1203.02 Time for Filing Brief
1203.02(a) Applicant’s Main Brief
37 C.F.R. § 2.142(b)(1) The brief of appellant shall be filed within sixty days from the date of appeal. If the brief is not filed within the time allowed, the appeal may be dismissed. The examining attorney shall, within sixty days after the brief of appellant is sent to the examining attorney, file with the Trademark Trial and Appeal Board a written brief answering the brief of appellant and shall email or mail a copy of the brief to the appellant. The appellant may file a reply brief within twenty days from the date of mailing of the brief of the examining attorney.
An applicant’s main brief in an ex parte appeal to the Board must be filed within sixty days from the date of appeal, or within an extension of time for that purpose. The time for filing the brief is set by rule; filing the notice of appeal through ESTTA automatically generates an acknowledgment; however, in the rare circumstances a notice of appeal is filed in paper with the required written explanation, although the Board attempts to send the applicant an acknowledgement of the receipt of the notice of appeal which indicates the date the brief is due, the failure to receive such acknowledgement does not affect the deadline for such filing. [ Note 1.] If no brief is filed, the appeal will be dismissed. [ Note 2.] If the brief is filed late, the applicant will be allowed an opportunity to submit an explanation for the late filing; in the absence of an adequate explanation, the appeal will be dismissed. The determination of whether to accept the brief will depend on the circumstances, including the length of time after the due date that the brief is filed, and the reason for the delay.
If the appeal is dismissed for failure to file a timely brief and no timely request to vacate the dismissal has been filed, the applicant’s recourse is to file a petition to the Director under the provisions of 37 C.F.R. § 2.146(a)(3). Because such a petition invokes the supervisory authority of the Director, it is determined under the clear error/abuse of discretion standard, that is, whether the Board has committed clear error or abused its discretion in its determination not to accept the late-filed brief. [ Note 3.] The applicant should not file a petition to the Director until it has first filed with the Board a request/motion to accept the late-filed brief, and that request/motion has been denied.
Further, a petition to revive is not available when an applicant has failed to file an appeal brief or has filed its appeal brief late. The petition to revive procedure provided in 37 C.F.R. § 2.66(a) applies only to situations in which the applicant did not timely respond to an Office action or notice of allowance. The filing of an appeal brief is not a response to an Office action. Thus, the "unintentional delay" standard of 37 C.F.R. § 2.66(a) does not apply to the determination of whether a late-filed brief will be accepted. [ Note 4.]
In the rare circumstances a notice of appeal (accompanied by the required fee) is filed in paper with the required written explanation and with a certificate of mailing by first-class mail pursuant to 37 C.F.R. § 2.197, or the Priority Mail Express® procedure described in 37 C.F.R. § 2.198, the date of mailing specified in the certificate will be used for determining the timeliness of the notice of appeal. However, the actual date of receipt of the notice of appeal in the Office will be used for all other purposes, including the running of the time for filing the applicant’s main brief. [ Note 5.] TBMP § 111.01 and TBMP § 111.02.
The following applies to situations in which an applicant files a notice of appeal when it has also filed a timely request for reconsideration of a final action, second refusal on the same ground(s), or repeated requirement, and the examining attorney has not yet considered the request for reconsideration when the appeal is filed, or when the applicant files a request for reconsideration along with the notice of appeal. When the applicant files its notice of appeal through ESTTA, it should check the box that indicates that a request for reconsideration is also being filed. ESTTA will electronically generate the order acknowledging receipt of the appeal and request, suspend further proceedings (including the applicant’s time for filing its appeal brief) with respect to the appeal, and remanding the application to the examining attorney for consideration of the request. The request for reconsideration should be filed through TEAS. In the rare circumstances the notice of appeal is a paper submission, the notice of appeal should indicate, in the body of the appeal, that there is a pending request for reconsideration; if a request for reconsideration is being filed contemporaneously with the paper submission of the notice of appeal, it should accompany the notice of appeal. When the written explanation for paper filing is acceptable, proceedings in the appeal will automatically be suspended when a request for reconsideration is pending; the applicant should not file its appeal brief within sixty days of the filing of the notice of appeal, as provided by 37 C.F.R. § 2.142(b)(1), even if the Board has not issued its order suspending proceedings prior to the date the appeal brief would otherwise be due. Nor does the applicant need to verify with the Board that the due date for its brief will be changed if necessary. [ Note 6.] See TBMP § 1204.
