1203.01    Form of Brief

37 C.F.R. § 2.126  Form of submissions to the Trademark Trial and Appeal Board.

  • (a) Submissions must be made to the Trademark Trial and Appeal Board via ESTTA
    • (1) Text in an electronic submission must be filed in at least 11-point type and double-spaced.
    • (2) Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission and must be clear and legible.
  • (b) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, submissions may be filed in paper form. All submissions in paper form, except the extensions of time to file a notice of opposition, the notice of opposition, the petition to cancel, or answers thereto (see §§ 2.101(b)(2), 2.102(a)(2), 2.106(b)(1), 2.111(c)(2), and 2.114(b)(1)), must include a written explanation of such technical problems or extraordinary circumstances. Paper submissions that do not meet the showing required under this paragraph (b) will not be considered. A paper submission, including exhibits and depositions, must meet the following requirements:
    • (1) A paper submission must be printed in at least 11-point type and double-spaced, with text on one side only of each sheet;
    • (2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs or other such devices extending beyond the edges of the paper;
    • (3) If a paper submission contains dividers, the dividers must not have any extruding tabs or other devices, and must be on the same size and weight paper as the submission;
    • (4) A paper submission must not be stapled or bound;
    • (5) All pages of a paper submission must be numbered and exhibits shall be identified in the manner prescribed in § 2.123(g)(2);
    • (6) Exhibits pertaining to a paper submission must be filed on paper and comply with the requirements for a paper submission.
  • (c) To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to § 2.125(f) must be submitted using the "Confidential" selection available in ESTTA or, where appropriate, under a separate paper cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission for public viewing with the confidential portions redacted must be submitted concurrently.

37 C.F.R. § 2.142(b)(2)  Briefs must meet the requirements prescribed in § 2.126, except examining attorney submissions need not be filed through ESTTA. Without prior leave of the Trademark Trial and Appeal Board, a brief shall not exceed twenty-five pages in length in its entirety, including the table of contents, index of cases, description of the record, statement of the issues, recitation of the facts, argument, and summary. A reply brief from the appellant, if any, shall not exceed ten pages in length in its entirety. Unless authorized by the Board, no further briefs are permitted.

37 C.F.R. § 2.142(b)(3)  Citation to evidence in briefs should be to the documents in the electronic record for the subject application or registration by date, the name of the paper under which the evidence was submitted, and the page number in the electronic record.

A brief filed in an ex parte appeal to the Board must conform to the requirements of 37 C.F.R. § 2.142(b)(2)  as well as the general requirements for submissions to the Board specified in 37 C.F.R. § 2.126, including that the brief be double spaced and in at least 11-point type. [ Note 1.]

Only one copy of the brief should be submitted. The twenty-five page limit for an appeal brief and the ten page limit for a reply brief do not refer to any exhibits attached to the briefs. However, appendices or exhibits to a brief may not be used to avoid the page limitation. [ Note 2.] Material that was not previously made of record should not be submitted with the appeal brief. See TBMP § 1203.02(e) and TBMP § 1207.01. Also, the appeal brief is associated with the application file, so papers that are already in the application should not, as a matter of course, be resubmitted as exhibits to the brief. [ Note 3.] Most appeal briefs are far less than the twenty-five pages allowed by the rule and, given the limited issues and record in an appeal, the Board will rarely grant a motion for leave to exceed the twenty-five page limit or ten page limit in the case of a reply brief. [ Note 4.] If an applicant files a brief that exceeds the twenty-five page limit or a reply brief that exceeds the ten-page limit without prior leave of the Board, the brief will not be considered. If the deadline for filing a brief has not passed, applicant may file a conforming substitute brief together with a motion to accept its substitute brief. Depending on the circumstances of when the brief’s nonconformity comes to the Board’s attention, the Board may sua sponte issue an order allowing applicant time to file a conforming brief. The failure to file a conforming appeal brief will not be treated as a failure to file a brief which would result in the dismissal of the appeal. [ Note 5.] In such a situation, the examining attorney will still file a brief, and the applicant may file a reply brief, although the reply brief must be limited to arguments that reply to the arguments made in the examining attorney’s brief; it may not be used as a substitute for a main brief, and any arguments that are not properly the subject of a reply brief will not be considered.

The Board has the discretion to permit supplemental briefing when appropriate. [ Note 6.] Absent a Board order, however, neither an applicant nor an examining attorney may file further briefs after the applicant files its reply. [ Note 7.] Nor may either do so after the time for applicant to have filed its reply has passed and applicant has not filed a reply. See TBMP § 1203.02(c).

