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 action of trademark examining attorney.
- (a) An applicant may, upon final refusal by the trademark examining attorney, 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 six months of the date of issuance of the final action. A second refusal on the same grounds may be considered as final by the applicant for purpose of appeal.
- (b) The applicant must pay an appeal fee for each class from which the appeal is taken. If the applicant does not pay an appeal fee for at least one class of goods or services before expiration of the six-month statutory filing period, the application will be abandoned. In a multiple-class application, if an appeal fee is submitted for fewer than all classes, the applicant must specify the class(es) in which the appeal is taken. If the applicant 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 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 may either pay the additional fees or specify the class(es) being appealed. If the applicant 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 six months of the date of issuance 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 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 six months of the date of issuance of the final refusal. 37 C.F.R. §2.142(a); TBMP §1202.02. Notices of appeal must be filed through the Electronic System for Trademark Trials and Appeals ("ESTTA") at http://estta.uspto.gov. 37 C.F.R. §2.126. If ESTTA 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 transmission to avoid lateness. See 37 C.F.R. §§2.197 and 2.198, and TMEP §§305.02 et seq., 305.03, and 306.05 et seq. regarding certificate of mailing, Priority Mail Express®, and certificate of transmission procedures. If the applicant does not timely file a notice of appeal and appeal fee, the application is abandoned. 15 U.S.C. §1062(b). 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) and TMEP §1714.01(d)).
Note: 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 et seq. regarding remand during an appeal. See also TMEP §§1504.05 et seq. 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 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.