If, upon the examining attorney’s consideration of the request for reconsideration, all refusals and requirements are not withdrawn, and a new final refusal or action maintaining the finality of a prior Office action is issued (either in the examining attorney’s action on the request for reconsideration, or in a subsequent action), the six-month response clause should be omitted; the application should be returned to the Board; proceedings with respect to the appeal if instituted will be resumed; and the applicant will be allowed time in which to file its appeal brief. See TBMP § 1205 for the procedure when the request for reconsideration contains an amendment. If the examining attorney approves the application for publication (or for registration, in the case of a Supplemental Register application), the appeal will be moot. [ Note 7.]
NOTES:
1. In re Live Earth Products Inc., 49 USPQ2d 1063, 1064 (TTAB 1998). See also 37 C.F.R. § 2.126(b); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69966 (Oct. 7, 2016) ("In these situations, parties should consider any such paper filing accepted unless the Board indicates otherwise. … The Board will review the explanation accompanying the paper filing in its consideration of the filing, and submissions that do not meet the technical problems or extraordinary circumstances showing will not be considered.").
3. See TMEP § 1706.
4. See TMEP § 1714.01(f)(i)(E).
5. See 37 C.F.R. § 2.197; 37 C.F.R. § 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.
6. See In re Live Earth Products Inc., 49 USPQ2d 1063, 1064 (TTAB 1998).
7. See TMEP § 715.04.
1203.02(b) Trademark Examining Attorney’s Brief
When the applicant’s main appeal brief has been received by the Board, the Board sends the application to the examining attorney for preparation of a brief. Within 60 days after the date of the Board’s written order forwarding the application to the examining attorney, or within an extension of time for the purpose, the examining attorney must file an appeal brief answering the applicant’s main brief. [ Note 1.] The examining attorney must also send a copy of his or her brief to the applicant. [ Note 2.] If the examining attorney’s brief is late-filed, the Board may exclude it in the absence of an adequate explanation for the late filing. [ Note 3.] An examining attorney’s failure to file a brief will not result in the application being approved; the Board will simply decide the appeal without the benefit of the brief.
If the examining attorney, having received the application for preparation of his or her appeal brief, is persuaded by the applicant’s appeal brief that the applicant is entitled to the registration sought, the examining attorney may approve the application for publication (or for registration, in the case of a Supplemental Register application), and the appeal will be moot. The examining attorney should notify the applicant and Board by telephone or email. [ Note 4.] If there is more than one ground of refusal or requirement and the examining attorney determines that one ground or requirement is no longer tenable, the examining attorney should state in his or her appeal brief that the refusal or requirement has been withdrawn. [ Note 5.] The appeal will then go forward on the remaining ground(s)/requirement(s). Please Note: Even if the examining attorney does not specifically state in the appeal brief that the refusal or requirement has been withdrawn, the Board may treat the refusal/requirement to have been withdrawn if no mention is made of it in the brief. See TBMP § 1203.02(g).
