1202 Filing an Appeal of Refusal of Application
1202.01 In General
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.
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.
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- (c) Appeal fee required. The applicant or registrant must pay an appeal fee for each class for which the appeal is taken. If an appeal fee is not paid for at least one class of goods or services before the expiration of the time for appeal, when the appeal is from a final refusal of an application, the application will be abandoned or, when the appeal is from an expungement or reexamination proceeding, the Office will terminate the proceeding. When a multiple-class application or registration is involved, if an appeal fee is submitted for fewer than all classes, the applicant or registrant must specify the class(es) for which the appeal is taken. If the applicant or registrant timely submits a fee sufficient to pay for an appeal in at least one class, but insufficient to cover all the classes, and the applicant or registrant has not specified the class(es) to which the fee applies, the Board will issue a written notice setting a time limit in which the applicant or registrant may either pay the additional fees or specify the class(es) being appealed. If the applicant or registrant does not submit the required fee or specify the class(es) being appealed within the set time period, the Board will apply the fee(s) to the class(es) in ascending order, beginning with the lowest numbered class.
37 C.F.R. § 2.142(a)(1) Any appeal filed under the provisions of § 2.141(a) from the final refusal of an application must be filed within the time provided in § 2.62(a).
37 C.F.R. § 2.142(a)(3) An appeal is taken by filing a notice of appeal, as prescribed in § 2.126, and paying the appeal fee.
An appeal to the Board from an examining attorney’s final action, second refusal on the same ground(s), or repeated requirement, is taken by timely filing, see TBMP § 1202.02, in the Office both a notice of appeal and the prescribed appeal fee. [ Note 1.] See TBMP § 1202.04. If the notice of appeal and fee are not timely filed, the application will be deemed to have been abandoned, and the Board cannot entertain the appeal unless the applicant successfully petitions the Director to revive the application. [ Note 2.]
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, and the statement of issues in the brief should note such compliance. [ Note 3.] 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. See TBMP § 1201.04.
If an application contains multiple classes, and a final refusal or requirement pertains to some, but not all, of the classes in the application, the applicant has the option of (i) filing an appeal for the application as a whole (paying the appeal fee only for the classes for which it wishes to appeal), or (ii) filing a request to divide the application to sever those classes for which there has been no final requirement or refusal and filing an appeal only for the class(es) to which the final refusal or requirement pertains. In the former case, the application will not be published for opposition (or a registration will not issue in the case of an application on the Supplemental Register) for those classes for which no refusal or requirement was made final until after the appeal is decided. Similarly, if a final refusal or requirement pertains to some but not all of the goods or services in a single class, the applicant has the option of filing a request to divide the application to sever those goods or services from that class. [ Note 4.] If no request to divide the application is filed, the application may not proceed to publication (or, in the case of an application on the Supplemental Register, to registration) for those goods or services for which no refusal or requirement has been made, until after the appeal is decided. If a request to divide the application is filed, see TBMP § 1205.02, the classes, or the goods or services within a class, for which there is no final requirement or refusal which have been divided out of the application will proceed to publication or registration, as appropriate, and an appeal will be instituted for the remaining classes for which an appeal has been filed. If goods or services have been divided out of a single class, an appeal will be instituted for the application with the remaining goods or services in that class. See TBMP § 1202.05.
If an application contains multiple classes and the applicant wishes to appeal a final refusal or requirement in some but not all of the classes, the applicant should indicate in the notice of appeal the classes in which the refusal or requirement is being appealed. Any remaining classes for which there is a final refusal or requirement that is not the subject of the appeal will be deemed abandoned. [ Note 5.] However, if the applicant has also filed a request for reconsideration for those classes, after instituting the appeal with respect to the classes which are the subject of the appeal, the Board will suspend proceedings and remand the application to the examining attorney to consider the request for reconsideration. If the examining attorney is not persuaded by the request for reconsideration, the classes for which no appeal has been filed will be deemed abandoned unless the examining attorney issues a nonfinal Office action or a new final refusal (thereby giving the applicant additional time to file a notice of appeal with respect to these classes).
Applicant must notify the Board at the time of filing its notice of appeal whether any other applications are pending with the same or similar marks regardless of whether or not those are on appeal.
