T.M.E.P. § 705.05
Citation of Decisions and Office Publications

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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705.05 Citation of Decisions and Office Publications

When citing court or administrative decisions, the United States Patents Quarterly (USPQ or USPQ2d) citation should be given. If convenient, a parallel citation to the United States Reports (U.S.), Federal Reporter (F., F.2d, or F.3d) or Federal Supplement (F. Supp. or F. Supp.2d) should also be given. The court or tribunal (2d Cir., C.C.P.A., Fed. Cir., TTAB, etc.) and the date of the decision should always be given.

The examining attorney may cite sections of the Trademark Manual of Examining Procedure ("TMEP") or Trademark Trial and Appeal Board Manual of Procedure ("TBMP"). The abbreviations "TMEP" and "TBMP" are usually sufficient; however, if the person prosecuting the case appears to be unfamiliar with Office practice, the examining attorney should identify the Manuals by their full names in the first citation to the Manuals. It is not necessary to provide a copy of the relevant section(s) of the Manuals.

When the examining attorney cites a Director's order or notice, the examining attorney should provide the title and date of the notice, and the specific issue of the Official Gazette in which it may be found.

Unpublished decisions that are not available to the public should not be cited. Regarding citation of "unpublished" or "digest" decisions, the Trademark Trial and Appeal Board has stated as follows:

Upon reflection the Board has decided that citation of "unpublished" or "digest" Board decisions as precedent will no longer be allowed. In the future, the Board will disregard citation as precedent of any unpublished or digest decision. Even if a complete copy of the unpublished or digest decision is submitted, the Board will disregard citation as precedent thereof. An exception exists, of course, for those situations in which a party is asserting issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Board rendered in a nonprecedential (i.e., unpublished or digest) decision.

General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1275 n.9 (TTAB 1992).

This policy applies to both ex parte and inter partes cases. Accordingly, examining attorneys should not cite unpublished or digest decisions as precedent in Office actions or appeal briefs, and should not send informational copies of unpublished decisions with Office actions.