106.03 Form of Submissions
37 C.F.R. § 2.126 Form of submissions to the Trademark Trial and Appeal Board.
- (a) Submissions must be made to the Trademark Trial and Appeal Board via ESTTA.
- (1) Text in an electronic submission must be filed in at least 11-point type and double-spaced.
- (2) Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission and must be clear and legible.
- (b) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, submissions may be filed in paper form. All submissions in paper form, except the extensions of time to file a notice of opposition, the notice of opposition, the petition to cancel, or answers thereto (see §§ 2.101(b)(2), 2.102(a)(2), 2.106(b)(1), 2.111(c)(2), and 2.114(b)(1)), must include a written explanation of such technical problems or extraordinary circumstances. Paper submissions that do not meet the showing required under this paragraph (b) will not be considered. A paper submission, including exhibits and depositions, must meet the following requirements:
- (1) A paper submission must be printed in at least 11-point type and double-spaced, with text on one side only of each sheet;
- (2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs or other such devices extending beyond the edges of the paper;
- (3) If a paper submission contains dividers, the dividers must not have any extruding tabs or other devices, and must be on the same size and weight paper as the submission;
- (4) A paper submission must not be stapled or bound;
- (5) All pages of a paper submission must be numbered and exhibits shall be identified in the manner prescribed in § 2.123(g)(2);
- (6) Exhibits pertaining to a paper submission must be filed on paper and comply with the requirements for a paper submission.
- (c) To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to § 2.125(f) must be submitted using the "Confidential" selection available in ESTTA or, where appropriate, under a separate paper cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission for public viewing with the confidential portions redacted must be submitted concurrently.
The rules require that all submissions must be made to the Board via the Internet through ESTTA, subject to certain limited exceptions permitting submissions to be made on paper. Any permitted paper submission must be accompanied by a written explanation showing that ESTTA was unavailable due to technical problems, or that extraordinary circumstances are present, and, where required, a Petition to the Director with the requisite petition fee. [ Note 1.] However, because ESTTA currently does not accept multimedia files, the Board will continue its current practice of accepting the submission of physical DVDs or CDs as exhibits in inter partes proceedings for the limited purpose of allowing parties to submit multimedia evidence, such as commercials. [ Note 2.]
The requirements for electronic submissions over the Internet can be found in 37 C.F.R. § 2.126(a). Submissions over the Internet are made through ESTTA which is available on the USPTO website. [ Note 3.] Using ESTTA, a person can complete and submit forms, with attachments and/or exhibits, to the Board over the Internet, making an official filing online. ESTTA gives step-by-step instructions for properly completing a form. Available forms and instructions can be found at: https://estta.uspto.gov. For more information regarding ESTTA, see TBMP § 110.
The Board requires use of ESTTA for the filing of all submissions in Board proceedings. ESTTA permits round-the-clock filing with real-time receipt confirmation, while reducing delay and the possibility of mishandling of submissions within the USPTO. Many ESTTA filings are processed automatically, with an appropriate Board order issuing within minutes of filing. ESTTA users are strongly urged to plan ahead. Because unexpected problems can occur, users should keep filing deadlines in mind and allow plenty of time to resolve any issue which may arise. The Board will provide general assistance to ESTTA filers but cannot guarantee that any problem will be resolved prior to a deadline. If ESTTA filing is not possible prior to a deadline for any reason, parties should timely submit their filings on paper using another accepted filing method (e.g., certificate of mailing and Priority Mail Express® procedures). See TBMP § 111.02, et seq. (Certificates of Mailing), and TBMP § 111.01, et seq. (Priority Mail Express®). Any paper filing must be accompanied by a written explanation showing that ESTTA was unavailable due to technical problems, or that extraordinary circumstances are present, and, where required, a Petition to the Director with the requisite petition fee. Petitions to file on paper are subject to 37 C.F.R. § 2.146, including the requirement for verified facts.
The requirement for use of ESTTA under all circumstances for the filing of either extensions of time to oppose or notices of opposition against Madrid Protocol applications, i.e., applications under Trademark Act § 66(a), 15 U.S.C. § 1141f(a), further enables the USPTO to fulfill its obligation to timely notify the International Bureau of the World Intellectual Property Organization ("WIPO") of oppositions against requests for extension of protection under the Madrid Protocol. A request for an extension of time to oppose a Madrid Protocol application which is not filed through ESTTA will be denied. Similarly, a notice of opposition not filed through ESTTA against such an application will not be instituted. [ Note 4.]
Filers may call the Board with questions about filing at (571) 272-8500 or (800) 786-9199 (toll free). Alternatively, filers may send non-urgent email inquiries to ESTTA@uspto.gov, and include a description of the problem, the ESTTA tracking number and Board proceeding number (if any), and a telephone number for contact. The Board will respond to email inquiries within two business days. The email address is for technical ESTTA questions only. Documents will not be accepted for filing by email.
The requirements for paper submissions, when permitted, are set out in 37 C.F.R. § 2.126(b). A paper submission must be 8 to 8.5 inches wide and 11 to 11.69 inches long, and printed in at least 11-point type and double-spaced, with the text on one side only of each sheet. Business correspondence margins of one inch are considered standard. If a paper submission contains dividers, the dividers may not contain tabs or any devices that extend beyond the edges of the paper, and must be on the same size and weight paper as the submission.
In addition, a paper submission must not be stapled or bound. This is important because all paper submissions are scanned electronically into the Board’s electronic information system and removing staples or binding prior to scanning is difficult and time-consuming, especially where papers have been bound by machine. Moreover, disassembling stapled or bound papers can damage pages, resulting in jammed scanning equipment and increasing the possibility that pages will become lost or disordered during scanning. [ Note 5.] These are additional reasons why the Board requires all submissions to be made using ESTTA.