NOTES:
1. See 37 C.F.R. § 2.6(a)(18). See also Trademark Act § 20, 15 U.S.C. § 1070; 37 C.F.R. § 2.141 and 37 C.F.R. § 2.142(a); TMEP § 1501.
2. See Trademark Act § 12(b), 15 U.S.C. § 1062; 37 C.F.R. § 2.65(a); 37 C.F.R. § 2.66. See also TMEP § 718.02, TMEP § 1501.04, TMEP § 1714, and TMEP § 1714.01(a).
4. Cf. In re UST Global (Singapore) Pte. Ltd., 2020 USPQ2d 10435, at *9 & n.29 (TTAB 2020) (affirming disclaimer requirement for entire class even though term found merely descriptive of only a portion of the identified services and applicant had agreed to disclaim the term for that portion, Board notes that similarly situated applicants could instead divide its application and separately appeal the disclaimer requirement for other goods or services within a single class).
5. See In re MGA Entertainment Inc., 84 USPQ2d 1743, 1745 n.1 (TTAB 2007) (applicant did not appeal requirement to delete Class 28 goods, and Board treated Class 28 goods as deleted from application).
1202.02 Time for Appeal of Refusal of Application
An appeal to the Board may be taken from any final action, second refusal on the same ground(s), or repeated requirement issued by the examining attorney during the ex parte prosecution of an application for registration, 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.] See TBMP § 1201.05.
An appeal to the Board must be filed within the time provided in 37 C.F.R. § 2.62(a), though until December 1, 2022, that time is six months from the date of the action from which the appeal is taken. [ Note 2.] If a notice of appeal is timely filed, but the appeal fee is not, the appeal will be untimely, and the application will be deemed to have been abandoned. See TBMP § 1202.01.
A notice of appeal to the Board must be filed through ESTTA in the manner prescribed in 37 C.F.R. § 2.126(a). For more information regarding filing via ESTTA, see TBMP § 110. However, if ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, submissions may be filed in paper form and must include a written explanation of such technical problems or extraordinary circumstances. [ Note 3.] Examining attorney submissions need not be filed through ESTTA because they are filed through USPTO internal electronic systems. [ Note 4.] In the rare circumstances paper filing is necessary, the certificate of mailing procedure described in 37 C.F.R. § 2.197, and the "Priority Mail Express®" procedure described in 37 C.F.R. § 2.198, are available for the filing of an appeal to the Board. [ Note 5.] TBMP § 111.01 and TBMP § 111.02.
During the period between issuance of a final action and expiration of the time for filing an appeal therefrom, an applicant may file a request for reconsideration, with or without an amendment and/or new evidence. [ Note 6.] TBMP § 1204. However, the filing of a request for reconsideration will not serve to stay the time for filing an appeal (or for petitioning the Director, if appropriate). [ Note 7.] TBMP § 1201.05. If, upon the examining attorney’s consideration of the request, all refusals and requirements are not withdrawn, and no appeal or other proper response to the final refusal has been filed during the time provided following issuance of the final action (six months until December 1, 2022), the application will be abandoned. [ Note 8.] Thus, if an applicant that has filed a request for reconsideration of a final action wishes to preserve its right to appeal in the event that the request is unsuccessful, the applicant must file an appeal prior to the expiration of the time provided following issuance of the final action.
If an appeal is late-filed, but the applicant timely filed some other response to the appealed action, such as an amendment or request for reconsideration, the Board will issue a written action informing the applicant of the lateness of its appeal; stating that the late appeal cannot be entertained by the Board; and forwarding the application to the examining attorney for appropriate action with respect to the document that was timely filed. An applicant may petition the Director to revive an application for failure to file a timely appeal, as an appeal is considered a response to an Office action. [ Note 9.] However, the unintentional delay standard of 37 C.F.R. § 2.66(a) (revival of abandoned applications) does not apply to applications that were abandoned due to an incomplete response after a final Office action. A request for reconsideration that is not accompanied by a notice of appeal is considered an incomplete response. Therefore, if an applicant files a request for reconsideration but fails to timely file a notice of appeal, and the examining attorney denies the request for reconsideration, it is the Director’s practice to deny a petition to revive in such circumstances. [ Note 10.]
