1501 Appeal to Trademark Trial and Appeal Board
15 U.S.C. §1070
An appeal may be taken to the Trademark Trial and Appeal Board from any final decision of the examiner in charge of the registration of marks upon the payment of the prescribed fee.
37 C.F.R. §2.141 Ex parte appeals from action of trademark examining attorney.
- (a) An applicant may, upon final refusal by the trademark examining attorney, appeal to the Trademark Trial and Appeal Board upon payment of the prescribed fee for each class in the application for which an appeal is taken, within six months of the date of issuance of the final action. A second refusal on the same grounds may be considered as final by the applicant for purpose of appeal.
- (b) The applicant must pay an appeal fee for each class from which the appeal is taken. If the applicant does not pay an appeal fee for at least one class of goods or services before expiration of the six-month statutory filing period, the application will be abandoned. In a multiple-class application, if an appeal fee is submitted for fewer than all classes, the applicant must specify the class(es) in which the appeal is taken. If the applicant timely submits a fee sufficient to pay for an appeal in at least one class, but insufficient to cover all the classes, and the applicant has not specified the class(es) to which the fee applies, the Board will issue a written notice setting a time limit in which the applicant may either pay the additional fees or specify the class(es) being appealed. If the applicant does not submit the required fee or specify the class(es) being appealed within the set time period, the Board will apply the fee(s) to the class(es) in ascending order, beginning with the lowest numbered class.
An appeal from an examining attorney’s action is taken to the Trademark Trial and Appeal Board ("Board"), not to a court. An appeal is taken by filing a notice of appeal and paying the appeal fee within six months of the date of issuance of the action from which the appeal is taken. 15 U.S.C. §1070; 37 C.F.R. §2.142(a). See Trademark Trial and Appeal Board Manual of Procedure ("TBMP") §1202.03.
The Trademark Act gives applicants a right to appeal to the Board after a final action by an examining attorney. 15 U.S.C. §1070. Under 37 C.F.R. §2.141(a), a second refusal on the same grounds or a repeated requirement is considered a final action for purposes of appeal as long as all refusals or requirements are repeated in that action. Appeal from a first refusal or requirement, however, is premature.
The applicant must file the notice of appeal and appeal fee within six months of the date of issuance of the final refusal. 37 C.F.R. §2.142(a); TBMP §1202.02. To expedite processing, the United States Patent and Trademark Office ("USPTO") strongly recommends that applicants file notices of appeal through the Electronic System for Trademark Trials and Appeals ("ESTTA") at http://estta.uspto.gov . If filing on paper, the applicant may use a certificate of mailing or transmission to avoid lateness. See 37 C.F.R. §§2.197 and 2.198, and TMEP §§ 305.02 et seq ., 305.03 , and 306.05 et seq . regarding certificate of mailing, "Express Mail," and certificate of transmission procedures. If the applicant does not timely file a notice of appeal and appeal fee, the application is abandoned. 15 U.S.C. §1062(b). If the applicant’s failure to file a proper notice of appeal was unintentional, the applicant may file a petition to revive under 37 C.F.R. §2.66 ( see TMEP §§1714 et seq .). Note: The unintentional delay standard of 37 C.F.R. §2.66 does not apply to applications that are abandoned due to an incomplete response e.g., a request for reconsideration that is not accompanied by a notice of appeal). See TMEP §§715.03 et seq . regarding requests for reconsideration, and TMEP §§1714.01(f)(ii)–1714.01(f)(ii)(E) regarding situations where the unintentional delay standard does not apply .
In appropriate circumstances, after an appeal is filed either the applicant or the examining attorney can request a remand, or the Board may remand the application to the examining attorney. See TBMP §§1209 et seq . regarding remand during an appeal. See also TMEP §§1504.05 et seq . for further information.
See, generally, 37 C.F.R. §§2.142 and 2.144 and TBMP Chapter 1200 for further information about ex parte appeals to the Board, and 15 U.S.C. §1071, 37 C.F.R. §2.145, and TBMP Chapter 900 regarding appeal to a court from a decision of the Board.
1501.01 Appealable Matter
An applicant who wishes to contest a refusal based on a matter of substance (e.g., a matter arising under §§2, 3, 4, 5, 6, or 23 of the Act of 1946, 15 U.S.C. §§1052, 1053, 1054, 1055, 1056, or 1091), should file an appeal to the Board, not a petition to the Director.
If the only issue in dispute is a question regarding the applicant’s compliance with a technical provision of the Trademark Act or Trademark Rules of Practice, the applicant may file a petition to the Director rather than an appeal. See 37 C.F.R. §§2.63 and 2.146. See also TMEP §1704 and TBMP §1201.05 regarding petitionable matter versus appealable matter.
