When you file a trademark application, you hope it gets through with no delay. However, you may receive an office action from the Trademark Examining Attorney assigned to your application. You would want to then address any issues raised in the office action. You may not succeed, of course. If you don’t, the Trademark Examining Attorney will issue a final office action. At that point, you may want to file a trademark appeal with the Trademark Trial & Appeal Board (TTAB).
Filing Your Trademark Appeal
You generally must file your trademark appeal within three months of when the final office action is issued. There is a filing fee that must be paid at this time, as well. The easiest way to file your appeal and pay the filing fee is by using the ESTTA system through USPTO.gov.
Essentially, this process is a way for you to argue that the Trademark Examining Attorney “got it wrong” in refusing registration of your mark. You will use the arguments, evidence, and any other proof that you provided in your office action response and Request for Reconsideration. If you can win your trademark appeal in front of the TTAB, then your application can proceed through to the next stage of the registration process.
The Trademark Appeal Process
Once you file your notice of appeal, the TTAB will mail you a schedule with several important deadlines. The first deadline is the date by which you must file your appeal brief. This brief allows you to make a comprehensive argument as to why registration should not have been refused by the Trademark Examining Attorney. Again, you will need to include all of your evidence supporting your arguments. Putting this brief together in a way that complies with all of the TTAB’s requirements and rules is difficult. Therefore, you will almost certainly want to hire a trademark attorney to assist you with your trademark appeal.
After filing your appeal brief, the Trademark Examining Attorney will have a chance to file their own brief. They will make arguments to the TTAB to try and win the trademark appeal too. You can then choose to submit a reply brief to address these arguments if you think that is best. The TTAB will make its decision. If you are successful in your trademark appeal, your application will continue through the registration process. However, if you lose your application will go abandoned, unless you further appeal to the U.S. Court of Appeals for the Federal Circuit. Such an appeal would be extremely costly, though.
Are You Considering a Trademark Appeal?
If you have received a final office action and aren’t sure what to do, you only have so much time to make a decision. Make sure that you understand what your options are, and please call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
