705.05    Citation of Decisions and USPTO Publications

In addition to the Trademark Act of 1946, as amended, and the Trademark Rules of Practice, examination is also governed by precedential decisions in prior cases. See TBMP §§101.01, 101.03. These decisions include those from the United States Supreme Court, precedential decisions from the Court of Appeals for the Federal Circuit (Federal Circuit) (which has exclusive jurisdiction over direct appeals from decisions of the Trademark Trial and Appeal Board (Board) and the Court of Customs and Patent Appeals (the predecessor of the Federal Circuit), precedential decisions of the Board, and the Director of The U.S. Patent and Trademark Office (formerly the Commissioner of Patents and Trademarks) (Director), who determines petitions on examination procedural matters, among other things. TBMP §101.03.

"Decisions of the Board, the Director, [] the . . . Federal Circuit [and the Supreme Court] appear in the United States Patents Quarterly (USPQ), Bloomberg Law database, and may also be found in LexisNexis Corporation’s LEXIS/NEXIS legal database and in the Intellectual Property Library of ThomsonReuters Corporation’s WESTLAW database." Id. (internal footnote omitted). Also, final Board decisions are available by accessing the TTAB Reading Room electronic database at https://ttab-reading-room.uspto.gov/efoia/efoia-ui/#/search/decisions  on the USPTO website. Id.

In addition, docket information and images of Board files may be viewed by accessing TTABVUE at http://ttabvue.uspto.gov/ttabvue/. Id.

When citing court or administrative decisions, the United States Patents Quarterly (USPQ or USPQ2d) citation should be given.  If possible, a parallel citation to the United States Reports (U.S.), Federal Reporter (F., F.2d, or F.3d), or Federal Supplement (F. Supp. or F. Supp. 2d) should also be given.  The court or tribunal (U.S., Fed. Cir., C.C.P.A., TTAB, 2d Cir., etc.) and the date of the decision should always be given.

Precedential Board Decisions. Decisions designated by the Board as "Citable as Precedent," "Precedent of the Board," "Precedent of the TTAB," or "for publication in full" are citable as precedent and a United States Patents Quarterly citation should be given. TBMP §101.03.

Non-precedential Board Decisions.  Prior to January 23, 2007, it was the Board's policy that its opinions not designated as precedential should not be cited and, if cited, were to be disregarded. See, e.g., In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1897 n.2 (TTAB 2001); In re Polo Int’l Inc., 51 USPQ2d 1061, 1063 n.3 (TTAB 1999);   Gen. Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1275 n.9 (TTAB 1992) Since that date, the Board has changed that policy and permitted citation to any Board decision. TBMP §§101.03, 1203.02(f); see generally Citation of Ops. to the Trademark Trial & Appeal Bd., OG Notice (Jan. 23, 2007). Although Board decisions designated as not precedential are not binding upon the Board, they may be cited and considered for whatever persuasive value they might have. In re UST Glob. (Sing.) Pte. Ltd., 2020 USPQ2d 10435, at *7 n.23 (TTAB 2020) (citing In re Soc’y of Health & Physical Educators, 127 USPQ2d 1584, 1587 n.7 (TTAB 2018)); TBMP §§101.03, 1203.02(f). However, the Board does not encourage the practice of citing non-precedential decisions. TBMP §§101.03, 1203.02(f).

When citing to an unpublished decision of the Board, if the decision does not appear in the United States Patents Quarterly or the USPTO’s public electronic databases, the examining attorney should append the decision to the Office action; otherwise, citation may be to TTABVUE by docket entry and page number. TBMP §§101.03, 1203.02(f).

USPTO Publications. The examining attorney may cite sections of the Trademark Manual of Examining Procedure (TMEP) or Trademark Trial and Appeal Board Manual of Procedure  (TBMP).  The abbreviations TMEP and TBMP are usually sufficient; however, if the person prosecuting the application appears to be unfamiliar with USPTO practice, the examining attorney may identify the Manuals by their full names in the first citation to the Manuals.  It is not necessary to provide a copy of the relevant section(s) of the Manuals.

When the examining attorney cites a Director’s order or notice, the examining attorney should provide the title and date of the notice, and the specific issue of the Trademark Official Gazette in which it may be found.