1312 Review of Final Decision in Appeals from Expungement and Reexamination Proceedings
1312.01 By Request for Reconsideration
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 is information pertaining specifically to requests for rehearing, reconsideration, or modification of a final decision of the Board in an ex parte appeal.
A registrant 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 registrant 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, the registrant’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.] A registrant need not request reconsideration before it files an appeal of the Board’s final decision, but if a registrant 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 § 1312.02.
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).
3. See In re Ferrero S.p.A., 24 USPQ2d 1061, 1062 n.1 (TTAB 1992).
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.").
1312.02 By Appeal to the United States Court of Appeals for the Federal Circuit
A registrant that has filed an ex parte appeal to the Board from an expungement or reexamination proceeding, 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. [ Note 1.] The determination by the Director to institute the proceeding is final and nonreviewable, and so cannot be the subject of judicial review. [ Note 2.] No remedy by civil action is available from ex parte appeals to the Board from expungement and reexamination proceedings. [ Note 3.]
A copy of the notice of appeal to the Federal Circuit must be filed with the Board via ESTTA, and with the Director, addressed to the Office of the General Counsel. [ Note 4.] 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 5.]
For information concerning the taking of an appeal to the Federal Circuit from a final decision of the Board, see TBMP § 902. For general information on the taking of an appeal from a final decision of the Board, see TBMP § 901.
NOTES:
1. Trademark Act § 21, 15 U.S.C § 1071; 37 C.F.R § 2.145(a).
2. 15 U.S.C § 1066A(c)(3); 15 U.S.C § 1066B(c)(3).
3. See 15 U.S.C § 1071(b)(1); 37 C.F.R § 2.145(c).
4. 37 C.F.R § 2.145(a)(2); 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.").