On the other hand, the examining attorney, having received the application for preparation of his or her appeal brief, may decide that registration should be refused on an additional ground, or that a new requirement should be made, or that the application should be suspended. In that event, the examining attorney, during the time for and instead of preparing an appeal brief, should send to the Board, with a copy to the applicant, a written request that the application be remanded to him or her for further examination. For information concerning requests for remand, see TBMP § 1209.02 and TMEP § 1504.05. [ Note 6.] However, an examining attorney need not request remand in order to make a new argument or change the rationale for a refusal or requirement, as that is not considered to be a new refusal or requirement. [ Note 7.] If a request for remand is denied, the Board will reset the examining attorney’s time in which to file an appeal brief. [ Note 8.] However, if the examining attorney submits a request for remand in order to make a new refusal or requirement, it is the general practice of the Board to grant such a request. See TBMP § 1209.02. If the request is granted, the Board will suspend proceedings with respect to the appeal, and remand the application to the examining attorney for further examination in accordance with the request for remand. If, during the course of the further examination, the application is ultimately approved for publication (or for registration, in the case of a Supplemental Register application), the appeal will be moot. If the examining attorney refuses registration on a new ground, or makes a new requirement, and the new refusal or requirement is ultimately made final, the new final action should not include a six-month response clause; the application should be returned to the Board; and the Board will resume proceedings with respect to the appeal and allow the applicant 60 days in which to submit a supplemental appeal brief directed to the new issue or issues, following which the application will be returned to the examining attorney for preparation of his or her appeal brief.
NOTES:
1. 37 C.F.R. § 2.142(b)(1); In re Wells Fargo & Co., 231 USPQ 106, 107 n.2 (TTAB 1986); In re Tennessee Walking Horse Breeders’ and Exhibitors’ Association, 223 USPQ 188 n.3 (TTAB 1984); TMEP § 1501.02. See also In re Miller Brewing Co., 226 USPQ 666, 667 n.4 (TTAB 1985).
2. 37 C.F.R. § 2.142(b)(1). See In re De Luxe N.V., 990 F.2d 607, 26 USPQ2d 1475, 1476 n.3 (Fed. Cir. 1993).
3. See In re Tennessee Walking Horse Breeders’ and Exhibitors’ Association, 223 USPQ 188, 188 n.3 (TTAB 1984).
4. See TMEP § 1501.03.
5. See TMEP § 1501.03.
6. 37 C.F.R. § 2.142(f)(6); TMEP § 1501.02. Cf. In re Dietrich, 91 USPQ2d 1622, 1624 (TTAB 2009) (to the extent examining attorney attempted to reject Trademark Act § 2(f) claim for the first time in appeal brief, rejection untimely and not considered); In re Moore Business Forms Inc., 24 USPQ2d 1638, 1638 n.2 (TTAB 1992) (ground for refusal first raised in examining attorney’s appeal brief given no consideration).
7. In re Paper Doll Promotions Inc., 84 USPQ2d 1660, 1665 (TTAB 2007). Cf. In re Future Ads LLC, 103 USPQ2d 1571, 1573 (TTAB 2012) (while examining attorney need not limit arguments made in appeal brief to those raised in Office actions, using the evidence for a totally different purpose not hinted at in the Office actions was unfair based on circumstances of case).
8. See In re Miller Brewing Co., 226 USPQ 666, 667 n.4 (TTAB 1985).
1203.02(c) Applicant’s Reply Brief
Within 20 days from the issue date of the examining attorney’s appeal brief, or within an extension of time for the purpose, the applicant may, if it so desires, file a reply brief that shall not exceed ten pages in length in its entirety. [ Note 1.] However, the filing of a reply brief is not mandatory.
The reply brief should not include a proposed amendment, a request for remand, or a request for an oral hearing, within the body of the brief. [ Note 2.] Such requests should be filed by separately captioned submissions. See TBMP § 1205.01, TBMP § 1207.02 and TBMP § 1216.
If the applicant files a reply brief, the Board will notify the examining attorney. If the examining attorney, having read the applicant’s reply brief, is persuaded thereby that the applicant is entitled to the registration sought, the examining attorney may approve the application for publication (or for registration, in the case of a Supplemental Register application), and the appeal will be moot. The examining attorney should notify the applicant and Board by telephone or email. [ Note 3.]
There is no provision in the rules for the filing by the examining attorney of a written response to the applicant’s reply brief. However, if the applicant requests an oral hearing, the examining attorney may respond orally, at the oral hearing, to arguments raised in the applicant’s reply brief. [ Note 4.] Unless instructed or ordered by the Board, supplemental briefs filed after an oral hearing will not be considered. [ Note 5.] For further information regarding oral hearings, see TBMP § 1216.