Ordinarily, if an applicant files a petition to revive for the purpose of filing an appeal, the notice of appeal must be filed through ESTTA, and the petition to revive should be filed through TEAS with a statement that a notice of appeal is being filed with the Board.
NOTES:
1. See TMEP § 1501.
2. See Trademark Act § 12(b), 15 U.S.C. § 1062; 37 C.F.R. § 2.142(a).
3. See 37 C.F.R. § 2.126(b). See also 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.").
4. See 37 C.F.R. § 2.142(b)(2). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69968 (Oct. 7, 2016) ("The Office is amending § 2.142(b)(2) to exempt examining attorney submissions from the ESTTA requirement because they are filed through the Office’s internal electronic systems.").
5. See 37 C.F.R. § 2.197; 37 C.F.R. § 2.198. Many documents that are filed in connection with the prosecution of an application, including the application itself and an amendment to allege use, may not be filed using the "Priority Mail Express" procedure. See TMEP § 305.03. However, the "Priority Mail Express®" procedure is available for filing a notice of appeal.
6. See 37 C.F.R. § 2.63(b). See also TMEP § 715.02 and TMEP § 715.03.
7. See 37 C.F.R. § 2.63(b); TMEP § 715.03 and TMEP § 715.03(c).
8. See 37 C.F.R. § 2.63(b) and 37 C.F.R. § 2.142(a). See also TMEP § 715.03(a).
9. See 37 C.F.R. § 2.66(a) and TMEP § 1714 et seq.
10. See TMEP § 1501 regarding notices of appeal, TMEP § 715.03 et seq. regarding requests for reconsideration, and TMEP § 1714.01(f)(ii) regarding situations in which the unintentional delay standard does not apply.
1202.03 Notice of Appeal of Refusal of Application
A notice of appeal is the document by which an applicant appeals from the decision of the examining attorney refusing registration. A notice of appeal must be filed through ESTTA, found at https://estta.uspto.gov. [ Note 1.] See TBMP § 106.03 and TBMP § 110. Under "File a New Proceeding" choose "Notice of Appeal" from the drop-down menu, and enter the application serial number; the relevant information will then automatically appear in the form. ESTTA provides the applicant with immediate confirmation of the filing; generates the Board’s order instituting the appeal immediately; and provides the applicant the date by which it must file its appeal brief.
If ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, submissions may be filed in paper form and must include a written explanation of such technical problems or extraordinary circumstances. [ Note 2.] See TBMP § 106.03 and TBMP § 1202.02 and the rules and TMEP sections cited therein regarding certificate of mailing and certificate of mailing via Priority Mail Express® procedures. The paper version of the notice of appeal should bear at its top the wording "IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD," followed by information identifying the application in which the appeal is being filed, namely, the applicant’s name, the serial number and filing date of the application, and the involved mark. The notice of appeal need consist only of a simple statement indicating that the applicant appeals from the refusal of registration; reasons for appeal need not be given. If the application has multiple classes, and the appeal is not for all the classes in the application, the applicant should indicate in the notice of appeal the class(es) for which the appeal is taken. See TBMP § 1202.05. Only one copy of the notice of appeal should be submitted.
A notice of appeal need not be verified, and it may be signed by the applicant or its attorney or other authorized representative. An electronic signature will be accepted. [ Note 3.] See TBMP § 106.02. The Board will accept a notice of appeal that is signed by an attorney, even if he or she is not the attorney of record, i.e., there is no power authorizing him or her to act for the applicant. Moreover, the Board will accept a notice of appeal signed by the applicant itself, even if the applicant had appointed an attorney to act for it. However, the Board will continue to correspond only with the attorney of record or, if the applicant has not appointed an attorney, with the applicant itself. Please Note: The Trademark Examining Operation will not accept any document, including a request for reconsideration filed along with a notice of appeal, if it is signed by the applicant or an attorney if a different attorney had been appointed to act for the applicant, and the power has not been revoked. [ Note 4.]
Although the notice of appeal must be signed, an unsigned notice of appeal will not be refused consideration if a signed copy is submitted to the Board within the time limit set in the notification of this defect by the Board. [ Note 5.] See TBMP § 106.02. The same is true of other unsigned papers filed in an application during an ex parte appeal to the Board. For further information concerning signature of submissions, see TBMP § 106.02.
