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).