1219 Review of Final Decision
1219.01 By Request for Reconsideration in Appeal of Refusal of Application
37 C.F.R. § 2.144 Reconsideration of decision on ex parte appeal. Any request for rehearing or reconsideration, or modification of the decision, must be filed within one month from the date of the decision. Such time may be extended by the Trademark Trial and Appeal Board upon a showing of sufficient cause.
For general information concerning requests for rehearing, reconsideration, or modification of a final decision of the Board, see TBMP § 543 and TBMP § 544. What follows below is information pertaining specifically to requests for rehearing, reconsideration, or modification of a final decision of the Board in an ex parte appeal.
An applicant that has filed an ex parte appeal to the Board, received a final decision therein from the Board, and is dissatisfied with that decision, may file a request for rehearing, reconsideration, or modification of the decision. The applicant must file the request within one month from the date of the decision. The time for filing the request may be extended by the Board upon a showing of sufficient cause. [ Note 1.]
The Board may also rehear, reconsider, or modify its final decision, in an ex parte appeal, at the request of the examining attorney. [ Note 2.] The examining attorney must file the request within one month of the date of the final decision, unless the time is extended by the Board upon a showing of sufficient cause. [ Note 3.]
If a request for rehearing, reconsideration, or modification of the Board’s final decision in an ex parte appeal is timely filed, applicant’s time for filing an appeal, or for commencing a civil action for review of the Board’s decision, will expire no later than sixty-three (63) days after action on the request. [ Note 4.] An applicant need not request reconsideration before it files an appeal of the Board’s final decision, but if an applicant requests reconsideration, it must do so before it files a notice of appeal. [ Note 5.] For more information concerning the time for filing a notice of appeal of the Board’s final decision in an ex parte appeal, see TBMP § 902.02 and TBMP § 903.04.
NOTES:
2. See In re Squaw Valley Development Co., 80 USPQ2d 1264, 1266 (TTAB 2006); In re Ferrero S.p.A., 22 USPQ2d 1800, 1800 (TTAB 1992), recon. denied, 24 USPQ2d 1061 (TTAB 1992) (in the absence of statutory or regulatory prohibition, Board has inherent authority to entertain examining attorney’s request for reconsideration); TMEP § 1501.07.
3. See In re Ferrero S.p.A., 24 USPQ2d 1061, 1062 n.1 (TTAB 1992); TMEP § 1501.07.
4. See 37 C.F.R. § 2.145(d)(4).
5. 37 C.F.R. § 2.145(a)(1). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69969 (Oct. 7, 2016) ("The Office is further amending § 2.145(a)(1) to add that it is unnecessary to request reconsideration before filing an appeal of a Board decision, but a party requesting reconsideration must do so before filing a notice of appeal.").
1219.02 By Appeal
An applicant that has filed an ex parte appeal to the Board, received a final decision therein from the Board, and is dissatisfied with that decision, may have remedy by way of an appeal to the United States Court of Appeals for the Federal Circuit, or by way of a civil action for review of the decision of the Board. [ Note 1.] A copy of the notice of appeal must be filed with the Board via ESTTA. [ Note 2.] It is unnecessary to request reconsideration of a final decision before filing any such appeal; however, a party requesting reconsideration must do so before filing a notice of appeal. [ Note 3.]
For information concerning the taking of an appeal from a final decision of the Board, see TBMP § 901, TBMP § 902, and TBMP § 903.
When a decision of the Board affirming a refusal to register in an ex parte case has been appealed to the United States Court of Appeals for the Federal Circuit, the Court, during the pendency of the appeal, may remand the application for further examination and the submission of additional evidence. See TBMP § 1218.
NOTES:
1. Trademark Act § 21, 15 U.S.C. § 1071; 37 C.F.R. § 2.145.
2. 37 C.F.R. § 2.145; MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69969 (Oct. 7, 2016) ("The Office also is amending the provisions in § 2.145 that require copies of notices of appeal, notices of election, and notices of civil action to be file with the Trademark Trial and Appeal Board to specify that such notices must be filed with the Board via ESTTA. These amendments codify the use of electronic filing and enhance the Office’s ability to properly handle applications, registrations, and proceedings while on review in federal court.").
1220 Termination of Appeal of Refusal of Application
When the Board issues a final decision in an ex parte appeal, the Board does not terminate the appeal until after the period to seek judicial review has expired and no review has been sought. If an applicant files an appeal to the Federal Circuit or a civil action, the Board does not act to terminate the ex parte appeal proceeding until after the court review action has been finally determined.
For an appeal to the Federal Circuit, the Board normally will not act until after the mandate issues and the time for petitioning for review to the U.S. Supreme Court has expired with no review being sought, and if U.S. Supreme Court review is sought, until after the Supreme Court denies a petition for certiorari or if it grants certiorari, until after the Supreme Court issues its decision.
For review by civil action, the Board normally will not act until after the period to file an appeal of the district court’s decision to a circuit court of appeals has expired with no appeal being filed. If an appeal of the district court’s decision is filed, then the Board’s termination procedures are the same as those for an appeal to the Federal Circuit.