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 Prods. 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 firstfiled 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. §2.63(b)(3), 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). When referring to the record, the examining attorney is encouraged to include a citation to the Trademark Status and Document Retrieval database (TSDR). The citation format may be by date, description of filing, and page number, for example: November 4, 2013 Office Action, TSDR p. 2. See TBMP §1203.01.
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 Indus., 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.