The brief should indicate that it is an appeal brief, and include information identifying the application in which it is filed, namely, the applicant’s name, the serial number and filing date of the application, and the mark sought to be registered. [ Note 8.] When referring to the record, the applicant and examining attorney should cite to the prosecution history for the application, currently the TSDR database. Citation format should be by date, name of the paper under which the evidence was submitted and the page number in the electronic record, for example: November 4, 2013 Office Action, TSDR p. 2. The Examining Attorney and applicant may cite to the TSDR record in .pdf format, but must indicate that they are doing so in their brief. [ Note 9.] Where appropriate, reference to the TTABVUE entry and page number, e.g., 1 TTABVUE 2, should also be used. [ Note 10.] Case citation should include a citation to The United States Patent Quarterly (USPQ) if the case has appeared in that publication. [ Note 11.] See TBMP § 101.03 and TBMP § 1203.02(f). The brief need not include the formal requirements, such as a table of contents and description of the record, of a trial brief. [ Note 12.] If such items are included, however, they will count as part of the twenty-five page limit.

If a great deal of evidence has been submitted during the examination/prosecution of the application, in the respective briefs, the applicant and the examining attorney are encouraged to highlight the most probative evidence. [ Note 13.]

The content of the brief should not include a proposed amendment, a request for remand, or a request for an oral hearing. [ Note 14.] Such requests should be filed by separately captioned papers or the Board might not consider them. [ Note 15.] See TBMP § 1205.01, TBMP § 1207.02 and TBMP § 1216.

For further information concerning the form and contents of the examining attorney’s appeal brief, in particular, see TMEP Appendix A.

Briefs must be filed through ESTTA. [ Note 16.] If ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, briefs may be filed in paper form and must include a written explanation of such technical problems or extraordinary circumstances. [ Note 17.]

NOTES:

 1.   In some instances, an examining attorney’s appeal brief may mistakenly appear to exceed the 25-page limitation in TTABVUE, the Board’s online docketing system. See, e.g., In re Sela Products LLC, 107 USPQ2d 1580, 1585 (TTAB 2013) (examining attorney appeal brief complied with page limitation). Cf. In re Cordua Restaurants LP, 110 USPQ2d 1227, 1229 n.2 (TTAB 2014) ("The Board notes that applicant’s appeal brief was single-spaced. Trademark Rule 2.126(b) 37 C.F.R. § 2.126(b) requires all briefs submitted to be double-spaced."), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016). But see In re University of Miami, 123 USPQ2d 1075, 1077 n.2 (TTAB 2017) (Board exercised its discretion to consider applicant’s appeal brief and reply that were not double-spaced because it appeared that they would fall within the applicable page limits had they been double-spaced).

 2.   In re Psygnosis Ltd., 51 USPQ2d 1594, 1596 (TTAB 1999) (applicant’s attempt to submit discussion as an appendix to brief treated by Board as an attempt to circumvent the Board’s order denying waiver of page limitation, and sanctions imposed); Harjo v. Pro-Football Inc., 45 USPQ2d 1789, 1792 (TTAB 1998) (appendices may not be used as a subterfuge to avoid the page limitation).

 3.   In re Information Builders Inc., 2020 USPQ2d 10444, at *2 n.4 (TTAB 2020) (attaching previously submitted evidence to an appeal brief is unnecessary and impedes efficient disposition of the appeal by the Board; direct citation to evidence in the record is strongly preferred), appeal dismissed, No. 20-1979 (Oct. 20, 2020); In re Allegiance Staffing, 115 USPQ2d 1319, 1323 (TTAB 2015) (practice of attaching to appeal brief copies of the same exhibits submitted with responses is discouraged); In re Sela Products LLC, 107 USPQ2d 1580, 1584 (TTAB 2013) ("It is of far more utility to the Board for the applicant and examining attorney to provide citations directly to the record and, when there are a large number of attachments to an Office action or response, to the specific page number where the attachment may be found."); In re City of Houston, 101 USPQ2d 1534, 1536 (TTAB 2012) (no need to attach additional copies to appeal brief of materials already of record; examining attorney’s objections to the duplicative exhibits is overruled because striking the materials already of record would be pointless), aff’d, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013); In re Lorillard Licensing Co., 99 USPQ2d 1312, 1315 (TTAB 2011); In re SL&E Training Stable Inc., 88 USPQ2d 1216, 1220 n.9 (TTAB 2008) (attaching exhibits to brief of material already of record only adds to the bulk of the file, and requires Board to determine whether attachments had been properly made of record); In re Thor Tech Inc., 85 USPQ2d 1474, 1475 n.3 (TTAB 2007) (attaching evidence from record to briefs is duplicative and is unnecessary).

