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 If, upon the examining attorney’s consideration of the request, all refusals and requirements are not withdrawn, and no appeal or other proper response to the final refusal has been filed during the time provided following issuance of the final action (six months until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.