What Happens When Appealing a Trademark Refusal to the TTAB

The following is an edited transcript of my video What Happens When Appealing a Trademark Refusal to the TTAB

The Trademark Trial and Appeal Board, or TTAB, is a panel of judges that can decide cases on appeal. They also can decide certain types of disputes, oppositions or cancellations, but we’re going to talk about appeals. Every year there are several hundred–maybe even several thousand–appeals filed before the trademark trial and appeal board. But this still represents a very, very small number of the overall trademark applications that are filed and even a small percentage of the final refusals that are issued. I want to talk a little bit about what happens when an appeal is filed.

The first thing you should know is that the Trademark Trial and Appeal Board has its own rule and procedure book, called the TBMP, and all of the important details can be found in there.

First of all, when can you appeal? You can only appeal when a final refusal has been issued by an examiner. So the procedural status has to be properly aligned at the examination phase before something can move to the appellate phase. And an appeal is generally going to take about six months, on average. What happens is, once the appeal is filed and ready to proceed, because sometimes there might be a suspension or there might be a request for reconsideration filed with the examiner, but absent those things, when the appeal is ready to proceed, an order will be issued giving the appellant, the applicant, 60 days to file a brief. A brief gets filed. Then the examiner gets a chance to file a response brief. And then the applicant gets a chance to file a reply brief and can request a hearing, which now is conducted by video, if they so desire. The hearing would be before the panel of judges. It’s always three judges that are assigned to a case.

A couple of changes in 2021. There’s always been a fee when filing the appeal, but there are now fees when filing the appeal brief, and there are fees (these are government fees I’m talking about) when requesting a hearing. So a relatively small percentage of cases have a hearing, but hearings can be valuable and important. And I’ve talked about that in the past.

An important procedural issue–very important, perhaps the most important to know about an appeal–is that when an appeal is filed, you cannot introduce new evidence during the appeal process. The appeal is based on the evidence that’s already of record from the examination process. Sometimes even attorneys will try to file additional evidence as part of their appeal. Not only will the evidence be ignored, and space in your argument and your brief be wasted talking about that evidence, but it will certainly not make you look very good or well informed before the judges who are going to be deciding it.

Those are the key elements and aspects regarding an appeal to the Trademark Trial and Appeal Board. I think we are seeing an increase in the number of appeals, partly because of the increase in the number of applications that’s been going on broadly for 10 years and increasing even more in the last two or three years. Partly because I think there’s some more inconsistency, perhaps, in the examination process, and partly because businesses and brands more and more recognize the value and the importance of getting a registration and are more willing to fight for it. So if an appeal is something that might be applicable in your case, my final tip is to think about it before filing the appeal. You want to plan out the strategy and the evidence before the appeal actually starts. Because once the appeal starts, you’re sort of starting that new chapter and it’s a different chapter. The best appeals are planned before the appeal begins. And of course, I always recommend that you work with an experienced trademark attorney.

For more, see also : Anatomy of a trademark Ex Parte Appeal Brief with the TTAB