1303 Appeal Briefs in Expungement or Reexamination Proceeding
1303.01 Form of Brief
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.
37 C.F.R § 2.142 Time and manner of ex parte appeals.
(b)(2) Briefs must meet the requirements prescribed in § 2.126, except examining attorney submissions need not be filed through ESTTA. Without prior leave of the Trademark Trial and Appeal Board, a brief shall not exceed twenty-five pages in length in its entirety, including the table of contents, index of cases, description of the record, statement of the issues, recitation of the facts, argument, and summary. A reply brief from the appellant, if any, shall not exceed ten pages in length in its entirety. Unless authorized by the Board, no further briefs are permitted.
(b)(3) Citation to evidence in briefs should be to the documents in the electronic record for the subject application or registration by date, the name of the paper under which the evidence was submitted, and the page number in the electronic record.
Guidance regarding the form of appeal briefs in TBMP § 1203.01 may be applied to appeals in expungement and reexamination proceedings.
In appeals in expungement and reexamination proceedings, the brief should indicate that it is an appeal brief, and include information identifying the expungement or reexamination proceeding number in which it is filed, the registrant’s name, the registration number, and the mark. When referring to the record, the registrant and examining attorney should cite to the proceeding record, currently the TSDR database. Citation format should be by date, name of the paper under which the evidence was submitted and the page number in the electronic record, for example: November 4, 2013 Office Action, TSDR p. 2. The Examining Attorney and the registrant may cite to the TSDR record in .pdf format, but must indicate that they are doing so in their brief. [ Note 1.] Where appropriate, reference to the TTABVUE entry and page number, e.g., 1 TTABVUE 2, should also be used. [ Note 2.]
NOTES:
1. Cf. In re United Trademark Holdings, Inc., 122 USPQ2d 1796, 1797 n.5 (TTAB 2017) (Board in its opinion cited to the TSDR record in .pdf format).
2. 37 C.F.R § 2.142(b)(3). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69968 (Oct. 7, 2016) ("The Office is adding new § 2.142(b)(3) to specify that citation to evidence in briefs should be to the documents in the electronic application record by date, the name of the paper under which the evidence was submitted, and the page number in the electronic record. The amendment is intended to facilitate review of record evidence by the applicant, the examining attorney, the Board, and the public.").
1303.02 Time for Filing Brief
1303.02(a) Registrant’s Main Brief
37 C.F.R § 2.142 Time and manner of ex parte appeals.
(b)(1) The brief of appellant shall be filed within sixty days from the date of appeal. If the brief is not filed within the time allowed, the appeal may be dismissed. The examining attorney shall, within sixty days after the brief of appellant is sent to the examining attorney, file with the Trademark Trial and Appeal Board a written brief answering the brief of appellant and shall email or mail a copy of the brief to the appellant. The appellant may file a reply brief within twenty days from the date of mailing of the brief of the examining attorney.
A Registrant’s main brief in an ex parte appeal to the Board must be filed within sixty days from the date of appeal, or within an extension of time for that purpose, with the requisite fees, if applicable. [ Note 1.] The time for filing the brief is set by rule; filing the notice of appeal through ESTTA automatically generates an acknowledgment; however, in the rare circumstances a notice of appeal is filed in paper with the required written explanation, although the Board attempts to send the Registrant an acknowledgement of the receipt of the notice of appeal which indicates the date the brief is due, the failure to receive such acknowledgement does not affect the deadline for such filing. [ Note 2.] If no brief is filed, the appeal will be dismissed. [ Note 3.] If the brief is filed late, the Registrant will be allowed an opportunity to submit an explanation for the late filing; in the absence of an adequate explanation, the appeal will be dismissed. The determination of whether to accept the brief will depend on the circumstances, including the length of time after the due date that the brief is filed, and the reason for the delay.
If the appeal is dismissed for failure to file a timely brief and no timely request to vacate the dismissal has been filed, the Registrant’s recourse is to file a petition to the Director under the provisions of 37 C.F.R § 2.146(a)(3). Because such a petition invokes the supervisory authority of the Director, it is determined under the clear error/abuse of discretion standard, that is, whether the Board has committed clear error or abused its discretion in its determination not to accept the late-filed brief. [ Note 4.] The registrant should not file a petition to the Director until it has first filed with the Board a request/motion to accept the late-filed brief, which must be filed within 30 days of dismissal, and that request/motion has been denied.
In the rare circumstances a notice of appeal (accompanied by the required fee) is filed in paper with the required written explanation and with a certificate of mailing by first-class mail pursuant to 37 C.F.R § 2.197, or the Priority Mail Express® procedure described in 37 C.F.R § 2.198, the date of mailing specified in the certificate will be used for determining the timeliness of the notice of appeal. However, the actual date of receipt of the notice of appeal in the Office will be used for all other purposes, including the running of the time for filing the registrant’s main brief. [ Note 5.] TBMP § 1101.01 and TBMP § 111.02.
