Ex Parte Appeal Checklist: Notice, Briefs, Evidence, and Appeal Routes

By Casey Scott McKay · 2023-09-23

This checklist takes a refused trademark application from the day the final action issues to the day the appeal route closes, in eleven phases of tickable actions. Phase by phase it covers the three-day triage that decides whether an appeal is even available, the docket entries that convert one issue date into five deadlines under the three-month rule that replaced the old six-month one, the choice among appealing, amending, dividing, consenting, cancelling, refiling, and petitioning the Director, and the request for reconsideration that is the last lawful chance to put evidence in front of the Board before 37 C.F.R. 2.142(d) closes the record. It then walks the notice of appeal through ESTTA at $225 per class, the suspension window and everything worth doing inside it, the twenty-five-page appellant brief and its Rule 2.142(c) compliance sentence, the evidentiary objection that must accompany any argument about the examining attorney's late exhibits, the good-cause remand that reopens a closed record, the $500 oral hearing, the four-question diagnostic that tells you whether you lost a fact case or a law case, and the irrevocable 63-day fork between the Federal Circuit and the Eastern District of Virginia. One invented matter, Kestrel Rowing Co. and its Section 2(d) refusal over a cited KESTRAL registration, runs through every phase with real dates, filings, and fees, and forks at Phase 10 into the counterfactual where the consent agreement never arrives. It closes with a Common Mistakes table, a Deadlines at a Glance table, and cross-references to the article and guide in the same cluster.

IP and Technology > Trademarks | Checklist | Published 23 September 2023 - Updated 4 October 2025 | Casey Scott McKay - marksy.us

Summary. Eleven phases that carry a refused application from the final action to the last door out: triage, docketing, the route decision, the request for reconsideration that closes the evidentiary record, the notice of appeal, the suspension window, the appellant's brief, the examining attorney's brief and your reply, the good-cause remand, the oral hearing, the four-question diagnostic on the decision, and the irrevocable 63-day fork between the Federal Circuit and a civil action in Alexandria. Every item is an action with a rule number, a fee, a form, and the specific way practitioners get it wrong. One invented matter — Kestrel Rowing Co., refused under § 2(d) over a cited KESTRAL registration — runs through all eleven with dates and dollar figures, and forks at Phase 10 into the version where the consent never arrives. The doctrine is in the companion article and the reasoning is in the companion guide; this is the working list.

Keywords: ex parte appeal checklist · notice of appeal · ttab appeal brief · request for reconsideration · closed record rule · 37 cfr 2.142 · estta · trademark center · request for remand · consent agreement · oral hearing · supplemental register amendment · request to divide · three month appeal deadline · appeal brief fee · 15 usc 1071 · federal circuit review · eastern district of virginia · board reconsideration · statement of issues

What this checklist is for

A final refusal starts a clock that most practitioners still mis-calendar and closes a record that most practitioners still assume is open. This document is the sequence of moves that keeps the application alive, gets the evidence in while it can still get in, and puts the strongest available argument in front of three administrative trademark judges — then tells you what to do the week they rule against you.

Who should use it. Prosecution counsel who has just received a final Office action; in-house counsel deciding whether to authorize an appeal; a solo practitioner running the whole matter alone; a paralegal building the docket. The Board's own procedural rules assume a level of familiarity this checklist supplies.

What you need before you start.

The complete Trademark Status and Document Retrieval (TSDR) prosecution history as a single PDF — every action and every response, not just the final.
The serial number, filing basis (§ 1(a), § 1(b), § 44, or § 66(a)), and the issue date of the final action, written where you can see all four at once.
Every exhibit either side has submitted, saved as filed, with the URL and access date visible on internet printouts.
ESTTA and Trademark Center credentials, and confirmation that the correspondence address in the file is one you actually monitor.
A client conversation about budget and timing that has already happened. A briefed single-class appeal takes ten to sixteen months.

Not covered here. Why the Board reviews the way it does, who bears which burden, what Kappos v. Hyatt unlocked and what Shammas costs — that is Appealing a Final Refusal: Ex Parte Appeals to the TTAB and Beyond. Model language for every filing named below, two decision trees, and the master cost table are in Taking an Ex Parte Appeal: A Practitioner's Guide. This checklist assumes both and does not re-teach them. Everything upstream of the final refusal is curated in the Office Action Response Toolkit.

