What Can I Do If the USPTO Denies My Trademark Application?

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Andrew Rapacke
Andrew Rapacke

A division of the United States Patent and Trademark Office (USPTO), the Trademark Trial and Appeal Board (TTAB), reviews many legal disputes related to trademarks, including opposition, cancellation, interference, and concurrent use proceedings. When the USPTO provides a final rejection of a trademark application, it is the TTAB that handles the first steps in the appeals process.

What Constitutes a Final Rejection of a Trademark Application?

Once an applicant submits a valid request for trademark registration, a Trademark Examining Attorney (TEA) reviews the application. If the TEA denies the initial request for trademark registration, the applicant can submit a request for reconsideration.

At that point, the USPTO authorizes a second review of the initial application for trademark registration. Another TEA will review the application and decide whether to approve, reject or request more information. If the second TEA rejects the request for reconsideration, the decision may become final. It is important to note that the TEA must issue a final decision in order for the applicant to appeal to the TTAB, as detailed in 37 CFR § 2.63(b).

What is the Appeals Process for a Final Decision from a TEA?

As outlined in 15 U.S.C. 1070, a final decision from the TEA opens up the possibility of an appeal to the TTAB. At this stage, the applicant asks the TTAB to review the TEA’s final decision to reject the underlying trademark application. In terms of the statute of limitations, the clock begins to run as soon as the TEA issues a final decision. At that point, the applicant has six months to file an appeal with the TTAB.

If the TTAB rejects the appeal, the applicant can file a request for reconsideration, under 37 CFR 2.144. The time limit is much shorter for such a request, providing only one month from the date of the TTAB decision. If the TTAB rejects the request for reconsideration in a final decision, then the applicant is almost out of options.

What Happens if the TTAB Issues a Final Decision to Reject a Trademark Application?

If the TTAB issues a final decision to reject a trademark application, there is only one remaining option for recourse. The applicant must file an appeal with the United States Court of Appeals for the Federal Circuit.

The trademark dispute leaves the domain of the USPTO and enters the domain of the federal court system. In reviewing the trademark application and relevant case details, the Court will determine whether there was clear error on the part of the TEA or TTAB. Then the Court will decide whether to approve or deny the applicant’s appeal. In the process, the Court may elect to remand the matter for further proceedings.

Do You Have Legal Questions for a Skilled Trademark Lawyer?

The Rapacke Law Group has demonstrated skill and capacity in the area of trademark law, including trademark appeals to the TTAB. If you have legal questions concerning trademark appeals or associated concerns, know that you can contact us today for a free initial consultation.

 

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