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

Navigating Ex Parte Appeals, Civil Actions in District Court, and Appeals to the Federal Circuit

Recording of a 90-minute CLE webinar with Q&A


Conducted on Thursday, April 7, 2016

Recorded event now available

or call 1-800-926-7926
Program Materials

This CLE webinar will provide guidance to trademark counsel on appealing final refusals by the Trademark Office, understanding key considerations, and evaluating the avenues of appeal. The panel will discuss lessons from successful appeals and offer strategies for navigating the appeals process.

Description

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 final refusal is affirmed by the TTAB, 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, sufficiency of the record, costs and timing.

A 2014 district court decision further complicates the decision of whether to appeal a final refusal. Shammas v. Focarino (E.D. Va. 2014) held in a matter of first impression that an applicant who appeals a TTAB refusal to register a mark must pay expenses incurred by the USPTO, including attorney fees, for that proceeding. 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.) that must be evaluated, 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.

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Outline

  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

Benefits

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?

Faculty

Collen, Jane
Jane F. Collen

Of Counsel
Collen IP

Ms. Collen has more than 30 years of experience counseling clients across a wide range of intellectual property...  |  Read More

Collen, Jess
Jess M. Collen

Partner
Collen IP

Mr. Collen has been active in IP practice for 25 years and is highly involved in the profession, having acted in many...  |  Read More

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Strafford will process CLE credit for one person on each recording. All formats include program handouts. To find out which recorded format will provide the best CLE option, select your state:

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