1201    Propriety of Appeal

1201.01    Readiness of Case for Appeal

Trademark Act § 20, 15 U.S.C. § 1070  Appeal from examiner to Trademark Trial and Appeal Board. An appeal may be taken to the Trademark Trial and Appeal Board from any final decision of the examiner in charge of the registration of marks … upon the payment of the prescribed fee. The Director may reconsider, and modify or set aside, a decision of the Trademark Trial and Appeal Board under this section.

37 C.F.R. § 2.63(b)  Final refusal or requirement. Upon review of a response, the examining attorney may state that the refusal(s) to register, or the requirement(s), is final.

  • (1) If the examining attorney issues a final action that maintains any substantive refusal(s) to register, the applicant may respond by timely filing:
    • (i) A request for reconsideration under paragraph (b)(3) of this section that seeks to overcome any substantive refusal(s) to register, and comply with any outstanding requirement(s), maintained in the final action; or
    • (ii) An appeal to the Trademark Trial and Appeal Board under §§ 2.141 and 2.142.
  • (2) If the examining attorney issues a final action that contains no substantive refusals to register, but maintains any requirement(s), the applicant may respond by timely filing:
    • (i) A request for reconsideration under paragraph (b)(3) of this section that seeks to comply with any outstanding requirement(s) maintained in the final action;
    • (ii) An appeal of the requirement(s) to the Trademark Trial and Appeal Board under §§ 2.141 and 2.142; or
    • (iii) A petition to the Director under § 2.146 to review the requirement(s), if the subject matter of the requirement(s) is procedural, and therefore appropriate for petition.
  • (3) Prior to the expiration of the time for filing an appeal or a petition, the applicant may file a request for reconsideration of the final action that seeks to overcome any substantive refusal(s) and/or comply with any outstanding requirement(s). Filing a request for reconsideration does not stay or extend the time for filing an appeal or petition. The Office will enter amendments accompanying requests for reconsideration after final action if the amendments comply with the rules of practice in trademark cases and the Act.

37 C.F.R. § 2.141  Ex parte appeals.

  • (a) Appeal from final refusal of application. After final refusal by the trademark examining attorney, an applicant may appeal to the Trademark Trial and Appeal Board, upon payment of the prescribed fee for each class in the application for which an appeal is taken, within the time provided in § 2.142(a)(1). A second refusal on the same grounds may be considered as final by the applicant for the purpose of appeal.

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

  • (b) Questions of substance arising during the ex parte prosecution of applications, … including, but not limited to, questions arising under sections 2, 3, 4, 5, 6, … and 23 of the Act of 1946, are not considered to be appropriate subject matter for petitions to the Director.

On the first or any subsequent reexamination or reconsideration of an application for registration of a trademark, the examining attorney may state that the refusal of the registration or the insistence upon a requirement is final. [ Note 1.] When the examining attorney states that the action is final, the applicant’s response is limited to an appeal to the Board, or to compliance with any requirement, or to a petition to the Director if a petition is permitted by 37 C.F.R. § 2.63(b). [ Note 2.] An applicant may, pursuant to 37 C.F.R. § 2.63(b), file a request for reconsideration, but the submission of such a request does not automatically extend the applicant’s time for filing a notice of appeal. Thus, if an applicant submits a request for reconsideration within the six-month time period from the issue date of the final action, but does not file a notice of appeal within that time period, and if the request for reconsideration fails to persuade the examining attorney, and if the examining attorney does not issue a new final refusal, the application will be deemed abandoned. [ Note 3.]

An applicant may consider a second refusal on the same ground(s), or a repeated requirement, as final for purposes of appeal. [ Note 4.] All grounds and/or requirements must be repeated in order for the second refusal to be considered as final. [ Note 5.]

Thus, an application is ripe for appeal when the examining attorney issues a final action, and an appeal may also be taken from a second refusal on the same ground(s) or from a repeated requirement. [ Note 6.] However, an Office action that repeats one or more grounds for refusal or requirements but also raises a new ground or requirement may not be considered as final for purposes of appeal. See TBMP § 1201.02.

NOTES:

 1.   See Trademark Act § 12(b), 15 U.S.C. § 1062(b); 37 C.F.R. § 2.63(b); TMEP § 714 and TMEP § 714.03.

 2.   See 37 C.F.R. § 2.63(b); TMEP § 715.01. See also Trademark Act § 20, 15 U.S.C. § 1070, and TMEP § 1501 and TMEP § 1702.

