TMEP § 1501
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.
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. 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. 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.
An applicant who wishes to contest a refusal based on a matter of substance (e.g., a matter arising under §§2-6, or 23 of the Trademark Act, 15 U.S.C. §§1052 -1056, 1091 ), should file an appeal to the Board, not a petition to the Director.
If the only issue in dispute is a question regarding the applicant’s compliance with a technical provision of the Trademark Act or Trademark Rules of Practice, the applicant may file a petition to the Director rather than an appeal. See 37 C.F.R. §§2.63(a), (b), 2.146. See also TMEP §1704 and TBMP §1201.05 regarding petitionable matter versus appealable matter.
An examining attorney’s requirement that is the subject of a petition decided by the Director subsequently may not be the subject of an appeal to the Board. 37 C.F.R. §2.63(c).
The applicant must file an appeal brief within sixty days of the date of the appeal, or the Trademark Trial and Appeal Board (Board) may dismiss the appeal. 37 C.F.R. §2.142(b)(1); see In re Live Earth Prods. Inc., Ser. No. 75158878, 1998 TTAB LEXIS 437, at *4 (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. Applicant may also file a motion to accept a late-filed brief when the time for filing the brief has expired but the Board has not yet issued an order dismissing the appeal. If the Board denies the motion, the applicant may file a Petition to Director under 37 C.F.R. §2.146 in the trademark electronic filing system, requesting that the Director 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 Director until it has first filed a request/motion to accept the late-filed brief with the Board, and the Board has denied the request/motion. TBMP §1203.02(a). The applicant may not 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)(E).
The date of appeal for purposes of calculating the due date of the appeal brief is the date on which the notice of appeal and filing fee is received by the USPTO. If the applicant has also filed a request for reconsideration under 37 C.F.R. §2.63(b)(3), the Board will acknowledge receipt of the appeal and request, suspend further proceedings (including applicant’s time for filing its appeal brief), and remand the application to the examining attorney. See TBMP §1203.02(a) and §1204 for further information. The filing of a request for reconsideration within the time provided for responding to the final Office action (see TMEP §711) will automatically result in a suspension of the appeal, and an applicant need not file either its appeal brief or a request for an extension of time to file the brief. See TBMP §1204.
The applicant’s brief may not exceed 25 double-spaced pages in length, and should meet the requirements of 37 C.F.R. §2.126. 37 C.F.R. §2.142(b)(2); TBMP §1203.01; see In re Dimarzio, Inc., Ser. No. 87213400, 2021 TTAB LEXIS 457, at *6-7 (2021) (Board refused to consider applicant’s 16-page single-spaced brief which "would undoubtedly exceed 25 pages if [a]pplicant used double-spaced text, as required"); In re Thomas, Ser. No. 78334625, 2006 TTAB LEXIS 135 (2006) (Board refused to consider applicant’s 29-page brief).
If an applicant, in its appeal brief, does not assert an argument made during prosecution, such argument may be deemed waived by the Board. See In re Katch, LLC, Ser. No. 86301765, 2019 TTAB LEXIS 154, at *3-4 (2019); TBMP §1203.02(g). Similarly, if an applicant's brief attempts to incorporate by reference an argument made during prosecution, such argument may be deemed to have been forfeited. In re Princeton Equity Grp. LLC, Ser. No. 97397212, 2025 TTAB LEXIS 242, at *9 (2025).
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. 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. 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.
The applicant may file a brief in reply to the examining attorney’s appeal brief. Reply briefs must be filed within twenty days of the date of issuance of the examining attorney’s brief. 37 C.F.R. §2.142(b)(1). The examining attorney may not file a written response to the reply brief. However, in the oral argument (if the applicant requests an oral argument), the examining attorney should respond to any significant issues raised in the applicant’s reply brief.
If, after considering the applicant’s brief or reply brief, the examining attorney believes that the requirement or refusal should be withdrawn, the examining attorney must withdraw the requirement or refusal and approve the application for publication or registration, if it is otherwise in condition for such action. The examining attorney must also promptly attempt to notify the applicant by telephone or email that the requirement or refusal is withdrawn, and must enter an appropriate Note to the File (also referred to as a Public Note or Notation to File) in the record. This approval for publication or allowance for registration may be done at any time before the Board’s decision on appeal. It is not necessary to notify the Board that the refusal or requirement has been withdrawn.
