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 (Supreme Court) and precedential decisions from the Court of Appeals for the Federal Circuit (Federal Circuit) (which determines appeals from decisions of the Trademark Trial and Appeal Board (Board)), the Court of Customs and Patent Appeals (the predecessor of the Federal Circuit), the Board, and the Director of The United States Patent and Trademark Office (formerly the Commissioner of Patents and Trademarks) (Director) (who determines petitions on examination procedural matters, among other things). See TBMP §101.03.

Decisions of the Supreme Court, the Federal Circuit, the Board, and the Director appear in the Bloomberg Law database as the United States Patent Quarterly (USPQ) 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. Recent, and a certain number of older, 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. In addition, docket information and images of Board files may be viewed by accessing TTABVUE at http://ttabvue.uspto.gov/ttabvue/.

Precedential Court Decisions. When citing to court decisions, citation should be to the appropriate reporter, such as the Federal Reporter or the Federal Supplement, preferably with the pinpoint cite. Parallel citations are permitted.

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. TBMP §101.03.

Citation to precedential Board decisions may be to the USPQ, LEXIS/NEXIS, or Westlaw. The serial number or registration number for appeal cases and the proceeding number for trial cases should be included. If the submitting party does not have any access to legal research databases, citation may be made to a USPTO public electronic database containing the decision (e.g., TTABVUE), indicating the relevant docket entry and page. The citation should include the serial number or registration number for appeal cases and the proceeding number for trial cases.

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 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. See TBMP §§101.03, 1203.02(f).

When citing to an unpublished decision of the Board in an Office action, if the decision does not appear in 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. When citing to an unpublished decision of the Board in a brief, the examining attorney should append the decision to the brief, if it is not already in the record. TBMP §§101.03, 1203.02(f). Any nonprecedential cases referenced must be clearly identified as nonprecedential.

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.