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Anatomy of an ex parte USPTO appeal

Posted by admin on: June 22nd, 2011

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, it cannot present new evidence but must rely on the record already created. The Appeal Brief may present arguments regarding the registrability and the evidence, 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.

Below is a sample Appeal Brief filed regarding the BOVIS FOODS trademark. For the full TTAB record (the appeal was ultimately successful), see here.

[scribd id=58170790 key=key-1v7l8jqaoylxh0qiyhrg mode=list]

2 Responses
  1. Reid M. says:

    Erik, thanks for these “Anatomy of . . .” postings. Very interesting.

  2. ipelton says:

    Thanks for your interest and your comments!