The following applies to situations in which a registrant files a notice of appeal when it has also filed a timely request for reconsideration. When the registrant files its notice of appeal through ESTTA, it should check the box that indicates that a request for reconsideration is also being filed. ESTTA will electronically generate the order acknowledging receipt of the appeal and request, suspend further proceedings (including the registrant’s time for filing its appeal brief) with respect to the appeal, and remanding to the examining attorney for consideration of the request. The request for reconsideration should be filed through TEAS. In the rare circumstances the notice of appeal is a paper submission, the notice of appeal should indicate, in the body of the appeal, that there is a pending request for reconsideration; if a request for reconsideration is being filed contemporaneously with the paper submission of the notice of appeal, it should accompany the notice of appeal. When the written explanation for paper filing is acceptable, proceedings in the appeal will automatically be suspended when a request for reconsideration is pending; the registrant should not file its appeal brief within sixty days of the filing of the notice of appeal, as provided by 37 C.F.R § 2.142(b)(1), even if the Board has not issued its order suspending proceedings prior to the date the appeal brief would otherwise be due. Nor does the registrant need to verify with the Board that the due date for its brief will be changed if necessary. [ Note 6.]
If the examining attorney denies the request for reconsideration, proceedings with respect to the appeal if instituted will be resumed; and the registrant will be allowed time in which to file its appeal brief if one has not already been filed.
NOTES:
1. 37 C.F.R § 2.6(a)(18)(iii), 37 C.F.R § 2.6(a)(18)(iv), 37 C.F.R § 2.6(a)(18)(v), 37 C.F.R § 2.6(a)(18)(vi), and 37 C.F.R § 2.6(a)(18)(vii). Please Note: there is no fee for filing the first request to extend time to file an appeal brief. 37 C.F.R § 2.6(a)(18)(iii).
2. See In re Live Earth Products Inc., 49 USPQ2d 1063, 1064 (TTAB 1998). See also 37 C.F.R § 2.126(b); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69966 (Oct. 7, 2016) ("In these situations, parties should consider any such paper filing accepted unless the Board indicates otherwise. … The Board will review the explanation accompanying the paper filing in its consideration of the filing, and submissions that do not meet the technical problems or extraordinary circumstances showing will not be considered.").
4. See TMEP § 1706.
5. See 37 C.F.R § 2.197; 37 C.F.R § 2.198.
6. See In re Live Earth Products Inc., 49 USPQ2d 1063, 1064 (TTAB 1998).
1303.02(b) Trademark Examining Attorney’s Brief
When the registrant’s main appeal brief has been received by the Board, the Board sends the case to the examining attorney for preparation of a brief. Within 60 days after the date of the Board’s written order forwarding the case to the examining attorney, or within an extension of time for the purpose, the examining attorney must file an appeal brief answering the registrant’s main brief. [ Note 1.] The examining attorney must also send a copy of the brief to the registrant. [ Note 2.] If the examining attorney’s brief is late-filed, the Board may exclude it in the absence of an adequate explanation for the late filing. [ Note 3.] An examining attorney’s failure to file a brief will not result in the reversal of the decision in the expungement or reexamination proceeding; the Board will simply decide the appeal without the benefit of the brief.
NOTES:
1. 37 C.F.R § 2.142(b)(1). See In re Wells Fargo & Co., 231 USPQ 106, 107 n.2 (TTAB 1986); In re Tennessee Walking Horse Breeders’ and Exhibitors’ Association, 223 USPQ 188 n.3 (TTAB 1984). See also In re Miller Brewing Co., 226 USPQ 666, 667 n.4 (TTAB 1985).
2. 37 C.F.R § 2.142(b)(1). See In re De Luxe N.V., 990 F.2d 607, 26 USPQ2d 1475, 1476 n.3 (Fed. Cir. 1993).
3. See In re Tennessee Walking Horse Breeders’ and Exhibitors’ Association, 223 USPQ 188, 188 n.3 (TTAB 1984).
1303.02(c) Registrant’s Reply Brief
Guidance in TBMP § 1203.02(c) regarding an applicant’s reply brief generally may be applied to the registrant’s reply brief in appeals in expungement and reexamination proceedings.
1303.02(d) Extension of Time for Filing Brief
Guidance in TBMP § 1203.02(d) regarding an extension of time for filing a brief generally may be applied in appeals in expungement and reexamination proceedings.
1303.02(e) Material May Not Be Submitted with Briefs
37 C.F.R § 2.142(d) The record should be complete prior to the filing of an appeal. Evidence should not be filed with the Board after the filing of a notice of appeal.
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- (2) In an appeal from an expungement or reexamination proceeding, no additional evidence may be included once an appeal is filed, and the Board may not remand for further examination.
It is not necessary to attach as exhibits to a brief evidence that is already in the record. Such evidence should not be resubmitted as exhibits to the brief. In ex parte appeals from expungement or reexamination proceedings, the record may not be supplemented, and the Board may not remand to allow for the introduction of additional evidence. [ Note 1.]
NOTES:
1303.02(f) Cases That May Be Cited
Guidance in TBMP § 1203.02(f) may be applied to appeals in expungement and reexamination proceedings.
1303.02(g) Waiver of Claim or Requirement in Brief
Guidance in TBMP § 1203.02(g) may be applied to appeals in expungement and reexamination proceedings.