An examining attorney’s requirement that is the subject of a petition decided on the merits by the Director may not subsequently be the subject of an appeal to the Board. 37 C.F.R. §2.63(b).
1501.02 Appeal Briefs
1501.02(a) Applicant’s Appeal Brief
The applicant must file an appeal brief within 60 days of the date of the appeal, or the Board may dismiss the appeal. 37 C.F.R. §2.142(b)(1). See In re Live Earth Products Inc. , 49 USPQ2d 1063 (TTAB 1998). If the appeal is dismissed, the applicant may file a motion with the Board to set aside the dismissal and accept a late-filed brief. Applicant may also file a motion to accept a late-filed brief when the time for filing the brief has expired but the Board has not yet issued an order dismissing the appeal. If the Board denies the motion, the applicant may file a petition to the Director under 37 C.F.R. §2.146, asking the Director to review the Board’s action. The Director will reverse the Board’s action only if the Board clearly erred or abused its discretion. An applicant should not file a petition to the Director until it has first filed a request/motion to accept the late-filed brief with the Board, and the Board has denied the request/motion. TBMP §1203.02(a). The applicant may not file a petition to revive under 37 C.F.R. §2.66 when an appeal is dismissed for failure to file a brief. TMEP §1714.01(f)(ii)(E) .
The date of appeal for purposes of calculating the due date of the appeal brief is the date on which the notice of appeal and filing fee is received by the USPTO. If the applicant has also filed a request for reconsideration under 37 C.F.R. §2.64, the Board will acknowledge receipt of the appeal and request, suspend further proceedings (including applicant’s time for filing its appeal brief), and remand the application to the examining attorney. See TBMP §§1203.02(a) and 1204 for further information. The filing of a request for reconsideration within six months of a final Office action will automatically result in a suspension of the appeal, and an applicant need not file either its appeal brief or a request for an extension of time to file the brief. See TBMP §1204.
The applicant’s brief may not exceed twenty-five double-spaced pages in length, and should meet the requirements of 37 C.F.R. §2.126. 37 C.F.R. §2.142(b)(2); TBMP §1203.01. See In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (Board refused to consider applicant’s 29-page brief).
1501.02(b) Examining Attorney’s Appeal Brief
After the applicant’s brief has been filed, the Board will send a notice to the examining attorney. The examining attorney has sixty days from the date of the Board’s notice to file a responsive brief with the Board and send a copy to the applicant. 37 C.F.R. §2.142(b)(1). See TBMP §1203.02(b).
The examining attorney’s appeal brief should be concise and contain a complete statement of reasons for the refusal(s) or requirement(s) and supporting facts.
Examining attorneys should use the format shown in Appendix A as a model when preparing an appeal brief. The purpose of this format is to promote consistency and to provide content guidelines. The substance of the appeal brief is a matter of individual discretion.
The brief may not exceed twenty-five double-spaced pages in length. 37 C.F.R. §2.142(b)(2); TBMP §1203.01. See In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (Board refused to consider applicant’s 29-page brief).
Because the record must be complete prior to appeal, the Board will normally not consider evidence submitted with the applicant's or examining attorney's brief. However, if the applicant does submit such evidence, the examining attorney should specifically object to such evidence if he or she does not want it to be considered. If the examining attorney does not object to the evidence, and discusses it in his or her brief or elsewhere in the record, the Board will treat it as of record. 37 C.F.R. §2.142(d); TBMP §1207.03; TMEP §710.01(c) . See In re Broyhill Furniture Industries, Inc. , 60 USPQ2d 1511, 1513 n.3 (TTAB 2001).
If, during the preparation of the appeal brief, the examining attorney determines that jurisdiction should be restored for further examination (e.g., to make a new refusal, to correct informalities, or to suspend), the examining attorney should submit a request for remand instead of an appeal brief. See TMEP §1504.05 . If the Board grants the examining attorney’s request, the Board will stay further proceedings in connection with the appeal. If the Board denies the request, it will reset the time for submission of the examining attorney’s appeal brief.
1501.02(c) Reply Briefs in Ex Parte Appeals
The applicant may file a brief in reply to the examining attorney’s appeal brief. Reply briefs must be filed within twenty days of the date of issuance of the examining attorney’s brief. 37 C.F.R. §2.142(b)(1). The examining attorney may not file a written response to the reply brief. However, in the oral argument (if the applicant requests an oral argument), the examining attorney should respond to any significant issues raised in the applicant’s reply brief.