 3.   In re GTE Education Services, 34 USPQ2d 1478, 1480 (Comm’r 1994).

 4.   See In re Roberts, 87 USPQ2d 1474, 1478 (TTAB 2008); In re MediaShare Corp., 43 USPQ2d 1304, 1305 n.2 (TTAB 1997); In re Hechinger Investment Co. of Delaware Inc., 24 USPQ2d 1053, 1054 n.2 (TTAB 1991); In re Citibank, N.A., 225 USPQ 612, 613 (TTAB 1985). See also 37 C.F.R. § 2.141; TMEP § 1501.

 5.   In re Page, 51 USPQ2d 1660, 1662 n.2 (TTAB 1999).

 6.   See In re National Association of Veterinary Technicians of America, Inc., 2019 USPQ2d 269108, at *2, n.11 (TTAB 2019) (advisory statements made by the examining attorney are not refusals subject to appeal); In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1401 (TTAB 2018) (second rationale raised only in an advisory manner during prosecution and raised again by the examining attorney’s brief not considered because it was unclear that applicant had "a full opportunity to address the alternative rationale … prior to appeal."); In re Harley, 119 USPQ2d 1755, 1757 (TTAB 2016) (advisory statement made by examining attorney is not a refusal to register and not subject to appeal); In re Roberts, 87 USPQ2d 1474, 1478 (TTAB 2008); In re Hechinger Investment Co. of Delaware Inc., 24 USPQ2d 1053, 1054 n.2 (TTAB 1991); In re Citibank, N.A., 225 USPQ 612, 613 (TTAB 1985). See also Trademark Act § 20, 15 U.S.C. § 1070; 37 C.F.R. § 2.63(b); 37 C.F.R. § 2.141; TMEP § 1501.

1201.02    Premature Final of Refusal of Application

Trademark Act § 12(b), 15 U.S.C. § 1062(b) 

(1) If the applicant is found not entitled to registration, the examiner shall notify the applicant thereof and of the reasons therefor. The applicant may reply or amend the application, which shall then be reexamined. This procedure may be repeated until the examiner finally refuses registration of the mark or the application is abandoned as described in paragraph (2).

(2) After notification under paragraph (1), the applicant shall have a period of 6 months in which to reply or amend the application, or such shorter time that is not less than 60 days, as prescribed by the Director by regulation. If the applicant fails to reply or amend or appeal within the relevant time period, including any extension under paragraph (3), the application shall be deemed to have been abandoned, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, in which case the application may be revived and such time may be extended. The Director may prescribe a fee to accompany any request to revive.

(3) The Director shall provide, by regulation, for extensions of time to respond to the examiner for any time period under paragraph (2) that is less than 6 months. The Director shall allow the applicant to obtain extensions of time to reply or amend aggregating 6 months from the date of notification under paragraph (1) when the applicant so requests. However, the Director may set by regulation the time for individual periods of extension, and prescribe a fee, by regulation, for any extension request. Any request for extension shall be filed on or before the date on which a reply or amendment is due under paragraph (1).

A refusal of registration or an insistence upon a requirement may be made final by the examining attorney only on the first or any subsequent reexamination or reconsideration of an application; a refusal or requirement may not be made final in a first action. [ Note 1.]

An action should not be stated to be final until the applicant has had at least one opportunity to reply to each ground of refusal, and each requirement, asserted by the examining attorney. [ Note 2.] Moreover, a final action should not be issued until all matters but for those that are to be the subject of the final action have been resolved, and a clear issue has been developed between the examining attorney and the applicant with respect to each remaining ground of refusal or requirement. [ Note 3.] As stated in TMEP § 714.03:

No refusal or requirement may be made final, even if it is a repeated refusal or requirement, unless the entire action is made final. Thus, if the examining attorney makes a new refusal or repeated requirement in a second or subsequent action, any previously issued refusals or requirements may not be made final, but instead should be maintained.

However, it is not considered a new refusal if the examining attorney has a different rationale for a previously made refusal or requirement. [ Note 4.]