If the applicant files a request for reconsideration or amendment (including an amendment to allege use) along with the notice of appeal, or at the time of filing the notice of appeal the applicant had filed a request for reconsideration or amendment which is still pending before the examining attorney, the applicant should indicate this by checking the box on the ESTTA form indicating that it has filed a request for reconsideration. The request for reconsideration itself should be filed through TEAS. In the rare circumstances a notice of appeal is filed as a paper submission, the applicant should include in the notice of appeal a statement that a request for reconsideration has been or is being filed; if the request for reconsideration is filed at the same time as the notice of appeal, it should accompany the notice of appeal but not be in the body of the notice of appeal. If the written explanation for paper filing is acceptable, the Board will institute the appeal, suspend proceedings, and remand the application to the examining attorney to consider the request for reconsideration or amendment. See TBMP § 1204 and TBMP § 1205.
If the applicant believes that the time is not yet ripe for the filing of a notice of appeal, but has received a final Office action and chooses to file a notice of appeal to preserve its rights, see TBMP § 1201.02, the applicant should advise the Board that it believes the final Office action is premature and, if the applicant has filed a petition on this issue, it should so inform the Board. When the notice of appeal is filed electronically through ESTTA, the applicant, after the appeal has been instituted and the electronic system has been updated, (normally 24 hours after the filing of the notice of appeal), should 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 when the notice of appeal is submitted as a paper filing, the applicant should advise the Board in the notice of appeal of its belief that the final action is premature, or that it has filed a petition.
NOTES:
1. See 37 C.F.R. § 2.126(a). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69966, 69970 (Oct. 7, 2016) ("The Office is amending § 2.195(d)(3) by deleting the option of filing notices of ex parte appeal by facsimile. This is a conforming amendment to align § 2.195(d)(3) with the final rules requiring that all filings with the Board be through ESTTA.").
2. See 37 C.F.R. § 2.126 for general requirements for submissions to the Board. See also 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.").
3. See 37 C.F.R. § 2.193(a)(2); TMEP § 611.01(c).
4. See TMEP § 601.02, TMEP § 604.01 and TMEP § 611.05 et seq.
5. Cf. 37 C.F.R. § 2.119(e).
1202.04 Appeal Fee
37 C.F.R. § 2.141 Ex parte appeals [from final refusal of application].
- (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.
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- (c) Appeal fee required. The applicant or registrant must pay an appeal fee for each class for which the appeal is taken. If an appeal fee is not paid for at least one class of goods or services before the expiration of the time for appeal, when the appeal is from a final refusal of an application, the application will be abandoned or, when the appeal is from an expungement or reexamination proceeding, the Office will terminate the proceeding. When a multiple-class application or registration is involved, if an appeal fee is submitted for fewer than all classes, the applicant or registrant must specify the class(es) for which the appeal is taken. If the applicant or registrant timely submits a fee sufficient to pay for an appeal in at least one class, but insufficient to cover all the classes, and the applicant or registrant has not specified the class(es) to which the fee applies, the Board will issue a written notice setting a time limit in which the applicant or registrant may either pay the additional fees or specify the class(es) being appealed. If the applicant or registrant does not submit the required fee or specify the class(es) being appealed within the set time period, the Board will apply the fee(s) to the class(es) in ascending order, beginning with the lowest numbered class.
Because filing through ESTTA is mandatory, fees are collected at the time of filing. However, the following addresses circumstances where fees accompanying paper filings are, in whole or in part, deficient. An ex parte appeal to the Board is taken by timely filing in the Office both a notice of appeal and the prescribed appeal fee for each class for which the appeal is taken. [ Note 1.] If a notice of appeal is timely filed, but the appeal fee is not, the appeal will be untimely, and the application will be deemed to have been abandoned. See TBMP § 1202.01. In such circumstance, however, the applicant may file a petition to revive. [ Note 2.] Further, if a party fails to timely file an appeal fee but has previously given a general authorization to charge all fees that may become due during the pendency of an application to a deposit account, such authorization will be accepted, provided that the deposit account contains sufficient funds. [ Note 3.]
