1216 Oral Hearing in Appeal of Refusal of Application
- (1) If the appellant desires an oral hearing, a request should be made by a separate notice filed not later than ten days after the due date for a reply brief. Oral argument will be heard by at least three Administrative Trademark Judges or other statutory members of the Trademark Trial and Appeal Board at the time specified in the notice of hearing, which may be reset if the Board is prevented from hearing the argument at the specified time or, so far as is convenient and proper, to meet the wish of the appellant or the appellant’s attorney or other authorized representative. Appellants, examining attorneys, and members of the Board may attend in person or, at the discretion of the Board, remotely.
- (2) If the appellant requests an oral argument, the examining attorney who issued the refusal of registration or the requirement from which the appeal is taken, or in lieu thereof another examining attorney as designated by a supervisory or managing attorney, shall present an oral argument. If no request for an oral hearing is made by the appellant, the appeal will be decided on the record and briefs.
- (3) Oral argument will be limited to twenty minutes by the appellant and ten minutes by the examining attorney. The appellant may reserve part of the time allowed for oral argument to present a rebuttal argument.
For information concerning oral hearings in inter partes proceedings before the Board, see TBMP § 802. What follows below is information pertaining specifically to oral hearings in ex parte appeals to the Board.
An oral hearing is not mandatory in an ex parte appeal to the Board, but will be scheduled if a timely request therefor is filed by the applicant, with the requisite fee. [ Note 1.] If the applicant does not request an oral hearing, the appeal will be decided on the record and briefs. [ Note 2.] The record and brief, therefore, are of paramount importance. In the vast majority of cases, an oral hearing is not requested. An examining attorney may not request an oral hearing. An oral hearing is particularly useful in ex parte cases involving complex issues, a complex record, where the goods or services identified in the applicant’s application (or a cited registration) are highly technical or unfamiliar, or where an issue on appeal is not clearly defined. In addition, the oral hearing sometimes provides an opportunity for the applicant and examining attorney to work out an agreement that results in approval of the application for publication (or for registration, in the case of a Supplemental Register application).
If the applicant desires an oral hearing in an ex parte appeal to the Board, the applicant should file a written request not later than 10 days after the due date for applicant’s reply brief. The request should be a separate document, and not included in an applicant’s brief, reply brief, or other submission filed with the Board. The request for oral hearing must be filed through ESTTA, which includes "Request for oral hearing" among the list of entries identifying the type of submission being filed. In the rare circumstances it is filed on paper, only one copy of such request should be submitted. The request should include three tentative dates and times for the oral hearing and whether the applicant would like to appear at the oral hearing in person or by video conference. The Board will then send the applicant a notice specifying the date, time and location of the hearing. If the request for an oral hearing does not include tentative dates, the Board will issue an order requesting the applicant to provide possible dates between six and fourteen weeks beyond the mailing date of the order, and upon receipt will send the applicant a notice of hearing specifying the date, time, and location of the hearing. If there is no timely response to the Board’s order, the request for oral hearing will be considered waived, and the matter will be submitted for decision on the record and briefs. Ordinarily, hearings are scheduled on Tuesdays, Wednesdays and Thursdays between 10:00 a.m. and 3:00 p.m. (Eastern Time).
Oral hearings typically are held at the offices of the Board but may be held elsewhere, in conjunction with conferences or continuing legal education programs. For hearings held at the offices of the Board, a party may request, and the Board in its discretion may allow, attendance via video conference from another location. [ Note 3.] A video hearing will be conducted in the same manner as if conducted entirely in the hearing room. An applicant should request a hearing by video conference in its written request for an oral hearing, or in its response to the Board order acknowledging that request and directing the applicant’s further action. An applicant is expected to appear in person unless it clearly states, in its initial request for oral hearing or in its response to the Board’s order, its intent to participate by video conference. An applicant that has not timely and clearly stated its intent to participate by video conference may not be able to switch to video participation without also rescheduling any already scheduled date for the hearing.
An applicant that requests attendance at the oral hearing via video conferencing is responsible for arranging and paying for its video connection, and the Board cannot assist the applicant in this endeavor. The USPTO does not provide the applicant with the means to participate by video conference. The Board’s order scheduling the hearing will specify the software that the Board uses for the video connection, and the applicant must use compatible technology. If an applicant plans to attend the hearing by video conference, it is the applicant’s responsibility to contact a USPTO video conference technician at VTCOPSDITSLIST@uspto.gov no fewer than three business days prior to the confirmed hearing date, setting forth the application serial number(s), the date and time of the hearing, and the type of equipment that the applicant plans to use. A USPTO video conference technician will arrange a test of the equipment that the applicant plans to use. The Board will liberally grant remote attendance, but retains discretion to account for any technological limitations. See TBMP § 802.03.