NOTES:
1. See 37 C.F.R. § 2.142(b)(1), 37 C.F.R. § 2.142(b)(2); In re Gena Laboratories, Inc., 230 USPQ 382, 383 n.4 (TTAB 1985); In re Randall & Hustedt, 226 USPQ 1031, 1033 n.2 (TTAB 1985). Cf. In re Gale Hayman Inc., 15 USPQ2d 1478 n.3 (TTAB 1990). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69968 (Oct. 7, 2016) ("The Office is amending § 2.142(b)(2) to … add [ ] that a reply brief from an appellant shall not exceed ten pages in length and that no further briefs are permitted unless authorized by the Board.").
2. See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1859 (TTAB 2014) ("To the extent applicant seeks to request remand for such consideration by the examining attorney, burying this request in its reply brief is not sufficient for the Board to treat it as a request for remand."). TMEP § 1501.03.
3. See TMEP § 1501.03.
4. See TMEP § 1501.02(c). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69960, 69968 (Oct. 7, 2016) ("The Office is amending § 2.142(b)(2) to … add [ ] that a reply brief from an appellant shall not exceed ten pages in length and that no further briefs are permitted unless authorized by the Board.").
5. In re Well Living Lab Inc., 122 USPQ2d 1777, 1778 n.3 (TTAB 2017) (Board refused to consider unauthorized supplemental brief filed after oral hearing), on appeal, No. 17-2392 (Fed. Cir. August 3, 2017).
1203.02(d) Extension of Time for Filing Brief
An extension of time for filing an appeal brief in an ex parte appeal to the Board may be granted by the Board upon written request showing good cause for the requested extension. [ Note 1.] The determination of good cause will be based upon all relevant circumstances, including the length of time of any previously granted extensions and the reason(s) for the requested extension(s). Thus, a reason such as the press of other business, which may be sufficient to show good cause for a first extension of thirty days, may not be sufficient for a second extension of time. Depending on the totality of the circumstances, good cause has been found when there has been an appointment of a new attorney, illness, the need to get instructions from a foreign applicant, and attempting to negotiate a consent agreement. If a request is found not to be sufficient to warrant an extension, the Board may allow applicant a limited period of time, such as ten days, in which to file the appeal brief, or may grant the requested extension, but advise that no further extensions will be granted absent a showing of extraordinary circumstances.
NOTES:
1. See In re Miller Brewing Co., 226 USPQ 666, 667 n.4 (TTAB 1985). See also In re Tennessee Walking Horse Breeders’ and Exhibitors’ Association, 223 USPQ 188, 188 n.3 (TTAB 1984).
1203.02(e) Material Submitted with Briefs
The record in the application should be complete prior to the filing of an appeal. [ Note 1.] See TBMP § 1207.01. It is not necessary to attach as exhibits to a brief evidence that is already in the application because the appeal brief is associated with the application. Such evidence should not, as a matter of course, be resubmitted as exhibits to the brief. See TBMP § 1203.01.
Exhibits attached to a brief that were not made of record during examination are untimely, and generally will not be considered. [ Note 2.] See TBMP § 1207.01. However, if the examining attorney, in his or her brief, discusses the exhibits attached to the applicant’s brief without objecting to them, or if the applicant discusses, in its reply brief, exhibits attached to the examining attorney’s brief without objection, they will be deemed to have been stipulated into the record and will be considered. See TBMP § 1207.03.
Evidentiary references made in briefs but not supported by timely submissions may not be considered. [ Note 3.]
