Every year, a few hundred refusals from the Patent and Trademark Office on trademark applications end up getting appealed to the Trademark Trial and Appeal Board (TTAB). It’s a small percentage of the overall number of applications and of the overall number of refusals. But an appeal can be an important tool when appropriate and when there’s a strong reason to believe that perhaps the examiner’s decision can be overturned. An appeal is handled by a panel of three administrative judges at the USPTO. Following is a break down of the anatomy of an appeal and the steps that go into it.
The first question when considering filing an appeal is: do you want to file a request for reconsideration at the same time you file the appeal? Once the appeal is started, no more evidence can be added to the record, so that can be a valuable reason for filing a request for reconsideration. When you file to start an appeal, note that there’s a government filing fee of $225 per class of goods or services.
Once an appeal is commenced, the applicant writes a brief in support of their appeal, and there are rules about the formatting, length, and timing. When you go to file that brief, the USPTO is going to charge another filing fee of $200 (as of May 2023).
Then the examiner gets an opportunity to submit their brief, arguing their position to the board, at which point the applicant gets a final opportunity to submit a reply brief. The applicant can also request an oral hearing. Oral hearings in appeals are relatively infrequent, and in recent years, the USPTO has begun charging a fee of $500 to request a hearing (as of this writing in May 2023)
Once the briefing (and hearing, if applicable) is completed, the TTAB will take the matter under advisement and issue an opinion or decision. Two to three months is the average, which means some cases can take even longer than that to get the appeal. All told, the appeal process generally takes between 6-12 months.
Our firm recently had success with an appeal in a matter for a mark called Evolve Life Systems, and I share some of the documents demonstrating the appeals process here.