An oral hearing is held before a panel of at least three members of the Board (i.e., its statutory members, generally administrative trademark judges), who may appear via video or phone. [ Note 4.] The time for oral hearing may be reset if the Board is prevented from holding the hearing at the specified time, or, so far as is convenient and proper, to meet the wishes of the applicant (or the applicant’s attorney or other authorized representative) or the examining attorney. [ Note 5.] If an applicant wishes to reschedule an oral hearing, it must file a written request through ESTTA stating the reasons for the request, whether the examining attorney has agreed to the rescheduling, and submit three non-consecutive dates and times within four to eight weeks from the original hearing date. Applicant must follow-up the written request by telephoning the Board’s Hearings and Decisions ProgramSpecialist (whose contact information appears on the scheduling order). In general, upon a request to reset a hearing date, Board practice is to reschedule the oral hearing. However, absent compelling circumstances or mutual agreement between the applicant and the examining attorney, the Board may not change a hearing date if the request for rescheduling is made within two weeks of the scheduled hearing date. Moreover, the Board may deny a request to reschedule if multiple requests, including stipulations and consented requests, to reschedule have been filed. Both the reason for the rescheduling request, and the time in advance of the hearing at which it is made, will be considered in determining whether the request is granted. [ Note 6.]
If the applicant requests an oral hearing, the examining attorney who issued the Office action from which the appeal was taken, or another examining attorney who has been designated for the purpose by a supervisory or managing attorney, must appear at the hearing and present an oral argument. [ Note 7.] If the examining attorney requires a rescheduling of the oral hearing, he or she should advise the Hearings and Decisions Program Specialist of the Board, by telephone or email, not later than two weeks prior to the scheduled hearing date. If circumstances arise which prevent the examining attorney from providing such notice, another examining attorney should be designated by a supervisory or managing attorney to appear at the oral hearing. In the rare instances in which the applicant appears but the examining attorney does not, the oral hearing will be held without the examining attorney; only the applicant will present its oral argument.
The applicant is allowed 20 minutes for its oral argument, and the examining attorney is allowed 10 minutes. If the applicant so desires, it may reserve a portion of its 20 minutes to use for rebuttal argument. [ Note 8.] There is no requirement that the applicant and the examining attorney use all of their allotted time. Often, an ex parte appeal to the Board is of such nature that oral arguments thereon may be presented in considerably less than the allotted time. On the other hand, if, because of the complexity or novelty of the issues, an applicant feels that it needs more than 20 minutes for oral argument, it should file a written request with the Board for additional time. [ Note 9.] Cf. TBMP § 802.05. If the request is granted, the examining attorney will also be allowed additional time.
For information concerning audiotaping, visual aids, videoconferencing and the nature of an oral hearing before the Board, see TBMP § 802.06, TBMP § 802.07, TBMP § 802.03 and TBMP § 802.08, respectively.
The oral hearing is not an opportunity to present new evidence to the Board. Documents offered at the hearing that were not properly made of record will not be considered unless consented to by the nonoffering party, in which case they will be deemed to have been stipulated into the record. [ Note 10.] Similarly, an applicant is not permitted to file a supplemental brief following an oral hearing unless instructed or ordered by the Board to do so. [ Note 11.]
If an applicant decides, after submitting a request for oral hearing, that it no longer desires an oral hearing, it should submit a written waiver of the oral hearing request through ESTTA. The matter will then be taken off of the Board’s oral hearing docket and scheduled to be decided on the record and the briefs.
Further inquiries regarding oral hearings may directed to TTABHearings@uspto.gov.
NOTES:
1. 37 C.F.R. § 2.6(a)(24) and 37 C.F.R. § 2.142(e)(1).
3. 37 C.F.R. § 2.142(e)(1). See, e.g., In re Datapipe, Inc., 111 USPQ2d 1330, 1332 (TTAB 2014) (counsel for applicant appeared via videoconference at oral hearing).
4. See Trademark Act § 17, 15 U.S.C. § 1067; 37 C.F.R. § 2.142(e)(1); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69968 (Oct. 7, 2016) ("The Office is amending § 2.142(e)(1) to clarify that all statutory members of the Board may hear oral argument. The Office is further amending § 2.142(e)(1) to add that appellants, examining attorneys, and members of the Board may attend oral argument in person or, at the discretion of the Board, remotely. The amendment codifies current Office practice and is consistent with the Office’s amendments to § 2.129(a).").
6. See In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213, 1214 n.2 (TTAB 2000) (applicant’s request to reschedule hearing received three hours before the scheduled hearing because of "a sudden conflict of time" was denied; Commissioner [now Director] denied petition stating that Board has wide discretion in scheduling or rescheduling oral hearings).
7. See 37 C.F.R. § 2.142(e)(2).
10. In re Caterpillar Inc., 43 USPQ2d 1335, 1337 (TTAB 1997) (exhibits in booklet submitted at oral hearing which had not previously been made of record were not considered).
11. In re Well Living Lab Inc., 122 USPQ2d 1777, 1778 n.3 (TTAB 2017) (Board refused to consider unauthorized supplemental brief filed after oral hearing), aff’d, 749 F. App’x 987 (Fed. Cir. 2018).