905    Petition To The Director

37 C.F.R. § 2.146   Petitions to the Director.

  • (a) Petition may be taken to the Director: (1) From any repeated or final formal requirement of the examiner in the ex parte prosecution of an application if permitted by § 2.63(b); (2) in any case for which the Act of 1946, or Title 35 of the United States Code, or this Part of Title 37 of the Code of Federal Regulations specifies that the matter is to be determined directly or reviewed by the Director; (3) to invoke the supervisory authority of the Director in appropriate circumstances; (4) in any case not specifically defined and provided for by this Part of Title 37 of the Code of Federal Regulations; (5) in an extraordinary situation, when justice requires and no other party is injured thereby, to request a suspension or waiver of any requirement of the rules not being a requirement of the Act of 1946.
  • (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.
  • (c) Every petition to the Director shall include a statement of the facts relevant to the petition, the points to be reviewed, the action or relief requested, and the fee required by § 2.6. Any brief in support of the petition shall be embodied in or accompany the petition. The petition must be signed by the petitioner, someone with legal authority to bind the petitioner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with the requirements of § 2.193(e)(5). When facts are to be proved on petition, the petitioner must submit proof in the form of affidavits or declarations in accordance with § 2.20, signed by someone with firsthand knowledge of the facts to be proved, and any exhibits.
  • (d) A petition must be filed within two months of the mailing date of the action from which relief is requested, unless a different deadline is specified elsewhere in this chapter.
  • (e)
    • (1) A petition from the grant or denial of a request for an extension of time to file a notice of opposition shall be filed within fifteen days from the date of mailing of the denial of the request. A petition from the grant of a request shall be served on the attorney or other authorized representative of the potential opposer, if any, or on the potential opposer. A petition from the denial of a request shall be served on the attorney or other authorized representative of the applicant, if any, or on the applicant. Proof of service of the petition shall be made as provided by § 2.119. The potential opposer or the applicant, as the case may be, may file a response within fifteen days from the date of service of the petition and shall serve a copy of the response on the petitioner, with proof of service as provided by § 2.119. No further document relating to the petition shall be filed.
    • (2) A petition from an interlocutory order of the Trademark Trial and Appeal Board must be filed within thirty days after the date of mailing of the order from which relief is requested. Any brief in response to the petition must be filed, with any supporting exhibits, within fifteen days from the date of service of the petition. Petitions and responses to petitions, and any papers accompanying a petition or response, under this subsection must be served on every adverse party pursuant to § 2.119.
  • (f) An oral hearing will not be held on a petition except when considered necessary by the Director.
  • (g) The mere filing of a petition to the Director will not act as a stay in any appeal or inter partes proceeding that is pending before the Trademark Trial and Appeal Board nor stay the period for replying to an Office action in an application except when a stay is specifically requested and is granted or when §§ 2.63(b) and 2.65 are applicable to an ex parte application.
  • (h) Authority to act on petitions, or on any petition, may be delegated by the Director.

The only type of Board decision that may be appealed, whether to the United States Court of Appeals for the Federal Circuit or by way of civil action, is a final decision, i.e., a "final dispositive ruling that ends litigation on the merits" before the Board. Interlocutory decisions or orders, i.e., decisions or orders that do not put an end to the litigation before the Board, are not appealable. Appealability is not limited to decisions issued by the Board after final hearing. Other types of Board decisions are also appealable, in those cases where they put an end to the litigation before the Board. See TBMP § 901.02(a).

When a final decision of the Board is reviewed on appeal, interlocutory orders or decisions issued during the course of the proceeding before the Board may also be reviewed if they are "logically related" to the basic substantive issues in the case. See TBMP § 901.02(a).

In an inter partes proceeding, a party may obtain review of an order or decision of the Board which concerns matters of procedure (rather than the central issue or issues before the Board), and does not put an end to the litigation before the Board, by timely petition to the Director. [ Note 1.]

A petition to the Director from an interlocutory order or decision of the Board, in a Board inter partes proceeding, must be filed within 30 days after the mailing date of the order or decision from which relief is requested. Any brief in response to the petition must be filed, with any supporting exhibits, within 15 days from the date of service of the petition. Petitions from an interlocutory order or decision of the Board, responses to such petitions, and any materials accompanying a petition or response, must be served on every adverse party in the manner prescribed in 37 C.F.R. § 2.119(a). [ Note 2.] See TBMP § 113.

