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

issue 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. The examining attorney's appeal brief must not incorporate by

reference any argument made in previous Office actions.

See

In re Princeton Equity Grp. LLC

, Ser. No. 97397212, 2025 TTAB

LEXIS 242, at *9 (2025) ("Parties whose briefs purport to incorporate by reference

arguments made during prosecution will be held to have failed thereby to present

whatever arguments the incorporation statement purports to cover to the Board and

will be deemed to have forfeited them").

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 25 double-spaced pages in

length.

37 C.F.R. §2.142(b)(2)

;

TBMP §1203.01

;

see

In re Thomas

, Ser. No. 78334625, 2006 TTAB LEXIS 135 (2006) (Board

refused to consider applicant’s 29-page brief). When referring to the record, the

examining attorney should cite to the electronic record for the application,

currently the Trademark Status and Document Retrieval (TSDR) system. The citation

format should be by date, name of the paper under which the evidence was submitted,

and the page number in the electronic record, for example, November 4, 2013 Office

Action, TSDR p. 2. Where appropriate, reference to the TTABVUE entry and page number

should also be used, for example, 1 TTABVUE 2.

See

TBMP §1203.01

.

The record in the application should be complete prior

to appeal.

37 C.F.R.

§2.142(d)

;

In re Jimenez

, Ser. No

of the paper under which the evidence was submitted,

and the page number in the electronic record, for example, November 4, 2013 Office

Action, TSDR p. 2. Where appropriate, reference to the TTABVUE entry and page number

should also be used, for example, 1 TTABVUE 2.

See

TBMP §1203.01

.

The record in the application should be complete prior

to appeal.

37 C.F.R.

§2.142(d)

;

In re Jimenez

, Ser. No. 97551823,

2025 TTAB LEXIS 441, at *5 (2025);

In re Weiss

, Ser. No. 88621608,

2024 TTAB LEXIS 277, at *4 (2024);

TBMP §1207.01

;

TMEP

§710.01(c)

;

see

In re ADCO Indus.-Techs., L.P.

, Ser. No. 87545258, 2020 TTAB LEXIS

7, at *4-5 (2020). Examining attorneys should not resubmit with the brief any

evidence that is already in the application record.

In re Virtual Indep.

Paralegals, LLC

, Ser. No. 86947786, 2019 TTAB LEXIS 74, at *2-3 (2019)

(“multiple submissions of the same evidence can cause confusion in reviewing the

record and unnecessary delay in issuing a final decision”). Any exhibits attached to

a brief that were not made of record during examination are untimely, and generally

will not be considered.

See

In re tapio GmbH

, Ser. No. 87941532, 2020 TTAB LEXIS 483, at *7-10

(2020);

In re Medline Indus., Inc.

, Ser. No. 87680078, 2020 TTAB

LEXIS 16, at *8-9 (2020) (citing

In re Inn at St. John’s, LLC

,

Ser. No. 87075988, 2018 TTAB LEXIS 170, at *4 (2018),

aff’d per

curiam

, 777 F. Appx 516 (Fed. Cir. 2019));

TBMP §§1203.02(e)

,

1207.01 n.1

. However, if the applicant does

submit such evidence, an examining attorney should specifically object to such

evidence if the examining attorney does not want it to be considered.  If examining

attorneys do not object to untimely evidence, and discuss it in their brief or

elsewhere in the record, the Board may treat it as of record.

TBMP §1207.03

;

TMEP

§710.01(c)

;

see In re City of Hous.

,

Ser. No. 77660948, 2012 TTAB LEXIS 1, at *5 (2012) (citing

In re Broyhill

Furniture Indus., Inc.

, Ser. No. 75473959, 2001 TTAB LEXIS 612, at *6

n.3 (2001)),

aff’d,

731 F.3d 1326 (Fed. Cir

examining

attorneys do not object to untimely evidence, and discuss it in their brief or

elsewhere in the record, the Board may treat it as of record.

TBMP §1207.03

;

TMEP

§710.01(c)

;

see In re City of Hous.

,

Ser. No. 77660948, 2012 TTAB LEXIS 1, at *5 (2012) (citing

In re Broyhill

Furniture Indus., Inc.

, Ser. No. 75473959, 2001 TTAB LEXIS 612, at *6

n.3 (2001)),

aff’d,

731 F.3d 1326 (Fed. Cir. 2013).

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, to suspend, or

good cause exists to introduce additional evidence), 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.