The matter we carry through. Kestrel Rowing Co. is a nineteen-person Providence, Rhode Island maker of indoor rowing machines. It filed a § 1(a) application for KESTREL in Class 28 for "rowing machines" and Class 25 for "athletic apparel." The examining attorney refused Class 28 under § 2(d), 15 U.S.C. § 1052(d), over Registration No. 5,884,201 for KESTRAL covering "exercise equipment, namely, elliptical trainers," owned by Kestral Fitness Holdings, Inc., and made a Class 25 identification requirement that Kestrel satisfied in its first response. The final action issued 4 February 2025.

The phases at a glance

| Phase | You finish with | Typical time | Government fee | | --- | --- | --- | --- | | 1. Triage and docket | A yes/no on appealability and five calendar entries | 2-4 hrs | — | | 2. Route decision | A written recommendation the client has approved | 1-3 hrs | — | | 3. Close the record | A filed request for reconsideration with all new evidence | 6-20 hrs | — | | 4. Notice of appeal | An ESTTA receipt and a live appeal | 30 min | $225/class | | 5. Suspension window | Division, consent negotiation, and a clean file | 1-8 hrs | $100/child | | 6. Appellant's brief | 25 pages or fewer, filed with the fee | 15-30 hrs | $200/class | | 7. Examiner brief and reply | Objections preserved; 10 pages or fewer | 3-8 hrs | — | | 8. Request for remand | Evidence attached, good cause shown | 2-6 hrs | — | | 9. Oral hearing | Twenty minutes and a rebuttal reserve | 5-12 hrs | $500 | | 10. Decision review | A fact-versus-law diagnosis inside 48 hours | 2-6 hrs | — | | 11. Further appeal | One door chosen before day 63 | 60-900 hrs | Varies |

Phase 1 — Triage the final action and build the docket

[ ] Pull the entire TSDR file as one PDF and read every action and response in order, oldest first.
- Trap. The requirement that kills the appeal is almost never in the document you are angry about. It is in an action from month four that someone answered incompletely.
[ ] Confirm the action is genuinely final, or is a second refusal on the same ground or a repeated requirement that you may treat as final.
- Authority. 37 C.F.R. § 2.141(a); TBMP § 1201.01.
- Trap. An appeal from a first refusal is premature; the Board cannot take jurisdiction and must return the file. File it on the last day of the response period and you have abandoned the application while trying to save it.
[ ] Confirm the refusal is substantive rather than procedural. Registrability under 15 U.S.C. § 1052 and substantive requirements like disclaimers go to the Board; premature finality, improper abandonment, suspension, classification, and printing errors go to the Director on petition.
- Authority. 37 C.F.R. § 2.146; TMEP § 1704; TBMP § 1201.05. A petition to the Director is $400 electronic, and petition decisions are not themselves appealable. 37 C.F.R. § 2.63(c).
- Why. File in the wrong forum and you lose the fee and, worse, the calendar.
[ ] If the issue sits on the seam — an identification requirement, a verification dispute — file both: the petition, and a notice of appeal with a request to suspend pending the petition decision.
[ ] Confirm the action is a refusal and not an advisory. A statement that a § 2(d) refusal will issue if a prior-filed application registers is not appealable. TMEP § 714.05(c).
[ ] Run every unmet requirement in the file to ground and satisfy it before the notice of appeal goes in.
- Authority. 37 C.F.R. § 2.142(c).
- Trap. In In re Brack, 114 U.S.P.Q.2d 1338 (T.T.A.B. 2015), the Board affirmed on an unsigned application and never reached the descriptiveness argument the appeal was about. Work the Office Action Response Checklist across the whole file, not the last action.
[ ] Build an evidence index in the same sitting: one row per exhibit, with submission date, TSDR document name, TSDR page, submitting party, and one line on what it proves.
- Why. You will cite from this index in the brief in the form the Board wants — "October 5, 2025 Office Action, TSDR p. 4." TBMP § 1203.01. You will also discover, three months early, which printout is missing its URL.
[ ] Enter five docket dates from the single issue date.

| Docket entry | Date | Authority | | --- | --- | --- | | Appeal deadline, § 1 / § 44 | Issue date + 3 months | 37 C.F.R. §§ 2.142(a)(1), 2.62(a) | | Extension purchase closes, § 1 / § 44 | Issue date + 3 months, $125 | 37 C.F.R. § 2.6(a)(28) | | Extended appeal deadline, if purchased | Issue date + 6 months | 37 C.F.R. § 2.62(a) | | Appeal deadline, § 66(a) | Issue date + 6 months, no extension | 37 C.F.R. § 2.62(a) | | Appeal brief due | Notice of appeal + 60 days | 37 C.F.R. § 2.142(b)(1) |