For information concerning a petition to the Director from the denial, or from the granting, of a request for an extension of time to file a notice of opposition, see 37 C.F.R. § 2.146(e)(1), and TBMP § 211.03.

A petition on any matter not otherwise specifically provided for must be filed within two months from the mailing date of the action from which relief is requested. [ Note 3.]

The mere filing of a petition to the Director will not act as a stay in any ex parte appeal or inter partes proceeding pending before the Board. [ Note 4.] However, the Board may in its discretion suspend proceedings in an inter partes case pending determination of a petition to the Director.

A petition to the Director must include a statement of the facts relevant to the petition, the points to be reviewed, the action or relief requested, and the fee required by 37 C.F.R. § 2.6. Any brief in support of the petition must be embodied in or accompany the petition. When facts are to be proved in ex parte cases, the proof, in the form of affidavits or declarations in accordance with 37 C.F.R. § 2.20, and any exhibits, must accompany the petition. [ Note 5.]

An oral hearing will not be held on a petition to the Director except when considered necessary by the Director. [ Note 6.]

For further information on petitions to the Director, see 37 C.F.R. § 2.146. Cf. TMEP Chapter 1700 .

NOTES:

 1.   See 37 C.F.R. § 2.146; Chesebrough-Pond’s Inc. v. Faberge, Inc., 618 F.2d 776, 205 USPQ 888, 891 (CCPA 1980) (grant of summary judgment motion although essentially a procedural decision is appealable not petitionable in view of its substantial substantive effect); Palisades Pageants, Inc. v. Miss America Pageant, 442 F.2d 1385, 169 USPQ 790, 792 (CCPA 1971) (whether Board abused discretion in denying motion to amend description of services was a matter to be determined by Commissioner, not the Court since not part of the central issue); Jack Lenor Larsen Inc. v. Chas. O. Larsen Co., 44 USPQ2d 1950, 1952 n.2 (TTAB 1997) (petition to Director seeking reopening of cancellation proceeding is inappropriate as petition because it seeks review of final decision of Board); Quality S. Manufacturing Inc. v. Tork Lift Central Welding of Kent Inc., 60 USPQ2d 1703 (Comm’r 2000) (petition from Board’s finding that registration issued inadvertently and to direct Board to dismiss opposition granted in view of defect in request for extension of time to oppose); Kimberly Clark Corp. v. Paper Converting Industry Inc., 21 USPQ2d 1875 (Comm’r 1991) (decision denying motion to dismiss opposition as untimely filed reviewed by petition); Miss Nude Florida, Inc. v. Drost, 193 USPQ 729 (TTAB 1976), pet. to Comm’r denied, 198 USPQ 485, 486 (Comm’r 1977) (Board’s decision not to consider untimely evidence was critical factor leading to Board’s final decision and to that extent was "logically related" to the central issue and therefore appropriate for appeal rather than petition); Johnson & Johnson v. Cenco Medical/Health Supply Corp., 177 USPQ 586 (Comm’r 1973) (Board’s decision granting motion to amend pleading to add new claim reviewable by petition). Cf. 37 C.F.R. § 2.146(b)  (questions of substance arising during the ex parte prosecution of applications, including, but not limited to, questions arising under Trademark Act §§ 2, 3, 4, 5, 6, and 23, 15 U.S.C. §§ 1052, 1053, 1054, 1055, 1056, and 1091, are not considered to be appropriate subject matter for petition to the Director).

 2.   37 C.F.R. § 2.146(e)(2).

 3.   37 C.F.R. § 2.146(d).

 4.   37 C.F.R. § 2.146(g). See In re Docrite Inc., 40 USPQ2d 1636, 1637 n.1 (Comm’r 1996) (citing Trademark Rule 2.146(g) and stating that filing petition to review denial of request to extend time to oppose does not stay time to file opposition or further extensions of time to oppose).

 5.   37 C.F.R. § 2.146(c). See, e.g., Jack Lenor Larsen Inc. v. Chas. O. Larson Co., 44 USPQ2d 1950, 1952 n.2 (TTAB 1997) (respondent’s petition did not specify which subsection of 2.146(a) provided basis for Director’s review).

 6.   37 C.F.R. § 2.146(f).