If there are multiple grounds for refusal and/or requirements, and the examining attorney decides that only certain refusals and/or requirements should be withdrawn, the appeal should go forward on the remaining ground(s) only. The following language should be included in the examining attorney’s brief, informing the applicant of the withdrawal of the refusal(s) and/or requirement(s):
The examining attorney acknowledges receipt of the applicant’s appeal brief. The examining attorney has withdrawn [specify the refusal(s) and/or requirement(s)].
When filing an ex parte appeal to the Board from the refusal of the examining attorney to register a mark, the applicant must pay a fee for each class in the application for which the appeal is taken. 37 C.F.R. §2.141(c).
The fee for at least one class must be paid before expiration of the time period for responding to the Office action from which the appeal is taken, or the application is abandoned. 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. If the fee filed with the appeal is sufficient for at least one class but insufficient for all the classes in a multiple-class application, and the applicant has not specified the class(es) to which the fee applies, the Board will notify the applicant of the defect, and will set a time limit in which the applicant may either pay the additional fee(s), or limit the appeal to the number of classes for which the fee(s) have been paid. If the applicant does not submit the required fee(s) or specify the class(es) to which the fee applies within the time set in the notice, the fee submitted will be applied to the classes in ascending order, beginning with the lowest-numbered class and including the number of classes in the application for which sufficient fees have been submitted. See 37 C.F.R. §2.141(c); TBMP §1202.04.
If the applicant files an amendment after filing a timely notice of appeal, the examining attorney may not act on it without authorization from the Board, because jurisdiction over the application is with the Board after a notice of appeal is filed. In appropriate cases, the Board may remand the case to the examining attorney to consider the matter presented in the document, with appropriate instructions to the examining attorney regarding consideration of the document and disposition of the case after such consideration. TBMP §1205.
If an application is remanded to the examining attorney to consider an amendment, and the examining attorney determines that the amendment places the application in condition for publication or issue, the examining attorney should notify the applicant by telephone or email that the amendment has been entered, and that the amendment renders the appeal moot. It is not necessary to notify the Board.
An examining attorney may not take action in an application after the Board has rendered a decision on appeal, because the examining attorney does not have jurisdiction over the application. See In re U.S. Catheter & Instrument Corp., 158 USPQ 54, 55 n.3 (TTAB 1968). After a decision on appeal, the applicant may file a Petition to Director under 37 C.F.R. §2.142(g) in the trademark electronic filing system to reopen prosecution of the application. If the petition is granted, jurisdiction will be restored to the examining attorney to take the specified action.
A petition to reopen prosecution of the application could be granted if the appeal involved the applicant’s compliance with a requirement rather than a refusal based on the nature of the mark. See In re Hickory Mfg. Co., 183 USPQ 789 (Comm’r Pats. 1974). However, the Director will deny a petition to reopen prosecution if granting the petition would require further examination (e.g., to consider a claim of acquired distinctiveness under 15 U.S.C. §1052(f) or an amendment to the Supplemental Register). See In re Petite Suites Inc., 21 USPQ2d 1708 (Comm’r Pats. 1991); In re Vycom Elecs. Ltd., 21 USPQ2d 1799 (Comm’r Pats. 1986); In re Mack Trucks, Inc., 189 USPQ 642 (Comm’r Pats. 1976); see also TBMP §1218 (and cases cited therein).
In In re Ferrero S.p.A., 22 USPQ2d 1800 (TTAB 1992), recon. denied, 24 USPQ2d 1061 (TTAB 1992), an augmented panel of the Board expressly overruled prior precedent and held that an examining attorney may request reconsideration of a Board decision reversing the examining attorney in an ex parte appeal.
The examining attorney’s request must be filed within one month from the date of the Board’s decision. 37 C.F.R. §2.144. No new evidence can be introduced with the request. The request should point out any errors of fact or law in the Board’s decision.
To request reconsideration, the examining attorney must prepare a request and a supporting brief and submit the request to the managing attorney for concurrence in the decision to seek reconsideration. If the managing attorney concurs, the managing attorney will submit the request for reconsideration and brief to the Office of the Deputy Commissioner for Trademark Examination Policy for approval.
If that Office approves the request, the examining attorney will file the request with the Board and send a copy to the applicant. The Board will set an appropriate time for the applicant to respond to the request. The examining attorney may not file a reply brief in response to the applicant’s brief.