T.M.E.P. § 1501
Appeal to Trademark Trial and Appeal Board

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

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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 the Examiner of Trademarks. Every applicant for the registration of a mark may, upon final refusal by the Examiner of Trademarks, 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. An appeal which includes insufficient fees to cover all classes in the application should specify the particular class or classes in which appeal is taken. A second refusal on the same grounds may be considered as final by the applicant for purpose of appeal.

An appeal from an examining attorney's action is taken to the Trademark Trial and Appeal 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 mailing date 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 Trademark Trial and Appeal Board after a final action by an examining attorney. 15 U.S.C. 1070. Under 37 C.F.R. 2.141, an applicant may consider a second refusal on the same grounds or a repeated requirement to be final for the purpose of appeal. Appeal from a first refusal or requirement, however, is premature.

The applicant must file the notice of appeal and appeal fee within six months from the mailing date of final refusal. 37 C.F.R. 2.142(a); TBMP §1202.02. If the applicant does not timely file a notice of appeal and appeal fee, the application is abandoned. 15 U.S.C. 1062(b). See 37 C.F.R. §§2.197 and 2.198, and TMEP §§305.02 , 305.03 and 306.05 et seq. regarding certificate of mailing, certificate of transmission and "Express Mail" procedures to avoid lateness. 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.)

When an applicant files a notice of appeal, Office personnel must refer the notice and application record to the Trademark Trial and Appeal Board. In appropriate circumstances, the Board will remand the application to the examining attorney. See TBMP §§1204 and 1209. Where the Board initiated the remand, the examining attorney must take action upon the remanded issue within 30 days. See 37 C.F.R. 2.142(f)(1).

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. 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 that request/motion has been denied. TBMP §1203.02(a). The applicant cannot 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).

The date of appeal for purposes of calculating the due date of the appeal brief is the date the notice of appeal and filing fee is received by the Office. If the applicant has also filed a request for reconsideration under 37 C.F.R. 2.142, the appeal is considered suspended until the examining attorney acts upon the request for reconsideration, returns the file to the Board, and the Board resets the time for applicant to file its appeal brief. See TBMP §1204.

See 37 C.F.R. §§2.142 and 2.144 and TBMP Chapter 1200 for further information about ex parte appeals to the Trademark Trial and Appeal Board.

See 37 C.F.R. 2.145 and TBMP Chapter 900 regarding appeal to a court from the decision of the Trademark Trial and Appeal Board.