Examples of new issues that would preclude the issuance of a final action until the applicant has had an opportunity to respond are amendments to the drawing, [ Note 5.] and amendments to the Supplemental Register or to assert acquired distinctiveness. [ Note 6.] However, if the amendment is irrelevant to an outstanding refusal or is merely cumulative, it is not deemed to raise a new issue. [ Note 7.]

If an applicant believes that a refusal to register, or the insistence upon a requirement, has been made final prematurely, the applicant may raise the matter by request to the examining attorney for reconsideration or by contacting the managing attorney or senior attorney in the examining attorney’s law office. If the examining attorney does not withdraw the finality, the applicant may file a petition under 37 C.F.R. § 2.146. [ Note 8.] If, prior to hearing from the examining attorney, managing attorney or senior attorney, or prior to a decision on a petition, an applicant chooses to file a notice of appeal in order to preserve its rights to an appeal, the applicant should advise the Board that it believes that the final action is premature or that there is a pending petition on this issue. If the notice of appeal is filed electronically through ESTTA, the applicant should also file through ESTTA, using the "File Documents in a Board Proceeding" menu, and checking the box for "Other motion/submission," 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 that the notice of appeal is submitted as a paper filing, the applicant should so advise the Board in the notice of appeal. See TBMP § 1202.03 regarding the filing of a notice of appeal.

That a final action is premature is not a ground for appeal to the Board. [ Note 9.] However, if it comes to the attention of the Board, when an appeal has been filed, that the final action was issued prematurely, the Board will issue an order that vacates the institution order for the appeal, refunds the fee, and remands the application to the examining attorney for appropriate action. That action is generally that the finality of the examining attorney’s action is withdrawn and a new nonfinal action may be issued. The Board order will generally indicate that if the examining attorney finds, upon consideration of the applicant’s response to the new nonfinal action, that the application is in condition for publication (or for registration, if the application seeks registration on the Supplemental Register), the examining attorney may simply approve the application for publication (or registration on the Supplemental Register); and that if the examining attorney ultimately issues a new final action, and the applicant wishes to appeal, a new notice of appeal should be filed along with the requisite appeal fee.

NOTES:

 1.   See Trademark Act § 12(b), 15 U.S.C. § 1062(b); 37 C.F.R. § 2.63(b); TMEP § 714.01 and TMEP § 1501.

 2.   TMEP § 714.01. See also In re Abolio y Rubio S.A.C.I. y G., 24 USPQ2d 1152, 1154 (TTAB 1992); In re Pierce Foods Corp., 230 USPQ 307, 308 n.1 (TTAB 1986). See also In re Jimmy Moore LLC, 119 USPQ2d 1764, 1769 (TTAB 2016) (examining attorney "instead of just denying the request for reconsideration" should have "issued a new final Office action") (quoting Petition Decision (Comm’r June 22, 2015)).

 3.   TMEP § 714.03. See also 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).

 4.   See In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478, at *4 n.6 (TTAB 2021) (examining attorney’s "inclusion of supplementary evidence … in support of previously issued refusals was not inappropriate" and did not justify a non-final Office action), appeals docketed, Nos. 21-2114, -2115 (Fed. Cir. Oct. 29, 2021); In re Fantasia Distribution, Inc., 120 USPQ2d 1137, 1144 n.21 (TTAB 2016) (examining attorney’s argument about evidence of copying not waived because, while not specifically addressed in Office action, examining attorney nonetheless wrote that "the evidence and arguments provided are not sufficient to support the claim" of acquired distinctiveness); In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010) (final refusal not premature where examining attorney made new arguments and cited different cases); In re Paper Doll Promotions Inc., 84 USPQ2d 1660, 1665 (TTAB 2007) (Board will consider all arguments on appeal by applicant or examining attorney).

 5.   See In re Abolio y Rubio S.A.C.I. y G., 24 USPQ2d 1152, 1154 (TTAB 1992).

 6.   See In re Audio Book Club Inc., 52 USPQ2d 1042, 1043 n.2 (TTAB 1999). See also TMEP § 714.05 et seq. But see In re Heatcon, Inc., 116 USPQ2d 1366, 1370 (TTAB 2015) (new nonfinal action not necessary when application was refused on Principal Register as functional and application amended to Supplemental Register).

