Westchester Women's Bar Association

Ex Parte Appeals

An appeal from an Examining Attorney's action is taken to the Trademark Trial and Appeal Board ("Board"). An Examiner who refuses registration will issue an Office Action. See our web page entitled Office Actions for more details on this subject. The Office Action will specifically identify each requirement and/or each refusal that is preventing the application from moving towards registration. In order for the matter to be appealable, the refusal must have been "final" and the requirement must be a "substantive" matter not a technical matter. Typically, petitions to the Director raise technical matters. See Trademark Manual of Examining Procedure (TMEP) §1704 and Trademark Trial and Appeal Board Manual of Procedure (TBMP) §1201.05 for more information on matters that should be raised via Petition.

A common question in our practice is "what is a final refusal"? This is either an Office Action marked "Final Refusal" or a second refusal on the same grounds as the first refusal or a repeated requirement. If an appeal is taken after a final refusal, the applicant should file a Notice of Appeal and pay the appeal fee within six months of the date of the final refusal. See TBMP §1202.03 for more information on appeal requirements. If a Notice of Appeal and fee is not timely filed with the Board, the trademark application will be deemed abandoned. However, if the failure to file the Notice of Appeal is unintentional, the applicant can file a petition to revive under TMEP §1714. It should be pointed out that a petition to revive couldn’t be filed if the applicant filed a request for reconsideration and it was denied and then the applicant failed to timely file a notice of appeal.

Once the Examining Attorney issues a final refusal, in addition to filing a Notice of Appeal an applicant may file a request for reconsideration with the examining attorney. See our blog post entitled, What If A Final Refusal Is Issued In A Trademark Application? to review the advantages of filing a request for reconsideration. A request for reconsideration must also be filed within six months of the date of issuance of the final refusal. A request for reconsideration can include additional evidence, new arguments and/or amendments to the trademark application. It should be noted that the filing of a request for reconsideration would not change the statutory time line for filing an appeal (it still must be filed within six months from the date of the final refusal).

In most cases, the evidence in an ex parte appeal will be submitted during the prosecution of the trademark application. However, if the applicant or Examining Attorney wants to introduce additional evidence after the appeal is filed, the party must request that the Board suspends the appeal while remanding the application for consideration for additional evidence. The Board will typically grant the request only upon a showing of good cause.

Applicant's appeal brief is due 60 days from the date the notice of appeal is filed. Once filed the applicant's (appellant's) brief is forwarded to the Examining Attorney. The Examiner has 60 days after receiving the appellant's brief to submit his brief. Lastly, the appellant has 20 days from the date of mailing of the Examiner's brief to submit a reply brief. In order for an oral hearing to be ordered, the appellant must have requested one. This request must occur no later than 10 days after the due date of appellant's reply brief.

The Board will issue a written decision in the appeal based on the evidence in the record, the arguments of the appellant, and the arguments of the Examining Attorney. If either party is unsatisfied with the decision that party may file a request for rehearing, reconsideration, or modification of the decision. If still dissatisfied that party can either appeal the Board's decision to the United States Court of Appeals for the Federal Circuit or seek review of the Board's decision by filing a civil action in the United States District Court. If you have questions regarding filing a request for reconsideration or concerning an ex parte appeal, kindly contact our office and schedule a courtesy consultation.

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