The amount of the fee required for an ex parte appeal to the Board is specified in 37 C.F.R. § 2.6(a)(18). If an application in which an appeal is filed has more than one class of goods and/or services [ Note 4.], the required fee must be paid for each class in which appeal is taken. [ Note 5.] If an appeal is taken in, and an appeal fee is submitted for fewer than all of the classes in the application, the class or classes in which the appeal is taken should be specified. [ Note 6.] If the final requirement or refusal does not pertain to all classes in the application, the appeal fee need be submitted only for those classes for which a final requirement or refusal has issued. TBMP § 1202.05.
If an applicant timely submits a fee sufficient to pay for an appeal in at least one class, but the fee submitted is less than the required amount because multiple classes in an application are involved, and the applicant has not specified the class or classes to which the submitted fee applies, the Board will issue a written notice allowing the applicant until a set time in which to submit the required fee or to specify the class or classes appealed. If the required fee is not submitted, or the specification made, within the time set in the notice, the fee submitted will be applied to the classes in ascending order, beginning with the lowest numbered class and including the number of classes in the application for which sufficient fees have been submitted. [ Note 7.]
NOTES:
1. 37 C.F.R. § 2.6(a)(18)(i), 37 C.F.R. § 2.6(a)(18)(ii) and 37 C.F.R. § 2.141.
2. See generally, TMEP § 1714. See also TMEP § 1704.
4. See 37 C.F.R. § 2.86 and 37 C.F.R. § 2.141(c).
6. See 37 C.F.R. § 2.141(c) and TMEP § 1403.06.
1202.05 Multiple Class Applications
If an application contains multiple classes, and the final refusal or requirement pertains to some but not all of the classes, an applicant may choose to file an appeal for the application as a whole, or it may choose to file a request to divide the application. [ Note 1.] See TBMP § 1205.02 regarding requests to divide. In the former case, the classes for which an appeal has not been taken remain part of the application. After a decision on the appeal is rendered, the classes that were not part of the appeal (and those classes for which the refusal or requirement was reversed) will be published for opposition or, in the case of an application on the Supplemental Register, will proceed to registration. If a request to divide is filed along with a notice of appeal, the appeal will be suspended until action is taken on the request to divide. Those classes for which there is no final requirement or refusal, and which have been divided out, will immediately proceed to publication or, in the case of an application on the Supplemental Register, to registration, and will not be delayed pending a decision on the appeal.
Similarly, if a final refusal or requirement pertains to some but not all of the goods or services listed in a single class, the applicant may either file an appeal for the class as a whole, or request that the goods or services for which no final refusal or requirement has been made be divided out of the application, in effect creating two applications for a single class of goods or services. [ Note 2.] If no request to divide is filed, after the appeal is decided, the application containing those goods or services for which no refusal or requirement was made (as well as the other goods or services in the class if the refusal was reversed) will be published for opposition or, in the case of an application on the Supplemental Register, will proceed to registration. If the goods or services for which no refusal or requirement was made were divided out of the parent application and into a child application, the child application will immediately proceed to publication or, in the case of an application on the Supplemental Register, to registration. See TBMP § 1205.02.
If the final refusals or requirements do not apply to all the classes in a multiple class application, an appeal fee is required only for those classes for which the appeal is taken, that is, those classes for which a final refusal or requirement is made. This is true whether or not the applicant requests that the application be divided.
If the applicant decides to file an appeal for fewer than all the classes in the application for which final refusals or requirements have issued, the applicant should indicate in the notice of appeal the classes for which the appeal is taken. See TBMP § 1202.04 regarding insufficient appeal fees for all classes in the application to which final refusals or requirements pertain.
NOTES:
1. See 37 C.F.R. § 2.87.
2. Cf. In re UST Global (Singapore) Pte. Ltd., 2020 USPQ2d 10435, at *9 & n.29 (TTAB 2020) (affirming disclaimer requirement for entire class even though term found merely descriptive of only a portion of the identified services and applicant had agreed to disclaim the term for those services, Board notes that a similarly situated applicant could instead divide its application and separately appeal the disclaimer requirement for other goods or services within a single class).