Whether and How to Appeal a PTO Final Refusal: TTAB and Beyond

When the trademark examiner issues a final action refusing the trademark application, the applicant has a window of opportunity to appeal the trademark refusal to the Trademark Trial and Appeal Board (TTAB). If the TTAB affirms the final refusal, the applicant can then turn to either the U.S. District Court or the Federal Circuit to appeal. The applicant must determine which avenue of appeal to take, keeping in mind the differing standard of review, the sufficiency of the record, costs, and timing.

Counsel must craft and implement strategies for deciding how to advise a client in responding to a final refusal, anticipating hurdles not only at the TTAB but in any subsequent appeal.

Listen as our authoritative panel examines when an applicant should appeal to the TTAB and the considerations at the application/office action level (building a record, preserving issues, etc.) to evaluate, and the request for reconsideration which is part of the overall appeals process. The panel will also discuss the factors in deciding whether to seek to challenge an unfavorable decision of the TTAB in a civil action before the district court or Federal Circuit. The panel will examine lessons from successful appeals and offer guidance for navigating the appeals process.

1. Responding to a final refusal
2. Request for reconsideration
   1. TTAB ex parte appeal
   2. Appeal to the district court
   3. Appeal to the Federal Circuit
3. Lessons from successful appeals

The panel will review these and other key issues:

• What factors must counsel consider when determining whether, when and where to appeal?
• What impact do recent decisions have for trademark applicants when deciding the best route to challenge a TTAB decision?
• What strategies should counsel implement to increase the likelihood of success on appeal?