 7.   See In re Heatcon, Inc., 116 USPQ2d 1366, 1370 (TTAB 2015) (amendment to Supplemental Register in response to a refusal of registration on ground of functionality does not raise a new issue); In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1696 (TTAB 1992) (amendment to the Supplemental Register in response to a refusal of registration under Trademark Act § 2(a) does not raise a new issue); In re GTE Education Services, 34 USPQ2d 1478, 1480 (Comm’r 1994) (examining attorney properly determined that no new issue had been raised in request for reconsideration of final refusal based on inadequate specimens, where the substitute specimens submitted with the request were deficient for same reason as the original specimens). See also TMEP § 714.05, TMEP § 714.05(a), TMEP § 714.05(a)(i) and TMEP § 714.05(a)(ii).

 8.   See TMEP § 714.06.

 9.   See TMEP § 714.06.

1201.03    Premature Appeal of Refusal of Application

An application is ripe for appeal when the examining attorney issues a final action, and an appeal may also be taken from a second refusal on the same ground(s) or a repeated requirement; an appeal from a first refusal or requirement is premature. See TBMP § 1201.01. All grounds and/or requirements must be repeated in order for the second refusal to be considered as final. [ Note 1.] If, in response to a final Office action, the applicant files a request for reconsideration that raises a new issue, and does not timely file a notice of appeal, the applicant may not then file an appeal until a final Office action issues with respect to the new issue. [ Note 2.]

The Board has no jurisdiction to entertain a premature appeal. Thus, if an appeal is filed prematurely, the Board, in a written order, will notify the applicant that the appeal was filed prematurely, refund the fee and forward the application to the examining attorney for further appropriate action. The examining attorney will normally treat the premature notice of appeal as an incomplete response under 37 C.F.R. § 2.65(a)  and allow the applicant time to submit a complete response. If the applicant has also filed a request for reconsideration or an appeal brief, the request for reconsideration or brief may be treated as a response. [ Note 3.] In the event that the examining attorney ultimately issues a final action, or a second refusal on the same ground(s) or a repeated requirement, and the applicant wishes to appeal, the applicant should file a new notice of appeal and a new appeal fee.

NOTES:

 1.   In re Page, 51 USPQ2d 1660, 1662 n.2 (TTAB 1999).

 2.   In re Virshup, 42 USPQ2d 1403, 1404 (TTAB 1997) (after final refusal on Principal Register, applicant amended to Supplemental Register; applicant’s appeal of initial refusal on Supplemental Register held premature).

 3.   In re Virshup, 42 USPQ2d 1403, 1404 (TTAB 1997).

1201.04    Compliance With Requirements Not Subject of Appeal

37 C.F.R. § 2.142(c)  All requirements made by the examining attorney and not the subject of appeal shall be complied with prior to the filing of an appeal, and the statement of issues in the brief should note such compliance.

All requirements that have been made by the examining attorney, but which are not to be the subject of appeal, should be complied with prior to the filing of an appeal. If an applicant that files an appeal to the Board fails to comply with such a requirement, the refusal to register may be affirmed by the Board for failure to comply with that requirement, regardless of the disposition made by the Board of the issue or issues that are the subject of appeal. [ Note 1.]

NOTES:

 1.   See 37 C.F.R. § 2.142(c); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69968 (Oct. 7, 2016) ("The Office is amending § 2.142(c) to add that the statement of issues in a brief should note that the applicant has complied with all requirements made by the examining attorney and not the subject of appeal."). See In re Brack, 114 USPQ2d 1338, 1343 (TTAB 2015) (refusal affirmed on requirement to submit signed and verified application, propriety of refusal under Section 2(d) not reached); In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990); In re Cord Crafts Inc., 11 USPQ2d 1157, 1157 n.2 (TTAB 1989); In re Riddle, 225 USPQ 630, 632 (TTAB 1985); In re Big Daddy’s Lounges, Inc., 200 USPQ 371, 373 (TTAB 1978). Cf. In re Walker-Home Petroleum, Inc., 229 USPQ 773, 774 (TTAB 1985), and In re Citibank, N.A., 225 USPQ 612, 613 (TTAB 1985).

1201.05    Appeal of Refusal of Application versus Petition

37 C.F.R. § 2.63(b)  Final refusal or requirement. Upon review of a response, the examining attorney may state that the refusal(s) to register, or the requirement(s), is final.

