 USPQ2d 1743, 1745 n.1 (TTAB 2007) (applicant did not appeal requirement to delete Class 28 goods, and Board treated Class 28 goods as deleted from application).