1301.01    Readiness of Case for Appeal

37 C.F.R § 2.93(c)  Action after response. After response by the registrant, the Office will review the registrant’s evidence of use or showing of applicable excusable nonuse, and/or arguments, and determine compliance with any requirement.

  • (1) Final Office action. If the registrant’s timely response fails to rebut the prima facie case of nonuse or fully comply with all outstanding requirements, a final Office action will issue that addresses the evidence, includes the examiner’s decision, and maintains any outstanding requirement. After issuance of a final Office action, the registrant may respond by filing within three months from the issue date of the final Office action:
    • (i) A request for reconsideration of the final Office action that seeks to further address the issue of use of the mark in commerce and/or comply with any outstanding requirement maintained in the final action; or
    • (ii) An appeal to the Trademark Trial and Appeal Board under § 2.141.
  • (2) Time for filing a request for reconsideration or petition to the Director.
    • (i) A request for reconsideration must be filed prior to the expiration of time provided for an appeal in § 2.142(a)(2). Filing a request for reconsideration does not stay or extend the time for filing an appeal or a petition under paragraph (c)(2)(ii) of this section.
    • (ii) Prior to the expiration of time for filing an appeal to the Trademark Trial and Appeal Board under § 2.142(a)(2), a registrant may file a petition to the Director under § 2.146 for relief from any outstanding requirement under §§ 2.11, 2.23, and 2.189 made final. If the petition is denied, the registrant will have 3 months from the date of issuance of the final action that contained the final requirement, or 30 days from the date of the decision on the petition, whichever date is later, to comply with the requirement. A requirement that is the subject of a petition decided by the Director may not subsequently be the subject of an appeal to the Trademark Trial and Appeal Board.

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37 C.F.R § 2.141 Ex parte appeals

  • (b) Appeal from expungement or reexamination proceeding. After issuance of a final Office action in an expungement or reexamination proceeding under § 2.93, a registrant may appeal to the Trademark Trial and Appeal Board, upon payment of the prescribed fee for each class in the registration for which the appeal is taken, within the time provided in § 2.142(a)(2).

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

  • (b) Questions of substance arising during … expungement or reexamination of registrations, including, but not limited to, questions arising under sections 2, 3, 4, 5, 6, 16A, 16B, and 23 of the Act of 1946, are not appropriate subject matter for petitions to the Director.
  • (c)
    • (1) Questions of substance arising during … expungement or reexamination of registrations, including, but not limited to, questions arising under sections 2, 3, 4, 5, 6, 16A, 16B, and 23 of the Act of 1946, are not appropriate subject matter for petitions to the Director.
    • (2) A petition requesting reinstatement of a registration cancelled in whole or in part for failure to timely respond to an Office action issued in an expungement and/or reexamination proceeding must include a response to the Office action, signed in accordance with § 2.193, or an appeal.

If a registrant in an expungement or reexamination proceeding timely responds to the Office action but fails to rebut the prima facie case of nonuse or fully comply with all outstanding requirements, a final Office action will issue that addresses the evidence, includes the examiner’s decision, and maintains any outstanding requirement. [ Note 1.] After the final Office action issues, the registrant’s response options are limited to an appeal to the Board, compliance with any requirement, or a petition to the Director if a petition is permitted by 37 C.F.R § 2.93(c)(2)(ii). [ Note 2.] A registrant may file a request for reconsideration, but the submission of such a request does not stay or extend the time for filing a notice of appeal or petition. [ Note 3.]

Any determination by the Director whether or not to institute an expungement or reexamination proceeding is final and non-reviewable, and therefore cannot be the subject of an appeal. [ Note 4.]

NOTES:

 1.   See 37 C.F.R § 2.93(c)(1).

 2.   See 37 C.F.R § 2.93(c).

 3.   37 C.F.R § 2.93(c).

 4.   15 U.S.C § 1066A(c)(3).