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 or

a final decision by an examiner in an ex parte expungement proceeding or ex parte

reexamination proceeding upon the payment of the prescribed fee. The Director may

reconsider, and modify or set aside, a decision of the Trademark Trial and Appeal Board

under this section.

37 C.F.R.  Ex parte appeals.

(a)

Appeal from final refusal of

application

. After final refusal by the trademark examining attorney,

an applicant may 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 the time provided in § 2.142(a)(1). A second refusal on the same grounds

may be considered as final by the applicant for the purpose of appeal.

(b)

Appeal from expungement or reexamination proceeding

. After

issuance of a final Office action in an expungement or reexamination proceeding

under § 2.93, a registrant may appeal to the Trademark Trial and Appeal Board,

upon payment of the prescribed fee for each class in the registration for which

the appeal is taken, within the time provided in § 2.142(a)(2).

(c)

Appeal fee required

. The applicant or registrant must pay an

appeal fee for each class for which the appeal is taken.  If an appeal fee is not

paid for at least one class of goods or services before the expiration of the time

for appeal, when the appeal is from a final refusal of an application, the

application will be abandoned or, when the appeal is from an expungement or

reexamination proceeding, the Office will terminate the proceeding. When a

multiple-class application or registration is involved, if an appeal fee is

submitted for fewer than all classes, the applicant or registrant must specify the

class(es) for which the appeal is taken

eal is from a final refusal of an application, the

application will be abandoned or, when the appeal is from an expungement or

reexamination proceeding, the Office will terminate the proceeding. When a

multiple-class application or registration is involved, if an appeal fee is

submitted for fewer than all classes, the applicant or registrant must specify the

class(es) for which the appeal is taken.  If the applicant or registrant 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 or registrant 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 or registrant may either pay

the additional fees or specify the class(es) being appealed.  If the applicant or

registrant 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 the time period for responding to the

Office action from which the appeal is taken.

15 U.S.C.

§1070

;

37 C.F.R. §§2.142(a)(1),

(3)

;

Trademark Trial and Appeal Board

Manual of Procedure

(TBMP)

§1202.03

. See

TMEP §711

regarding the

deadline for response to an Office action and

§711.01

regarding requests

for an extension of time to respond to an Office action with a three-month response period.

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

nd to an Office action with a three-month response period.

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. In addition, an Office action’s mere advisory statement regarding a

potential refusal is not subject to appeal.

In re Harley

, 119 USPQ2d

1755, 1757 (TTAB 2016) (“An advisory statement made by an examining attorney indicating

that a refusal or requirement may issue if specified circumstances arise is not a refusal

to register, let alone a

final

refusal to register, and is therefore not

subject to appeal.”).

The applicant must file the notice of appeal and appeal fee

within the time period for responding to the final refusal.

37 C.F.R.

§2.142(a)(1)

;

TBMP §1202.02

. See

TMEP §711

regarding the

deadline for response to an Office action and

§711.01

regarding requests

for an extension of time to respond to an Office action with a three-month response period.

Notices of appeal must be filed through the Board’s electronic filing system.

37 C.F.R. §2.126

;

TBMP §110

. If the Board’s

electronic filing system is unavailable due to technical problems, or when extraordinary

circumstances are present, the notice of appeal may be filed in paper form.

37 C.F.R. §2.126(b)

. A submission in paper form must

include a written explanation of such technical problems or extraordinary circumstances.

Id.

If filing on paper, the applicant may use a certificate of

mailing or Priority Mail Express® to avoid lateness. See

37 C.F.R.

§2.197

and

§2.198

, and

TMEP §305.02

and

§305.03

regarding

certificate of mailing and Priority Mail Express® procedures and

TBMP §106.03

and

§107

for general information regarding permitted paper

submissions with the Board

hnical problems or extraordinary circumstances.

Id.

If filing on paper, the applicant may use a certificate of

mailing or Priority Mail Express® to avoid lateness. See

37 C.F.R.

§2.197

and

§2.198

, and

TMEP §305.02

and

§305.03

regarding

certificate of mailing and Priority Mail Express® procedures and

TBMP §106.03

and

§107

for general information regarding permitted paper

submissions with the Board. If the applicant does not timely file a notice of appeal and

appeal fee, the application is abandoned.

15 U.S.C.

§1062(b)(2)

. If the applicant’s failure to file a proper notice of

appeal was unintentional, the applicant may file a petition to revive within the deadlines

specified in

37 C.F.R. §2.66(a)

and

subject to the requirements listed in

37 C.F.R. §2.66(b)(3)

(

see

TMEP

§§1714.01(a)(ii)

,

(d)

).

The unintentional delay standard of

37 C.F.R.

§2.66

does not apply to applications that are abandoned due to an

incomplete

response. See

TMEP §§1714.01(f)(ii)–(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

regarding remand during an appeal. See also

TMEP §1504.05

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 from

refusals of applications 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.

See

TMEP §1716.04(e)

and

TBMP

Chapter 1300

for information about ex parte appeals from

expungement and reexamination proceedings.