101.03    Decisional Law

Proceedings before the Board are also governed, to a large extent, by precedential decisions in prior cases. These decisions include those of the Board itself, as well as the decisions of the Court of Appeals for the Federal Circuit ("Federal Circuit") (which determines appeals from decisions of the Board); the Court of Customs and Patent Appeals (predecessor of the Court of Appeals for the Federal Circuit); and the Director of The United States Patent and Trademark Office (formerly the Commissioner of Patents and Trademarks) ("Director"), who determines petitions seeking review of Board actions on procedural matters.

The Board relies primarily on precedent from the Court Appeals for the Federal Circuit. The Federal Circuit is the Board’s primary reviewing court since by statute, any applicant or party to an inter partes proceeding who is dissatisfied with the Board’s decision may seek review of the decision in the Federal Circuit. Also the Federal Circuit's cases address registration issues more specifically. [ Note 1.]

Decisions of the Board, the Director, and the Court of Appeals for the Federal Circuit appear in the United States Patents Quarterly ("USPQ"), a publication of The Bureau of National Affairs, Inc., ("BNA"), and may also be found in Reed Elsevier, Inc.’s LEXIS/NEXIS legal database, and in the Intellectual Property Library of ThomsonReuters Corp.’s WESTLAW database. Board decisions are also available on public electronic databases at the Board home page of the USPTO website at https://e-foia.uspto.gov/Foia/TTABReadingRoom.jsp  (final decisions), and at TTABVUE http://ttabvue.uspto.gov/ttabvue/  (docket information and full images of Board files).

Decisions that are designated by the Board "citable as precedent," "precedent of the Board," "Precedent of the TTAB," or "for publication in full" are citable as precedent. Decisions which are not so designated, or which are designated for publication only in digest form, are not binding on the Board, but may be cited for whatever persuasive weight to which they may be entitled. Decisions of other tribunals may be cited to the extent allowed and for the purposes permitted by the tribunal that issued the decision. "Citation to all TTAB decisions should be to the United States Patent Quarterly, if the decision appears therein; otherwise, to a USPTO public electronic database [as listed above]. If a non-precedential decision does not appear in the United States Patents Quarterly or the USPTO’s public electronic databases, the citing party should append a copy of the decision to the motion or brief in which the decision is cited." [ Note 2.]

Any cited decision of the Board or another court, which appears in the USPQ, should include a citation to the USPQ, in addition to any citation to an official reporter (if any), such as the Federal Reporter or Federal Supplement. [ Note 3.] See TBMP § 801.03 (inter partes briefs); TBMP § 1203.02(f)(ex parte briefs).

NOTES:

 1.   Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501, 1506 n.2 (TTAB 2008). See also 15 U.S.C. § 1071(a); 28 U.S.C. § 1295(a)(4)(B).

 2.   Citation of Opinions to the Trademark Trial and Appeal Board, O.G. Notice (Jan. 23, 2007). The final decisions of the Board are posted athttps://e-foia.uspto.gov/Foia/TTABReadingRoom  and files of Board proceedings are available at http://ttabvue.uspto.gov/ttabvue/. See also In re Fiat Group. Marketing & Corporate Communications S.p.A., 109 USPQ2d 1593, 1596 n.6 (TTAB 2014) (non-precedential decisions are not binding on the Board, but may be cited to and considered for whatever persuasive value they may hold); In re the Procter & Gamble Co., 105 USPQ2d 1119, 1121 (TTAB 2012) (no prohibition against citing to non-precedential opinions, but the Board does not encourage this practice); In re Luxuria s.r.o., 100 USPQ2d 1146, 1151 n.7 (TTAB 2011) (parties may cite to non-precedential decisions, but they are not binding on the Board); Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1875 n.5 (TTAB 2011) (although parties may cite to non-precedential cases, the Board does not encourage the practice).

 3.   See Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1830 (TTAB 2012) (include citation to the United States Patent Quarterly (USPQ) if the case appeared in that reporter); Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1736 n.11 (TTAB 2012) (same); In re Carlson, 91 USPQ2d 1198, 1199 (TTAB 2009) (same).