 4.   See In re Psygnosis Ltd., 51 USPQ2d 1594, 1596 (TTAB 1999) (applicant’s request for a waiver in order to include an additional 10 pages denied).

 5.   See In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (Board refused to consider applicant’s 29-page brief).

 6.   See, e.g., In re James S. Fallon, 2020 USPQ2d 11249, at *1 (TTAB 2020) (Board allowed applicant and the examining attorney time to file supplemental briefs on a new refusal when application was remanded for issuance of the new refusal after both had filed appeal briefs on the original refusals); In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1952 (TTAB 2018) (where, after remand, the applicant amended to the Supplemental Register and the examining attorney issued a new refusal, the Board, upon resumption of the appeal, ordered a second set of appeal briefs solely on the new ground for refusal).

7. In re Consumer Protection Firm PLLC, 2021 USPQ2d 238, at *2 n.2 (TTAB 2021) (declining to consider applicant’s supplemental brief because they "are not permitted unless authorized by the Board").

8. Cf. TMEP § 302.02.

9. Cf. In re United Trademark Holdings, Inc., 122 USPQ2d 1796, 1797 n.5 (TTAB 2017) (Board in its opinion cited to the TSDR record in .pdf format).

10. 37 C.F.R. § 2.142(b)(3). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69968 (Oct. 7, 2016) ("The Office is adding new § 2.142(b)(3) to specify that citation to evidence in briefs should be to the documents in the electronic application record by date, the name of the paper under which the evidence was submitted, and the page number in the electronic record. The amendment is intended to facilitate review of record evidence by the applicant, the examining attorney, the Board, and the public.").

11. In re Carlson, 91 USPQ2d 1198, 1199 n.2 (TTAB 2009).

12. Cf. 37 C.F.R. § 2.128(b).

13. See In re Michalko, 110 USPQ2d 1949, 1951-52 (TTAB 2014) ("Because we must determine whether attachments to briefs are properly of record, citation to the attachment requires examination of the attachment and then an attempt to locate the same evidence in the record developed during the prosecution of the application, requiring more time and effort than would have been necessary if citations directly to the prosecution history were provided.") (citing this section)); In re Lorillard Licensing Co., 99 USPQ2d 1312, 1315 (TTAB 2011) (attachment to brief of hundreds of pages of exhibits already of record not helpful; instead it would have been helpful to identify, by date of submission and page number in Office’s TDR database, the material being referenced in the brief); In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1265 (TTAB 2011) (Board would be very critical if examining attorney were to submit an inordinate number of registrations); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010) ("The Board frowns equally upon an applicant or examining attorney submitting hundreds of pages of evidence in the hope that as the Board wades through it we will find something that is probative. When they believe that it is necessary to submit a significant amount of such material, it is incumbent on the applicant and the examining attorney to specify in their briefs those pieces of evidence that they believe are most persuasive of their respective positions, so that the Board can consider that evidence in particular."); In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1585 n.5 (TTAB 2007) ("submitting a large number of third-party registrations without highlighting particularly relevant ones in the appeal brief is not helpful").

14. In re Ox Paperboard, LLC, 2020 USPQ2d 10878, at *2 (TTAB 2020) (amendments embedded in an appeal brief are discouraged because they may be inadvertently overlooked before the filing of the Examining Attorney’s brief; and if noticed, they may needlessly delay the proceeding); 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."); In re Future Ads LLC, 103 USPQ2d 1571, 1573 (TTAB 2012) (claim of acquired distinctiveness raised for first time in reply brief should have been made in a separate request for remand); In re HerbalScience Group LLC, 96 USPQ2d 1321, 1323 (TTAB 2010) (request for remand should be filed by a separate paper, appropriately captioned "Request for Remand," rather than by a request buried within a paragraph in the middle of a brief).

15. In re Ox Paperboard, LLC, 2020 USPQ2d 10878, at *2 (TTAB 2020) ("Embedded amendments in an appeal brief are not prohibited but they are discouraged because they may be inadvertently overlooked by the Board before the Examining Attorney files his or her brief; if noticed, they may needlessly delay the proceeding." Proper procedure is to file separately captioned request for remand with showing of good cause.).

16. See 37 C.F.R. § 2.126(a).

17. See 37 C.F.R. § 2.126(b). See 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.").