1202.03    Notice of Appeal

A notice of appeal is the document by which an applicant appeals from the decision of the examining attorney refusing registration. A notice of appeal must be filed through ESTTA, found at https://estta.uspto.gov. [ Note 1.] See TBMP § 106.03and TBMP § 110. Under "File a New Proceeding" choose "Appeal of Refusal to Register" from the drop-down menu, and enter the application serial number; the relevant information will then automatically appear in the form. ESTTA provides the applicant with immediate confirmation of the filing; generates the Board’s order instituting the appeal immediately; and provides the applicant the date by which it must file its appeal brief.

If ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, submissions may be filed in paper form and must include a written explanation of such technical problems or extraordinary circumstances. [ Note 2.] See TBMP § 106.03 and TBMP § 1202.02 and the rules and TMEP sections cited therein regarding certificate of mailing and certificate of mailing via Priority Mail Express® procedures. The paper version of the notice of appeal should bear at its top the wording "IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD," followed by information identifying the application in which the appeal is being filed, namely, the applicant’s name, the serial number and filing date of the application, and the involved mark. The notice of appeal need consist only of a simple statement indicating that the applicant appeals from the refusal of registration; reasons for appeal need not be given. If the application has multiple classes, and the appeal is not for all the classes in the application, the applicant should indicate in the notice of appeal the class(es) for which the appeal is taken. See TBMP § 1202.05. Only one copy of the notice of appeal should be submitted.

A notice of appeal need not be verified, and it may be signed by the applicant or its attorney or other authorized representative. An electronic signature will be accepted. [ Note 3.] See TBMP § 106.02. The Board will accept a notice of appeal that is signed by an attorney, even if he or she is not the attorney of record, i.e., there is no power authorizing him or her to act for the applicant. Moreover, the Board will accept a notice of appeal signed by the applicant itself, even if the applicant had appointed an attorney to act for it. However, the Board will continue to correspond only with the attorney of record or, if the applicant has not appointed an attorney, with the applicant itself. Please Note: The Trademark Operation will not accept any document, including a request for reconsideration filed along with a notice of appeal, if it is signed by the applicant or an attorney if a different attorney had been appointed to act for the applicant, and the power has not been revoked. [ Note 4.]

Although the notice of appeal must be signed, an unsigned notice of appeal will not be refused consideration if a signed copy is submitted to the Board within the time limit set in the notification of this defect by the Board. [ Note 5.] See TBMP § 106.02. The same is true of other unsigned papers filed in an application during an ex parte appeal to the Board. For further information concerning signature of submissions, see TBMP § 106.02.

If the applicant files a request for reconsideration or amendment (including an amendment to allege use) along with the notice of appeal, or at the time of filing the notice of appeal the applicant had filed a request for reconsideration or amendment which is still pending before the examining attorney, the applicant should indicate this by checking the box on the ESTTA form indicating that it has filed a request for reconsideration. The request for reconsideration itself should be filed through TEAS. In the rare circumstances a notice of appeal is filed as a paper submission, the applicant should include in the notice of appeal a statement that a request for reconsideration has been or is being filed; if the request for reconsideration is filed at the same time as the notice of appeal, it should accompany the notice of appeal but not be in the body of the notice of appeal. If the written explanation for paper filing is acceptable, the Board will institute the appeal, suspend proceedings, and remand the application to the examining attorney to consider the request for reconsideration or amendment. See TBMP § 1204 and TBMP § 1205.

If the applicant believes that the time is not yet ripe for the filing of a notice of appeal, but has received a final Office action and chooses to file a notice of appeal to preserve its rights, see TBMP § 1201.02, the applicant should advise the Board that it believes the final Office action is premature and, if the applicant has filed a petition on this issue, it should so inform the Board. When the notice of appeal is filed electronically through ESTTA, the applicant, after the appeal has been instituted and the electronic system has been updated, (normally 24 hours after the filing of the notice of appeal), should file through ESTTA, using the "document in a Board proceeding" menu, and checking the box for "Other Motions/Papers," an additional paper advising the Board that the final action is premature or that there is a pending petition on this issue. In the rare circumstance when the notice of appeal is submitted as a paper filing, the applicant should advise the Board in the notice of appeal of its belief that the final action is premature, or that it has filed a petition.

NOTES:

 1.   See 37 C.F.R. § 2.126(a). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69966, 69970 (Oct. 7, 2016) ("The Office is amending § 2.195(d)(3) by deleting the option of filing notices of ex parte appeal by facsimile. This is a conforming amendment to align § 2.195(d)(3) with the final rules requiring that all filings with the Board be through ESTTA.").

 2.   See 37 C.F.R. § 2.126  for general requirements for submissions to the Board. See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69966 (Oct. 7, 2016) ("Such explanations must include the specific facts underlying the inability to file by ESTTA, rather than a mere conclusory statement that technical problems or extraordinary circumstances prevented the use of ESTTA.").

 3.   See 37 C.F.R. § 2.193(a)(2); TMEP § 611.01(c).

 4.   See TMEP § 601.02, TMEP § 604.01 and TMEP § 611.05 et seq.

 5.   Cf. 37 C.F.R. § 2.119(e).