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As described in Chapter 5, an Examining Attorney may issue a rejection of a trademark application during examination. While most rejections can be overcome, the most ominous is the Final Rejection. A Final Rejection is typically issued after the Applicant has had at least one chance to respond to a previous rejection. Once issued, the Applicant has a six month period to respond. It is at this point that distinguishing between a technical or procedural rejection and a substantive rejection becomes vitally important. Technical or procedural rejections are a bit easier to overcome and are best handled by filing a Petition to the Commissioner for Reconsideration. Such a petition is filed directly with the USPTO. 37 C.F.R. §2.64, TBMP 1202.02, 1204.
Substantive rejections, however, are much more complicated and difficult to overcome. These rejections require an appeal to the Trademark Trial and Appeals Board. Filing both a Petition for Reconsideration and a Notice of Appeal may increase the likelihood of success in that the Examining Attorney, facing the prospect of having to prepare a brief and argue the issues on appeal, may be more willing to withdraw the rejection. It should be noted, however, that filing a petition for reconsideration does not automatically toll the deadline for filing a Notice of Appeal.
Under the Trademark Rules of practice, an ex parte appeal of the Examining Attorney's decision must be filed within six months from the date of the final refusal or from the date of the action from which the appeal is taken. 37 C.F.R. §2.142(a), TBMP 1201.05. An appeal is taken by filing a Notice of Appeal with the Trademark Trial and Appeal Board (TTAB) and paying the appeal fee. Paying the appeal fee is crucial as failure to do will result in the dismissal of the appeal. TBMP 1202.1, 1202.04. The Notice of Appeal may be filed using the ESTTA TTAB Online Filing System. An example of a Notice of Appeal is shown at the end of this chapter.
Once a Notice of Appeal is filed, procedure and timing are everything. Knowing what must be filed and what will toll deadlines, is essential to obtaining a potentially successful ex parte appeal. One very important rule is that unless an extension is obtained, or a request for consideration has been filed, the Appellant’s brief is due sixty days from the receipt of the Notice of Appeal by the USPTO. 37 C.F.R. §2.142(b). There is no obligation on the part of the TTAB to provide any notice or reminder of the deadline of the brief. See In re LiveEarth Products Inc., 49 USPQ2d 1063, 1064 (TTAB 1998). If the brief is not timely filed, the appeal may be dismissed.
Another key consideration is that the evidentiary record must be complete at the time the Notice of Appeal is filed. Unless a request for consideration is filed with the Notice of Appeal requesting that new evidence be considered, subsequent evidence will be excluded. See In re Volvo Cars of North America, Inc., 46 USPQ2d 1455, 1456 (TTAB 1998) If a request for remand to submit new evidence is filed after the deadline for the Notice of Appeal, unless the parties agree to submission of the new evidence, good cause must be demonstrated as to why the evidence was not submitted earlier. 37 CFR 2.142(d), TBMP 1207.02.
After the Notice of Appeal is filed with the TTAB, an Appeal Brief, not exceeding 25 pages, must be filed within 60 days. 37 CFR 2.142(a). The argument and evidence necessary for the brief are dependent upon the nature of the Examining Attorney’s rejection. Below are listed some of the more common bases for rejection and some suggestions for arguing for appeal:
  1. If registration was rejected by the Examining Attorney under Section 2(d) because the mark is confusingly similar to another mark, evidence showing third party registration and use, differences in trade channels or goods and support showing no actual confusion may be used.
  2. If registration was rejected under Section 2(e) because the mark is descriptive, evidence showing the context in which the mark is used to show inherent distinctiveness or mistake or misunderstanding on the part of the Examining Attorney may be helpful.
  3. If registration was rejected under Section 2(f) because the mark has not acquired distinctiveness or secondary meaning, evidence showing advertising expenditures and sales, letters from consumers, surveys and examples of the continuous use of the mark over at least five years (though the more the better) may be convincing in appeal.
Once the Appellant’s Appeal Brief is filed with the TTAB, it is then forwarded to the Examining Attorney who must respond to all arguments presented. Once the Examining Attorney has filed a Responsive Brief, the Appellant will get the last word with a Reply Brief, which is limited in length and scope. Within ten days after filing the Reply Brief, Appellant has the opportunity to request an oral hearing before the panel of judges. Oral argument is limited to no more than 20 minutes by Appellant and ten minutes by the Examiner. It is only recommended, however, if the issues are complicated and there is something Appellant might add in addition to the brief that would be helpful to the Board.
Applicant: XXXX
Serial No.: 77/xxx,xxx
Filing Date: August 7, 2004
For the Mark: XXXXXXXX
Applicant hereby appeals to the Trademark Trial and Appeal Board (hereinafter referred to as “the Board”) from the decision of the Examining Attorney refusing registration. Applicant respectfully requests that the Board remand the matter to the Examining Attorney to consider the enclosed Request for Reconsideration and that the Board suspend further proceedings with respect to the appeal.
The required fee of $100.00 for the appeal is also submitted herewith.
Dated: December 23, 2xxx
Respectfully submitted,
BY _________________
Attorneys for Applicant.


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