Anatomy of a trademark Ex Parte Appeal Brief with the TTAB

A recent application for TEN for bottled drinking water was refused as descriptive and the Applicant claimed the mark had acquired distinctiveness to attempt to overcome the refusal. On appeal of both issues – the descriptiveness and the asserted acquired distinctiveness  – the matter was resolved with the examiner before a final decision by the Trademark Trial and Appeal Board (TTAB). All of this information and these materials are public record, of course.

The brief shows the formatting of an appeal brief. It also provides some examples of substantive arguments regarding descriptiveness, acquired distinctiveness and related issued. Note that an Ex Parte Brief generally features far more formalities than an office action response.

Upon receiving a Final Refusal from the USPTO to a trademark application, the applicant may file an appeal to the Trademark Trial and Appeal Board. When such an appeal is made, each party (the applicant and the USPTO Examining Attorney) will submit briefs and potentially an oral argument to a panel of three administrative judges from the Board who will then rule regarding the registrability of the trademark.

What does an Appeal Brief consist of? Generally, the Brief cannot present new evidence but must rely on the record already created. The Appeal Brief may present arguments regarding the registrability and the evidence of record already, and may attempt to counter arguments made by the Examining Attorney in the Final Refusal. The Appeal Brief should also describe the evidence of record and the procedural history, along with an index of the cases and statutes cited.

Ex Parte Trademark Brief filed at USPTO on Scribd