Any paper document filed with the Board must be either the original or a legible copy thereof, on good quality paper. [ Note 6.] Extra copies of a document should not be submitted. [ Note 7.]
Exhibits pertaining to an electronic submission must be filed electronically through ESTTA as an attachment to the submission and conform to the requirements for electronic submissions, except when a party needs to submit a multimedia exhibit on CD or DVD. [ Note 8.] When making a submission of an exhibit on CD or DVD, parties are advised to include in the accompanying ESTTA filing a ‘‘placeholder’’ exhibit page to indicate the CD or DVD exhibit, and to mail the CD or DVD to the Board. See TBMP § 110.02(c) regarding size limitations. Exhibits to a submission are also subject to the requirements of 37 C.F.R. § 2.126. A best practice for electronic exhibits in PDF form is to use a separator page for each exhibit and to assign a bookmark to that page with an alpha-numeric designation (such as A, B, C or 1, 2, 3) for easy navigation and location of the exhibit.
Exhibits pertaining to a paper submission, where permitted, must be filed on paper and must comply with the requirements for a paper submission. [ Note 9.]
As with any paper submission, paper exhibits may not contain tabs, dividers or any such devices that extend beyond the edges of the paper, and moreover, may not be stapled or bound. However, it is acceptable to use binder clips or rubber bands, or similar devices that would allow for easy separation of the papers for scanning.
Exhibits that are large, bulky, valuable, or breakable may be photographed or otherwise reproduced so that an appropriate digitized or paper image of the exhibits can be filed with the Board in lieu of the originals. Exhibits consisting of videotapes or audiotapes of commercials, demonstrations, etc., may not be filed electronically.
The requirements for confidential submissions are specified in 37 C.F.R. § 2.126(c). To be handled as confidential, and kept out of the public record, submissions to the Board that are confidential must be filed under a separate cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission with the confidential portions redacted must also be submitted for the public record. [ Note 10.] Confidential materials must be filed through ESTTA using the "CONFIDENTIAL" option. See TBMP § 120.02 and TBMP § 412.04 for information on filing confidential materials.
The Board, in its discretion, may refuse to enter and consider submissions which are not in compliance with 37 C.F.R. § 2.126.
Format of submissions. Apart from the identification, signature, and form requirements referred to above, there is no particular format that submissions to the Board must follow. Nor does the Office have printed forms for any documents filed in Board proceedings. Where possible, parties are encouraged to include a citation to the TTABVUE docket entry and TTABVUE page number, e.g., 1 TTABVUE 2. [ Note 11.] For material or testimony that has been designated confidential and which does not appear on TTABVUE, the TTABVUE docket entry number where such material or testimony is located should be included in any citation. [ Note 12.]
Although there is no particular format that a submission must follow, in large record cases, the Board may direct the parties on the form of submission for exhibits and may direct the parties to prepare and file an appendix in a specific format. [ Note 13.]
NOTES:
1. 37 C.F.R. § 2.126(b); see also 37 C.F.R. § 2.101(b)(2), 37 C.F.R. § 2.102(a)(2), 37 C.F.R. § 2.106(b)(1), 37 C.F.R. § 2.111(c)(2), and 37 C.F.R. § 2.114(b)(1).
2. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69966 (October 7, 2016). See also Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *3 n.4 (TTAB 2020) (a party that wishes to submit audio or video files must record the files on an appropriate medium such as CD-ROM or DVD and physically file it with the Board); The Pierce-Arrow Society v. Spintek Filtration, Inc., 2019 USPQ2d 471774, at *1 n.8 (TTAB 2019) (Board considered video documentary submitted on CD-ROM); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1654-55 (TTAB 2014) (parties may not, by agreement, override Trademark Rule 2.126 provisions for form of submissions; however, video and audio recordings of evidence such as commercials may be submitted on CD-ROM), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 15, 2016).
3. 37 C.F.R. § 2.2(g); 37 C.F.R. § 2.126(a).
4. In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019, 2021 (TTAB 2005).
5. See also RULES OF PRACTICE FOR TRADEMARK-RELATED FILINGS UNDER THE MADRID PROTOCOL IMPLEMENTATION ACT; 68 Fed. Reg. 55748, 55760 (September 26, 2003).
6. See, e.g., 37 C.F.R. § 2.126(a)(2) (must be clear and legible). See also Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba Watermark Cruises, 107 USPQ2d 1750, 1758 n.16 (TTAB 2013) ("the onus is on the party making the submissions to ensure that, at a minimum, all materials are clearly readable by the adverse party and the Board"), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); In re Virtual Independent Paralegals, LLC, 2019 USPQ2d 111512, at *7 n.23 (TTAB 2019) ("the Board will consider evidence, or a portion of the evidence, only if it is clear and legible.").
7. DeLorme Publishing Co. v. Eartha’s Inc., 60 USPQ2d 1222, 1222 n.1 (TTAB 2000) (papers should be filed in single copies only unless otherwise required by rule); ITC Entertainment Group Ltd. v. Nintendo of Am. Inc., 45 USPQ2d 2021, 2022-23 (TTAB 1998) (unnecessary copies and attachments to motions resulted in undue delay and a waste of Board resources); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1708 n.1 (TTAB 1994).
8. 37 C.F.R. § 2.126(a). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69966 (October 7, 2016).
11. Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
12. Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
13. AT&T Mobility LLC v. Thomann, 2020 USPQ2d 53785, at *12 (TTAB 2020) (parties directed to file an appendix of all testimony and documentary evidence, identifying page number and relevance, and to bookmark all exhibits submitted in PDF form by alpha-numeric designation).