  • (1) If the examining attorney issues a final action that maintains any substantive refusal(s) to register, the applicant may respond by timely filing:
    • (i) A request for reconsideration under paragraph (b)(3) of this section that seeks to overcome any substantive refusal(s) to register, and comply with any outstanding requirement(s),maintained in the final action; or
    • (ii) An appeal to the Trademark Trial and Appeal Board under §§ 2.141 and 2.142.
  • (2) If the examining attorney issues a final action that contains no substantive refusals to register, but maintains any requirement(s), the applicant may respond by timely filing:
    • (i) A request for reconsideration under paragraph (b)(3) of this section that seeks to comply with any outstanding requirement(s) maintained in the final action;
    • (ii) An appeal of the requirement(s) to the Trademark Trial and Appeal Board under §§ 2.141 and 2.142; or
    • (iii) A petition to the Director under § 2.146 to review the requirement(s), if the subject matter of the requirement(s) is procedural, and therefore appropriate for petition.
  • (3) Prior to the expiration of the time for filing an appeal or a petition, the applicant may file a request for reconsideration of the final action that seeks to overcome any substantive refusal(s) and/or comply with any outstanding requirement(s). Filing a request for reconsideration does not stay or extend the time for filing an appeal or petition. The Office will enter amendments accompanying requests for reconsideration after final action if the amendments comply with the rules of practice in trademark cases and the Act.
  • (4) Filing a request for reconsideration that does not result in the withdrawal of all refusals and requirements, without the filing of a timely appeal or petition, will result in abandonment of the application for incomplete response, pursuant to § 2.65(a).

37 C.F.R. § 2.63(c)  Denial of petition. 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. If a petition to the Director under § 2.146 is denied, the applicant will have the later of the following periods to comply with the requirement:

  • (1) The time remaining in the period for response to the Office action that repeated the requirement or made it final;
  • (2) The time remaining after the filing of a timely request for extension of time to respond or appeal under § 2.62(a)(2); or
  • (3) Thirty days from the date of the decision on the petition.

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

  • (a) Petition may be taken to the Director in a trademark case:
    • (1) From any repeated or final formal requirement of the examiner in the ex parte prosecution of an application if permitted by § 2.63(a) and (b);
    • (2) In any case for which the Act of 1946, Title 35 of the United States Code, or parts 2, 3, 6, and 7 of Title 37 of the Code of Federal Regulations specifies that the matter is to be determined directly or reviewed by the Director;
    • (3) To invoke the supervisory authority of the Director in appropriate circumstances;
    • (4) In any case not specifically defined and provided for by parts 2, 3, 6, and 7 of Title 37 of the Code of Federal Regulations; or
    • (5) In an extraordinary situation, when justice requires and no other party is injured thereby, to request a suspension or waiver of any requirement of the rules not being a requirement of the Act of 1946.
  • (b) Questions of substance arising during the ex parte prosecution of applications, … including, but not limited to, questions arising under sections 2, 3, 4, 5, 6, … and 23 of the Act of 1946, are not appropriate subject matter for petitions to the Director.

An action taken on a matter arising during the ex parte prosecution of an application for registration may, depending on the nature of the matter and the posture of the case, be reviewable only by appeal to the Board, or only by petition to the Director or by either appeal or petition. The following discussion contains general guidelines for determining whether a matter is appealable or petitionable.

An appeal to the Board may be taken from any final action, second refusal to register on the same ground(s), or repeated requirement issued by the examining attorney during the ex parte prosecution of an application for registration, whether the matter involved in the examining attorney’s action is substantive or procedural in nature, except that a formal requirement which was the subject of a petition decided by the Director may not thereafter be the subject of an appeal to the Board. [ Note 1.] TBMP § 1201.02.

Substantive questions arising during the ex parte prosecution of an application, including, but not limited to, issues arising under Trademark Act § 2, Trademark Act § 3, Trademark Act § 4, Trademark Act § 5, Trademark Act § 6, and Trademark Act § 23, 15 U.S.C. § 1052, 15 U.S.C. § 1053, 15 U.S.C. § 1054, 15 U.S.C. § 1055, 15 U.S.C. § 1056, and 15 U.S.C. § 1091, are considered to be appropriate subject matter for appeal to the Board (after issuance of a final action, or a second refusal on the same ground(s)), see TBMP § 1201.01, but not for petition to the Director. [ Note 2.]

