What is a Trademark Appeal? How Do I File One with the TTAB?

trademark appeal

You have the option of filing a trademark appeal with the Trademark Trial and Appeal Board (TTAB) when the examining attorney issues a final refusal to federally register your mark.  For example, let’s say you file a trademark application and the examining attorney sends you a trademark office action refusing registration of your trademark on the basis that there’s a likelihood of confusion with another mark that’s already registered.  In order to attempt to overcome the rejection, you research, prepare, and submit arguments and evidence to the examining attorney pointing out all of the differences between the two marks and detailing why your trademark application should be approved.  A few weeks later, you receive a final office action from the examining attorney indicating that he did not find your arguments persuasive and that he’s now making his refusal to register your trademark final.

How and When to File a Trademark Appeal

You’re now in the position to file a trademark appeal with the TTAB.  If your trademark application was filed directly with the USPTO, then the notice of appeal and filing fee must be submitted within three months of the final refusal being issued (or six months if you timely filed a Request for an Extension of Time to File a Response).  On the other hand, if you’re seeking an extension of protection of your trademark in the United States through WIPO and the Madrid Protocol, then the notice of appeal and filing fee must be submitted within six months of the final refusal being issued.

You must file and pay for the trademark appeal through the ESTTA system.  Please note that if you’re a “foreign-domiciled” individual or entity, you must hire a U.S.-licensed attorney to represent you in the appeal.

Your Trademark Appeal Brief

Once the notice of appeal has been acknowledged by the TTAB, it will send out a proceeding schedule notifying you of some important deadlines.  The first deadline is the date by which you must file your appeal brief.  The appeal brief gives you the opportunity to coherently organize and present all of your arguments and evidence to the TTAB.  However, there are many rules with which you must comply and failure to do so may result in automatic dismissal of your trademark appeal.  You’ll want to carefully read Section 1200 of the TTAB Manual of Procedure (TBMP) if you choose not to work with an experienced trademark attorney.

The Examining Attorney’s Appeal Brief

After your appeal brief is filed, the examining attorney (representing the USPTO) will have time to prepare and submit his own brief.  The examining attorney will try to counter all of your arguments and evidence in the hope of convincing the TTAB to uphold the refusal to register your trademark.  Once the examining attorney’s brief has been filed, you have the option of submitting a reply brief to specifically address any of the points raised by the examining attorney.

It’s Decision Time

Once all briefs have been filed, the TTAB will review the entire record and make its decision.  In the event the TTAB rules in your favor, your trademark application will be allowed to continue through the trademark application process.  On the other hand, if the TTAB sides with the examining attorney, your trademark application will go abandoned unless you further appeal the decision to the United States Court of Appeals for the Federal Circuit (which is very expensive and unlikely to be successful).

May I Help With Your Trademark Appeal?

I’m experienced US trademark attorney Morris Turek.  If you’ve received a final refusal from the USPTO and are considering working with a knowledgeable and reliable trademark attorney to file a trademark appeal with the TTAB, please give me a call at (314) 749-4059 for your free legal consultation, or simply send me an email (morris@yourtrademarkattorney.com) or use my contact form.  I look forward to hearing from you soon.