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Results: 4 Answers
Trademarks
4.
Appeals
4.1
If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?
 
United States
The applicant can submit a request for reconsideration to the examining attorney under Section 715.03 of the Trademark Manual of Examining Procedure (TMEP). If the request for reconsideration persuades the examining attorney that a refusal or requirement should be withdrawn, the examining attorney may approve the application for publication (TMEP §715.03(a)).

An applicant can also appeal the refusal of registration to the US Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB) by filing a notice of appeal with the TTAB within six months of the date of issuance of the action from which the appeal is taken (TMEP §1501). A request for reconsideration to the examining attorney does not stay the period for noticing an appeal (TMEP 715.03(c)); as such, an applicant will typically file both a request for reconsideration with the examining attorney and a notice of appeal with the TTAB simultaneously.

The TTAB is a body of administrative law judges empowered to hear appeals of decisions of the USPTO, as well as oppositions and cancellations.

For more information about this answer please contact: John Crittenden from Cooley LLP
4.2
What is the procedure for appealing a trademark office refusal?
 
United States
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 office action from which the appeal is taken. Details can be found at Trademark Manual of Examining Procedure §1501.

For more information about this answer please contact: John Crittenden from Cooley LLP
4.3
Can the reviewing body’s decision be appealed? If so, to what body and by what procedure?
 
United States
The applicant may request rehearing, reconsideration or modification of a decision of the TTAB by filing a request with the TTAB within one month of the decision (TBMP §1219.01).

The applicant may seek review of a final decision of the Trademark Trial and Appeal in two ways:

  • by appeal to the US Court of Appeals for the Federal Circuit, which will review the matter based only on the evidence submitted to the USPTO; or
  • by seeking review in a civil action in a US district court (federal civil court of first instance) (Lanham Act §21, 15 USC §1071; TBMP §1219.02).

To initiate an appeal to the US Court of Appeals for the Federal Circuit, the applicant must file a notice of appeal with the USPTO within 60 days of the decision from which the appeal is taken (15 USC §1071(a); TBMP §902.01). The Federal Circuit will consider the appeal based on the existing evidentiary record before the TTAB - it is not possible to submit new evidence to the Federal Circuit.

To seek review of a decision of the TTAB in a US district court, the applicant must file a new civil action in the court for the appropriate federal district within 60 days of the decision from which the appeal is taken (15 USC §1071(b); TBMP §903.01). In ex parte cases, the appropriate federal district is the US District Court for the Eastern District of Virginia - the district in which the USPTO is situated (TBMP §903.03). Because this is a new civil action, the applicant may submit new evidence to the district court that was not before the TTAB.

For more information about this answer please contact: John Crittenden from Cooley LLP
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