A wide variety of matters are petitionable. Petition may be taken to the Director in the following situations:

  • (1) From any repeated or final formal requirement made by the examining attorney, during the ex parte prosecution of an application, if (i) the requirement is repeated, but the examining attorney’s action is not made final and the subject matter of the requirement is appropriate for petition to the Director; [ Note 3.] or (ii) the examining attorney’s action is made final and is limited to subject matter appropriate for petition to the Director. [ Note 4.] If the petition is denied, the applicant will have: (1) the time remaining in the period for response to the Office action that repeated the requirement or made it final; (2) the time remaining after the filing of a timely request for extension of time to respond or appeal under § 2.62(a)(2); or (3) 30 days from the date of the Director’s decision on the petition, whichever is later, to comply with the requirement. A formal requirement that was the subject of a petition to the Director may not thereafter be the subject of an appeal to the Board. [ Note 5.]
  • (2) In any case for which the Act of 1946, or Title 35 of the United States Code, or Part 2 of 37 C.F.R. (i.e., the rules of practice in trademark cases) specifies that the matter is to be determined directly or reviewed by the Director. [ Note 6.] Insofar as applications for registration are concerned, this includes petitions to review the denial of requests for extensions of time to file statements of use under 37 C.F.R. § 2.89(g), petitions to review the actions of Post Registration examiners under Trademark Act § 7, Trademark Act § 8, and Trademark Act § 9, 15 U.S.C. § 1057, 15 U.S.C. § 1058, and 15 U.S.C. § 1059, and petitions to record a document in the Trademark Assignment Recordation Branch. [ Note 7.]
  • (3) To invoke the supervisory authority of the Director in appropriate circumstances. [ Note 8.] Under this provision, an applicant generally may petition to the Director for relief from, inter alia, a nonfinal refusal to register based on a procedural matter, i.e., an alleged failure of the applicant to comply with a technical requirement of the rules of practice governing trademark cases; or an alleged failure of the examining attorney to act in accordance with those rules and/or proper practice thereunder. [ Note 9.]
  • (4) In any case not specifically defined and provided for by Part 2 of 37 C.F.R. (i.e., the rules of practice in trademark cases). [ Note 10.] Under this provision, an applicant may petition the Director with respect to any situation, not covered by the rules, from which the applicant seeks relief.
  • (5) In an extraordinary situation, when justice requires and no other party is injured thereby, to request a suspension or waiver of any requirement of the rules which is not also a requirement of the Act of 1946. [ Note 11.]

However, petition may not be taken to the Director on a question of substance arising during the ex parte prosecution of an application; nor may petition be taken from a final action of the examining attorney, except that an applicant may petition for relief from an action making a formal requirement final if the action is limited to subject matter appropriate for petition to the Director (i.e., involves questions such as the applicant’s alleged failure to comply with one or more of the technical requirements of the rules of practice in trademark cases, rather than a question of substance). [ Note 12.]

On appeal, the Board will review only the correctness of a substantive refusal to register, and will not consider the procedural issue of whether the issuance of or failure to issue a substantive refusal was a "clear error." See TMEP § 706.01 regarding "clear error." Moreover, an applicant may not challenge by petition the Office’s determination of clear error regarding questions of substance, which would include questions arising under Trademark Act §§ 2, 3, 4, 5, 6 and 23. See TMEP § 706.01. [ Note 13.]

The Board will not consider a matter that is appropriate only for petition. For example, the Board will not review requirements for an amendment to the classification of goods or services; the issue of proper classification is procedural, not substantive, in nature and may only be reviewed upon petition. [ Note 14.] Although the issue of an acceptable identification of goods or services may be decided by the Board on appeal, or by petition, a petition may provide an applicant with more flexibility. [ Note 15.] For further examples of matters that are appealable and those that are petitionable, see TMEP § 1704.

NOTES:

 1.   See Trademark Act § 20, 15 U.S.C. § 1070; 37 C.F.R. § 2.63(b), 37 C.F.R. § 2.63(c), and 37 C.F.R. § 2.141. See also In re Jimmy Moore LLC, 119 USPQ2d 1764, 1770 (TTAB 2016) (Board will not revisit issue that was the subject of petition decided by the Director); In re Pony International Inc., 1 USPQ2d 1076, 1079 (Comm’r 1986).

