1302 Filing an Appeal from Expungement or Reexamination Proceeding
1302.01 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 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
37 C.F.R § 2.141 Ex parte appeals
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- (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).
- (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 Time and manner of ex parte appeals.
(a)(2) An appeal filed under the provisions of § 2.141(b) from an expungement or reexamination proceeding must be filed within three months from the issue date of the final Office action.
(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 a final decision in an ex parte expungement proceeding or ex parte reexamination proceeding is taken by timely filing in the Office, see TBMP § 1302.02, both a notice of appeal and the prescribed appeal fee. [ Note 1.] See TBMP § 1302.04. If the notice of appeal and fee are not timely filed, the Board cannot entertain the appeal, and will terminate the proceeding. [ Note 2.]
All requirements 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 a registrant that files an appeal to the Board fails to comply with such a requirement, the decision from the expungement or reexamination proceeding 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.
If a registration contains multiple classes that are the subject of an expungement or reexamination proceeding, and the registrant wishes to appeal a final decision as to some but not all of the classes, the registrant should indicate in the notice of appeal the classes in which the decision is being appealed. [ Note 4.] Any remaining classes for which there is a final adverse decision that is not the subject of the appeal will be cancelled in due course as to goods/services for which there was a final adverse decision. [ Note 5.]
NOTES:
1. See 37 C.F.R § 2.142(a)(3); 37 C.F.R § 2.6(a)(18). See also 15 U.S.C § 1070; 37 C.F.R § 2.141 and 37 C.F.R § 2.142(a).
4. See 37 C.F.R § 2.141(b).
5. See 37 C.F.R § 2.94.
1302.02 Time for Appeal from Expungement or Reexamination Proceeding
An appeal to the Board from a final decision in an ex parte expungement proceeding or ex parte reexamination proceeding must be filed within three months from the date of the final action from which the appeal is taken. [ Note 1.] This deadline may not be extended. [ Note 2.]
If a notice of appeal is timely filed, but the appeal fee is not timely paid, the appeal will be untimely, and the Board will terminate the proceeding. See TBMP §§ 1302.01 and 1302.04.
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.] 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 4.] 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, the registrant may file a request for reconsideration. [ Note 5.] See also 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 6.] For more information comparing an appeal to a petition to the Director, see TBMP § 1201.05. If a registrant 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 registrant must file a notice of appeal and pay the fee prior to the expiration of the three-month period following issuance of the final action.
Prior to the expiration of time for filing an appeal from an expungement or reexamination proceeding, 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 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. Such requirements cannot then be the subject of an appeal. [ Note 7.]
A registrant may petition the Director to reinstate a registration cancelled in whole or in part for failure to file a timely appeal from a final Office action issued in an expungement or reexamination proceeding. [ Note 8.] Ordinarily, if a registrant files a petition for reinstatement for the purpose of filing an appeal, the notice of appeal must be filed through ESTTA, and the petition for reinstatement should be filed through TEAS with a statement that a notice of appeal is being filed with the Board.
NOTES:
2. Contrast 37 C.F.R § 2.93(b)(1) (providing for extension of time to respond to non-final Office actions).
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 § 2.197; 37 C.F.R § 2.198.
8. See 37 C.F.R. § 2.146(c)(2)37 C.F.R § 2.146(c)(2).
1302.03 Notice of Appeal from Expungement or Reexamination Proceeding
A notice of appeal is the document by which a registrant appeals from the final Office action in an expungement or reexamination proceeding. 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 expungement or reexamination number; the relevant information will then automatically appear in the form.
Guidance in TBMP § 1202.03 regarding the notice of appeal may be applied to appeals in expungement and reexamination proceedings.
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.").
1302.04 Appeal Fee
37 C.F.R § 2.141 Ex parte appeals [from expungement and reexamination proceedings].
- (b) 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).
- (c) 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.
Guidance in TBMP § 1202.04 regarding the appeal fee may be applied to appeals in expungement and reexamination proceedings.