1301    Propriety of Ex Parte Appeal in Expungement or Reexamination Proceeding

Trademark Act § 16A(c)(3), 15 U.S.C § 1066A(c)(3)  Ex Parte Expungement; Institution by Director Any determination by the Director whether or not to institute a proceeding under this section shall be final and non-reviewable….

Trademark Act § 16B(c)(3), 15 U.S.C § 1066B(c)(3)  Ex Parte Reexamination; Institution by Director Any determination by the Director whether or not to institute a proceeding under this section shall be final and non-reviewable….

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 or a final decision by an examiner in an ex parte expungement proceeding or ex parte reexamination proceeding 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.

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.

      ***

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).

1301.02    Premature Appeal from Expungement or Reexamination Proceeding

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 1.]

Guidance in TBMP § 1201.03 regarding premature appeals may be applied to appeals in expungement and reexamination proceedings.

NOTES:

 1.   15 U.S.C § 1066A(c)(3).

1301.03    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.

Guidance in TBMP § 1201.04 regarding compliance with requirements that are not the subject of appeal may be applied to appeals in expungement and reexamination proceedings.

1301.04    Appeal from Expungement or Reexamination Proceeding versus Petition

37 C.F.R § 2.93(c)(2) Time for filing a request for reconsideration or petition to the Director.

  • (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.

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, or 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) Every petition to the Director shall include a statement of the facts relevant to the petition, the points to be reviewed, the action or relief requested, and the fee required by § 2.6. Any brief in support of the petition shall be embodied in or accompany the petition. The petition must be signed by the petitioner, someone with legal authority to bind the petitioner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with the requirements of § 2.193(e)(5). When facts are to be proved on petition, the petitioner must submit proof in the form of verified statements signed by someone with firsthand knowledge of the facts to be proved, and any exhibits.
  • (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.

An appeal to the Board may be taken by the registrant in an expungement or reexamination proceeding from any final Office action deciding that the prima facie case of nonuse has not been rebutted as to the challenged goods and/or services. If the final Office action includes any outstanding requirement under §§ 2.11, 2.23, or 2.189, prior to the expiration of time for filing an appeal, the registrant may file a petition to the Director under § 2.146 for relief from such requirement. If the petition is denied, the registrant will have three 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. [ Note 1.].

Substantive questions arising during the expungement or reexamination proceeding are considered to be appropriate subject matter for appeal to the Board (after issuance of a final action), but not for petition to the Director. [ Note 2.]

NOTES:

 1.   See 37 C.F.R § 2.93(c)(2)(ii).. 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).