1501.03 Withdrawal of Refusal or Requirement After Appeal
If, after considering the applicant’s brief or reply brief, the examining attorney believes that the requirement or refusal should be withdrawn, the examining attorney should withdraw the requirement or refusal and approve the application for publication or issue, if it is otherwise in condition for such action. The examining attorney should notify the applicant by telephone or e‑mail that the requirement or refusal is withdrawn, and should enter an appropriate Note to the File in the record. This may be done at any time before the Board’s decision on appeal. It is not necessary to notify the Board that the refusal or requirement has been withdrawn.
If there is more than one ground of refusal and one ground should be withdrawn, that refusal should be withdrawn and the appeal should go forward on the remaining ground(s). The following language should be included in the examining attorney’s brief, informing the applicant of the withdrawal of the refusal or requirement:
The examining attorney acknowledges receipt of the applicant’s appeal brief. The examining attorney has withdrawn [specify the refusal or requirement].
1501.04 Fee for Appeal
When filing an ex parte appeal to the Board from the refusal of the examining attorney to register a mark, the applicant must pay a fee for each class in the application for which the appeal is taken. 37 C.F.R. §2.141(b).
The fee for at least one class of goods/services must be paid before expiration of the six-month statutory filing period, or the application is abandoned. If the fee filed with the appeal is sufficient for at least one class of goods/services but insufficient for all the classes in a multiple-class application, and the applicant has not specified the class(es) to which the fee applies, the Board will notify the applicant of the defect, and will set a time limit in which the applicant may either pay the additional fee(s), or limit the appeal to the number of classes for which the fee(s) have been paid. If the applicant does not submit the required fee(s) or specify the class(es) to which the fee applies within the time set in the notice, the fee submitted will be applied to the classes in ascending order, beginning with the lowest-numbered class and including the number of classes in the application for which sufficient fees have been submitted. See 37 C.F.R. §2.141(b); TBMP §1202.04.
1501.05 Amendment During Appeal
If the applicant files an amendment after filing a timely notice of appeal, the examining attorney may not act on it without authorization from the Board, because jurisdiction over the application is with the Board after a notice of appeal is filed. In appropriate cases, the Board may remand the case to the examining attorney to consider the matter presented in the document, with appropriate instructions to the examining attorney regarding consideration of the document and disposition of the case after such consideration. TBMP §1205.
If an application is remanded to the examining attorney to consider an amendment, and the examining attorney determines that the amendment places the application in condition for publication or issue, the examining attorney should notify the applicant by telephone or e-mail that the amendment has been entered, and that the amendment renders the appeal moot. It is not necessary to notify the Board.
1501.06 Amendment After Decision on Appeal
An examining attorney may not take action in an application after the Board has rendered a decision on appeal, because the examining attorney does not have jurisdiction over the application. See In re U.S. Catheter & Instrument Corp. , 158 USPQ 54, 55 n.3 (TTAB 1968). After a decision on appeal, the applicant may petition the Director under 37 C.F.R. §2.142(g) to reopen prosecution of the application. If the petition is granted, jurisdiction is restored to the examining attorney to take the specified action.
A petition to reopen prosecution of the application could be granted if the appeal involved the applicant’s compliance with a requirement rather than a refusal based on the nature of the mark. See In re Hickory Mfg. Co. , 183 USPQ 789 (Comm’r Pats. 1974). However, the Director will deny a petition to reopen prosecution if granting the petition would require further examination (e.g., to consider a claim of acquired distinctiveness under 15 U.S.C. §1052(f) or an amendment to the Supplemental Register). See In re Petite Suites Inc. , 21 USPQ2d 1708 (Comm’r Pats. 1991); In re Vycom Electronics Ltd. , 21 USPQ2d 1799 (Comm’r Pats. 1986); In re Mack Trucks, Inc. , 189 USPQ 642 (Comm’r Pats. 1976). See also TBMP §1218 and cases cited therein.
1501.07 Examining Attorney’s Request for Reconsideration
In In re Ferrero S.p.A ., 22 USPQ2d 1800 (TTAB 1992), recon. denied , 24 USPQ2d 1061 (TTAB 1992), an augmented panel of the Board expressly overruled prior precedent and held that an examining attorney may request reconsideration of a Board decision reversing the examining attorney in an ex parte appeal.
The examining attorney’s request must be filed within one month from the date of the Board’s decision. 37 C.F.R. §2.144. No new evidence can be introduced with the request. The request should point out any errors of fact or law in the Board’s decision.
To request reconsideration, the examining attorney must prepare a request and a supporting brief and submit the request to the managing attorney for concurrence in the decision to seek reconsideration. If the managing attorney concurs, the managing attorney will submit the request for reconsideration and brief to the Administrator for Trademark Policy and Procedure for approval.
If the Administrator approves the request, the examining attorney will file the request with the Board and send a copy to the applicant. The Board will set an appropriate time for the applicant to respond to the request. The examining attorney may not file a reply brief in response to the applicant’s brief.