 2.   See 37 C.F.R. § 2.146(b); TMEP § 1704; In re The Du Pont Merck Pharmaceutical Co., 34 USPQ2d 1778, 1781 (Comm’r 1995); In re Mission Pharmacal Co., 33 USPQ2d 1060, 1061 (Comm’r 1993); In re Direct Access Communications (M.C.G.) Inc., 30 USPQ2d 1393, 1393 (Comm’r 1993); In re Tetrafluor Inc., 17 USPQ2d 1160, 1161 (Comm’r 1990); In re Hart, 199 USPQ 585, 586-87 (Comm’r 1978); In re Stenographic Machines, Inc., 199 USPQ 313, 315 (Comm’r 1978).

 3.   See, in this regard, 37 C.F.R. § 2.146(b), and the preceding paragraph.

 4.   See 37 C.F.R. § 2.63(b)  and 37 C.F.R. § 2.146(a)(1); In re The Du Pont Merck Pharmaceutical Co., 34 USPQ2d 1778, 1781 (Comm’r 1995) (proper signatory for an application and statement of use filed by a partnership); In re Stenographic Machines, Inc., 199 USPQ 313, 315 (Comm’r 1978) (requirement for a more particular identification of goods).

 5.   See 37 C.F.R. § 2.63(c). See also In re Pony International Inc., 1 USPQ2d 1076, 1079 (Comm’r 1986).

 6.   37 C.F.R. § 2.146(a)(2).

 7.   See TMEP § 1702, TMEP § 1703 and TMEP § 1704.

 8.   See 35 U.S.C. § 2  and 37 C.F.R. § 2.146(a)(3).

 9.   See, e.g., In re Mission Pharmacal Co., 33 USPQ2d 1060, 1061 (Comm’r 1993) (whether examining attorney acted properly in issuing final Office action); In re Direct Access Communications (M.C.G.) Inc., 30 USPQ2d 1393, 1393 (Comm’r 1993) (whether examining attorney properly suspended application); In re Tetrafluor Inc., 17 USPQ2d 1160, 1161 (Comm’r 1990) (whether examining attorney properly refused to allow amendment of drawing to correct an allegedly obvious typographical error); TMEP § 1702 and TMEP § 1703. For further information concerning the matters that are petitionable under this provision, see TMEP § 1707.

 10.   See 37 C.F.R. § 2.146(a)(4).

 11.   37 C.F.R. § 2.146(a)(5). For information concerning the meaning of the words "extraordinary situation" see TMEP § 1708.

 12.   See 37 C.F.R. § 2.63(b), 37 C.F.R. § 2.146(a), and 37 C.F.R. § 2.146(b); In re Dermahose Inc., 82 USPQ2d 1793, 1796 n.5 (TTAB 2007) (examining attorney’s refusal to accept Statement of Use because the signer of the declaration was not the person making the statements in the declaration reviewable by appeal or petition); In re Tetrafluor Inc., 17 USPQ2d 1160, 1161 (Comm’r 1990); In re Hart, 199 USPQ 585, 586-87 (Comm’r 1978); In re Stenographic Machines, Inc., 199 USPQ 313, 315 (Comm’r 1978); TMEP § 1702 and TMEP § 1704.

 13.   See In re Driven Innovations, Inc., 115 USPQ2d 1261, 1264 (TTAB 2015) (applicant’s sole recourse to challenge a refusal that was issued during examination of a statement of use under the clear error standard is by appealing the merits of the final refusal to the Board), reversed and remanded on other grounds, slip op. No. 16-1094 (Fed. Cir. January 4, 2017). This case expressly overruled those portions of In re Jump Designs LLC, 80 USPQ2d 1370, 1373-74 (TTAB 2006) and In re Sambado & Son Inc., 45 USPQ2d 1312, 1314 (TTAB 1997) to the extent that they suggest the applicant could petition the Director for a review of a clear error determination.

 14.   In re Faucher Industries Inc., 107 USPQ2d 1355, 1357 (TTAB 2013).

15. In re Faucher Industries Inc., 107 USPQ2d 1355, 1357-58 (TTAB 2013) (petition may afford broader scope of possible relief because Director has more flexibility in this area).