[ ] Set a working reminder two weeks before each real date, and set the extension-purchase reminder at issue date plus ten weeks.
- Trap. A great deal of docketing software still recites six months for everything. If your system does not branch on filing basis it will abandon your § 1(b) files or panic you three months early on your Madrid ones. Read WIPO Office Actions and Provisional Refusals and The 3-Month Office Action Deadline with your docketing manager in the room, and audit the rule set against Docketing Deadlines.
[ ] Kestrel. Final action 4 February 2025. Appeal deadline 4 May 2025. Extension request docketed 18 April; extended deadline 4 August. Class 25 requirement satisfied in the 12 September 2024 response, so Rule 2.142(c) is clean. The refusal is substantive and final. Kestrel can appeal.

Phase 2 — Decide the route before you spend a dollar on a brief

[ ] State in one sentence what the client needs: a registration certificate, a defensive citation, an enforcement platform, or a win on principle. The answers point to different routes.
[ ] Check whether the refusal reaches fewer than all classes. If it does, plan a request to divide under 37 C.F.R. § 2.87 — $100 per child application, and the clean classes register on their own schedule.
[ ] For a § 2(d) refusal, work four options before you reach "appeal."
- Delete the overlapping goods or services if a commercially useful registration survives. Free, fastest, and often dispositive. Scope consequences are in Drafting an Identification of Goods and Services and the Goods and Services Identification Checklist.
- Approach the cited registrant for a consent. The Office gives consents substantial weight — "the scales of evidence are clearly tilted" when the parties most interested in avoiding confusion agree how to avoid it, In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1363 (C.C.P.A. 1973); TMEP § 1207.01(d)(viii). Start from the Trademark Coexistence Agreement Template.
- Test whether the cited registration is vulnerable to cancellation for non-use, genericness, or abandonment. See Filing a Petition for Cancellation, TTAB Proceedings: Opposition vs. Cancellation, and the Trademark Abandonment Evidence Checklist.
- Appeal only if you can name a legal error or a DuPont factor the examining attorney never analyzed. The response that should already have been filed is in Responding to a §2(d) Likelihood-of-Confusion Refusal.
[ ] For a § 2(e)(1) descriptiveness refusal, price the disclaimer, the § 2(f) claim, and the Supplemental Register before pricing the appeal. See How to Overcome a Descriptiveness §2(e)(1) Refusal and Claiming Acquired Distinctiveness at the USPTO.
[ ] Decide about the Supplemental Register now, in writing, and put the trigger in the file.
- Authority. 37 C.F.R. § 2.75(a)-(b); TMEP §§ 816.01, 816.02.
- Why. A § 1(a) or § 44 application may move to the Supplemental Register any time before the Board decides, with no change to the effective filing date. A § 1(b) application may not move until an acceptable allegation of use is on file, and the effective filing date then becomes the date of that allegation. A § 66(a) application cannot move at all.
- Trap. After the Board affirms, the amendment is foreclosed. A decided application reopens only for a disclaimer or by order of the Director on a petition showing sufficient cause. 37 C.F.R. § 2.142(g); TBMP § 1218; TMEP § 1501.06.
[ ] For a genericness refusal, note that the Supplemental Register is unavailable — a generic term is incapable, 15 U.S.C. § 1091(c) — and that the Office carries a "clear evidence" burden, In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1571 (Fed. Cir. 1987). That combination makes genericness the most reversible category. See the Genericness Defense and Prevention Checklist.
[ ] For a § 2(a), § 2(c), surname, or geographic refusal, run the Section 2 Refusal Response Checklist and Overcoming a Section 2 Refusal before assuming the Board is the answer.
[ ] Identify refusals no brief can fix — a lawful-use problem, a genuinely functional product configuration — and restructure instead. The Lawful Use Requirement and Trade Dress and the Functionality Doctrine mark those exits.
[ ] Write the recommendation in one page, quote the real number — $425 in government fees for a briefed single-class appeal, plus fifteen to thirty hours — and get written approval.
- Trap. Appealing because the client is angry. An affirmed refusal is a searchable opinion holding that the mark is descriptive or generic, and every future adversary will quote it back.
[ ] Kestrel. Deleting "rowing machines" would gut the application. The registrant is a live Delaware company with counsel of record and is plausibly reachable. The register shows sixteen coexisting KESTREL-formative marks in sporting goods. Recommendation: divide Class 25, appeal Class 28, pursue the consent in parallel. Approved 21 April 2025.