NOTES:
2. See In re Minerva Associates, Inc., 125 USPQ2d 1634, 1636 n.9 (TTAB 2018) (applicant’s copy of specimen filed in its co-pending application attached to appeal brief not considered); In re Jimmy Moore LLC, 119 USPQ2d 1764, 1767 (TTAB 2016) (copy of patent excerpt submitted with appeal brief not considered); In re Fiat Group Marketing & Corporate Communications S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014) (examining attorney’s objection to applicant’s submission of registrations with appeal brief sustained); In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013) (copies of documents pertaining to district court litigation submitted with applicant’s appeal brief not considered); In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012) (exhibits attached to applicant’s supplemental brief not considered; noted that evidence could have been submitted during the period of further examination after remand); In re City of Houston, 101 USPQ2d 1534, 1536-37 (TTAB 2012) (copies of third-party registrations submitted for first time with reply brief are untimely and will not be considered, but list of such registrations submitted during examination will be considered for whatever limited probative value it has), aff’d, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013); In re District of Columbia, 101 USPQ2d 1588, 1591-92 (TTAB 2012) (third-party registrations submitted for first time with appeal brief are not considered), aff’d sub nom. In re City of Houston, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013); In re Luxuria s.r.o., 100 USPQ2d 1146, 1147-48 (TTAB 2011) (materials submitted with reply brief, after two requests for remand were denied, were not of record and, because reply brief discussed materials at length, reply brief also not considered); In re Brouwerij Bosteels, 96 USPQ2d 1414 (TTAB 2010) (exhibits attached to applicant’s supplemental reply brief not considered); In re HerbalScience Group LLC, 96 USPQ2d 1321, 1322 (TTAB 2010); In re Quantum Foods Inc., 94 USPQ2d 1375, 1377 n.2 (TTAB 2010) (page from applicant’s website submitted with appeal brief not considered); In re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009) (third-party registrations and excerpt from registrant’s website submitted with supplemental appeal brief not considered); In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1334 (TTAB 2009) (submissions with reply brief not considered); In re MC MC S.r.l., 88 USPQ2d 1378, 1379 n.3 (TTAB 2008) (previously unsubmitted materials attached to applicant’s brief not considered); In re Tea and Sympathy Inc., 88 USPQ2d 1062, 1063 n.2 (TTAB 2008) (exhibits submitted for first time with applicant’s appeal brief and declaration attached to reply brief not considered); In re Fiesta Palms LLC, 85 USPQ2d 1360, 1363 n.5 (TTAB 2007) (entry from online encyclopedia submitted for first time with reply brief untimely and not of record); In re Genitope Corp., 78 USPQ2d 1819 n.3 (TTAB 2006) (materials from applicant’s website submitted for first time with examining attorney’s brief not considered); In re King Koil Licensing Co., 79 USPQ2d 1048, 1050 (TTAB 2006) (declaration by applicant’s president submitted for first time with applicant’s appeal brief not considered); In re Promo Ink, 78 USPQ 1301, 1303-04 (TTAB 2006); In re Fitch IBCA, Inc., 64 USPQ2d 1058, 1059 n.2 (TTAB 2002); In re Couture, 60 USPQ2d 1317, 1319 n.3 (TTAB 1999); In re Zanova Inc., 59 USPQ2d 1300, 1302 (TTAB 2001) ("By attempting to introduce evidence with its reply brief, applicant has effectively shielded this material from review and response by the Examining Attorney"; material submitted with reply brief not considered); In re Styleclick.com Inc., 57 USPQ2d 1445, 1446 n.2 (TTAB 2000) (although applicant had properly submitted copies of third-party registrations, additional registrations listed in applicant’s brief, which were not commented on by examining attorney in her brief, not considered); In re Polo International Inc., 51 USPQ2d 1061,1062 n.2 (TTAB 1999) (typed list of third-party registrations submitted with applicant’s brief which were objected to by examining attorney, not considered); In re U.S. Cargo Inc., 49 USPQ2d 1702, 1703 n.2 (TTAB 1998) (third-party registrations submitted with reply brief not considered); In re North American Free Trade Association, 43 USPQ2d 1282, 1287 n.9 (TTAB 1997) (letter submitted with applicant’s brief was not made of record during prosecution, and therefore not considered); In re Caterpillar Inc., 43 USPQ2d 1335, 1337 (TTAB 1997) (copy of unpublished case submitted with applicant’s reply brief not considered).
