Appealing a Final Refusal: Ex Parte Appeals to the TTAB and Beyond
By Casey Scott McKay ·
When a trademark examining attorney issues a final refusal, the application dies unless the applicant acts, and the action that preserves it is an ex parte appeal to the Trademark Trial and Appeal Board under Section 20 of the Lanham Act, 15 U.S.C. 1070. This article explains what that appeal is and is not: a review of a closed record, on a deadline that the USPTO quietly shortened from six months to three for most applications in December 2022, decided by three administrative trademark judges who affirm the examining attorney in the large majority of cases. It develops the request-for-reconsideration interplay that makes or breaks the evidentiary record, the closed-record rule of 37 CFR 2.142(d) and the narrow remand escape hatch, and the difference between issues that are appealable to the Board and issues that must go to the Director by petition. It then maps the two exits from an adverse Board decision under Section 1071 - a Federal Circuit appeal on the agency record, where facts are reviewed only for substantial evidence and law de novo, and a civil action in the Eastern District of Virginia, where Kappos lets the applicant build a new record but Shammas makes the applicant pay the government's expenses win or lose. Booking.com - which lost twice at the USPTO, won on a new survey, paid $76,873.61 for the privilege, and ended up in the Supreme Court - is the worked example of both halves of that bargain. Finally, it explains the strategic calculus for the applicant - when to appeal at all, when to amend, divide, or refile instead, and where this body of law is genuinely unsettled after Peter v. NantKwest.
IP and Technology > Trademarks | Article | Published 19 September 2025 - Updated 9 December 2025 | Casey Scott McKay - marksy.us
Summary. When an examining attorney issues a final refusal, a trademark application dies unless the applicant acts — and the action that preserves it is an ex parte appeal to the Trademark Trial and Appeal Board under Section 20 of the Lanham Act, 15 U.S.C. § 1070. This article explains what that appeal actually is: review of a closed record, on a deadline the USPTO quietly cut from six months to three for most applications in December 2022, decided by three administrative trademark judges who affirm the examining attorney in the large majority of cases. It develops the request-for-reconsideration interplay that makes or breaks the evidentiary record, the closed-record rule of 37 C.F.R. § 2.142(d) and its narrow remand escape hatch, and the line between issues that are appealable to the Board and issues that belong to the Director on petition. It then maps the two exits from an adverse Board decision under 15 U.S.C. § 1071 — a Federal Circuit appeal on the agency record, where facts survive if a reasonable mind could accept them and only legal error gets a real hearing, and a civil action in the Eastern District of Virginia, where Kappos v. Hyatt lets you build a new record and Shammas v. Focarino makes you pay the government's expenses win or lose. Booking.com, which lost twice at the USPTO, won on a new survey, paid $76,873.61 for the privilege, and ended up in the Supreme Court, is the worked example of both halves of that bargain. The article closes with the strategic calculus — when to appeal, when to amend, divide, or refile instead — and with the places this law is genuinely unsettled after Peter v. NantKwest.
Keywords: ex parte appeal · ttab appeal · final refusal · 15 usc 1070 · 15 usc 1071 · request for reconsideration · notice of appeal · closed record rule · substantial evidence · federal circuit review · section 1071(b) civil action · kappos v. hyatt · shammas v. focarino · uspto expenses · eastern district of virginia · appeal brief · 37 cfr 2.142 · petition to the director · ttab reversal rate · trademark prosecution
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