Cf. In re Osterberg, 83 USPQ2d 1220, 1221 n.2 (TTAB 2007) ("clean" version, with nonmaterial edits, of declaration submitted during examination that was attached as exhibit to appeal brief considered because the two versions of the declaration substantially the same); In re Consolidated Specialty Restaurants Inc., 71 USPQ2d 1921, 1922 n.1 (TTAB 2004) (although applicant submitted new evidence with its brief, subsequently examining attorney was granted remand of application, and therefore examining attorney had opportunity to consider this evidence and respond thereto; exhibit was considered of record).
3. See In re Procter & Gamble Co., 105 USPQ2d 1119, 1120 (TTAB 2012) (applicant withdrew references in brief to third-party registrations it inadvertently failed to attach to responses during examination; applicant’s footnote reference to a journal not considered because it was being offered for its evidentiary value on evidence not properly introduced).
1203.02(f) Cases Which May Be Cited
Prior to January 23, 2007, the Board’s policy had been that decisions which were not designated as "citable as precedent" or "for publication in full" were not citable authority. [ Note 1.] Since January 23, 2007, the Board has permitted citation to any Board decision, although a decision designated as not precedential is not binding upon the Board. [ Note 2.] SeeTBMP § 101.03.
When cases are cited in a brief, the case citation should include a citation to the USPQ if the case has appeared in that publication. [ Note 3.] See TBMP § 101.03 andTBMP § 801.03.
NOTES:
1. In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1897 n.2 (TTAB 2001); In re Polo International Inc., 51 USPQ2d 1061, 1063 n.3 (TTAB 1999); In re Caterpillar Inc., 43 USPQ2d 1335, 1337 (TTAB 1997); General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1275 n.9 (TTAB 1992).
2. Citation of Opinions to the Trademark Trial and Appeal Board, O.G. Notice (Jan. 23, 2007). See In re Morrison & Foester LLP, 110 USPQ2d 1423, 1427, n.6 (TTAB 2014) ("Although parties may cite to non-precedential decisions, the Board does not encourage the practice.); In re the Procter & Gamble Co., 105 USPQ2d 1119, 1120-21 (TTAB 2012) (citation to non-precedential opinions permitted but not encouraged; non-precedential decisions not binding on the Board).
3. In re Carlson, 91 USPQ2d 1198, 1199 n.2 (TTAB 2009).
1203.02(g) Waiver of Claim or Requirement in Brief
If an applicant, in its appeal brief, does not assert an argument made during prosecution, it may be deemed waived by the Board. [ Note 1.] Similarly, if an applicant, in its appeal brief, complies with a requirement and the examining attorney does not discuss the requirement, or if the examining attorney does not discuss a ground for refusal in his or her brief, the requirement or refusal may be deemed withdrawn. See TBMP § 1203.02(b). [ Note 2.] However, if an applicant seeks to comply with a requirement, the better practice is to request remand rather than simply offering the amendment as part of its brief. See TBMP § 1205.
NOTES:
1. See In re Gibson Guitar Corp., 61 USPQ2d 1948, 1950 n.2 (TTAB 2001) (applicant did not, in its appeal brief, pursue claim of inherent distinctiveness, and therefore the claim was not considered by Board). See also In re Harley, 119 USPQ2d 1755, 1758 (TTAB 2016) (Applicants’ failure to address refusals is a basis for affirming the examining attorney’s refusal on all grounds); In re E5 LLC, 103 USPQ2d 1578, 1579 n.1 (TTAB 2012) (during prosecution, applicant argued that mark was unitary but did not maintain argument in its appeal brief). Cf. In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1852 n.31 (TTAB 2012) (applicant mentioned claim of acquired distinctiveness in original appeal brief but not again in supplemental appeal brief; because the examining attorney addressed the point in supplemental brief, Board considered the claim).
2. See In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1512 n.2 (TTAB 2001) (requirement for translation deemed moot because applicant, in its appeal brief, offered translation, and examining attorney, in her appeal brief, did not address issue).