Phase 3 — Close the record: the request for reconsideration

[ ] Decide whether to file one at all, using the rule of thumb: file when the problem is your evidence; skip when the problem is theirs.
- Why. The Office bears the initial burden of a prima facie case. In re Pacer Technology, 338 F.3d 1348, 1351 (Fed. Cir. 2003). A reconsideration request against a thin record is an engraved invitation to attach twenty more exhibits and re-finalize.
[ ] If you are filing, assemble every piece of evidence you will ever need. After the notice of appeal the record is closed to both sides and the only way back in is a discretionary remand. 37 C.F.R. § 2.142(d)(1).
[ ] Put each item into admissible form before it goes in.

| Evidence type | What makes it count | What kills it | | --- | --- | --- | | Internet printouts | Full URL and access date visible on the page | A bare link, or a screenshot with no URL. TBMP § 1208.03 | | Third-party registrations | The TSDR record showing current status and title | A list of hits from a search report; the Board does not judicially notice registrations. In re Jonathan Drew, Inc., 97 U.S.P.Q.2d 1640 (T.T.A.B. 2011); TBMP § 1208.02 | | Declarations | Signed under 37 C.F.R. § 2.20 or 28 U.S.C. § 1746, exhibits attached | Conclusions with no facts; there is no cross-examination, and the Board weighs accordingly | | Surveys | The full report, universe, methodology, and questionnaire | Summarizing results without producing the instrument | | Excerpted articles | The complete document behind any quotation | A sentence with no source. TBMP § 1207.01 | | Dictionaries | Reputable print or online sources, which the Board will notice | Wikipedia entries the other side has had no chance to rebut. TBMP § 1208.04 |

[ ] File it with the examining attorney through Trademark Center, on the request-for-reconsideration-after-final-action form. 37 C.F.R. § 2.63(b)(3); TMEP § 715.03. The Response to Office Action Template is the right skeleton.
[ ] Identify every new item by name in the opening paragraph, cross-reference the concurrently filed notice of appeal, and plead any alternative claim without waiving the primary argument.
[ ] Plead a § 2(f) claim in the alternative if there is any chance you will want it. It cannot be added after the Board rules. The itemized record is in the Secondary Meaning Evidence Checklist.
[ ] Do not let the request stand alone. Filing it does not extend the appeal deadline.
- Trap. This single sentence kills applications every year. File the notice of appeal the same afternoon.
[ ] Kestrel. Filed 30 April 2025 with sixteen TSDR records for coexisting KESTREL-formative marks in Classes 25 and 28, printouts of nine third-party e-commerce listings showing that elliptical trainers and rowing machines are bought by different buyers at different price points, and a declaration from Kestrel's VP of Sales under 37 C.F.R. § 2.20 describing its 41 specialty-retail accounts.

Phase 4 — File the notice of appeal

[ ] File through ESTTA, on the form titled "Appeal of Refusal to Register." 37 C.F.R. § 2.141; TBMP § 1202.03.
- Trap. Two systems, one afternoon. The notice of appeal goes to the Board through ESTTA; the request for reconsideration goes to the examining attorney through Trademark Center. Filing the notice as an Office action response preserves nothing.
[ ] Pay $225 per class in which the appeal is taken. 37 C.F.R. §§ 2.6(a)(18), 2.141(a). Three classes is $675 at this step alone.
[ ] State the intent to appeal and the classes covered. No reasons and no verification are required. TBMP § 1202.03.
[ ] Include the sentence that Rule 2.142(c) is satisfied — that all requirements not the subject of the appeal have been complied with.
[ ] Check the box indicating that a request for reconsideration has been filed or is being filed concurrently.
- Why. That checkbox is what routes the file back to the examining attorney instead of onto the briefing calendar. TMEP § 715.04; TBMP § 1204.
[ ] Confirm the signatory is authorized. A foreign-domiciled applicant must be represented by a qualified U.S.-licensed attorney who signs and files. 37 C.F.R. §§ 2.2(o), 2.11.
[ ] Save the ESTTA confirmation email and tracking number to the file the same day, and docket the brief deadline at notice-of-appeal date plus 60 days.
[ ] If ESTTA refuses the filing because Office records show no final refusal or an untimely appeal, stop arguing with the web form and call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199. Document the call.
[ ] If ESTTA is genuinely unavailable, capture timestamps, error messages, and screenshots, then file on paper with an explanation of the technical problem. 37 C.F.R. § 2.126(b). Hand delivery goes to the Trademark Assistance Center, James Madison Building East Wing, Concourse Level Room C55, 600 Dulany Street, Alexandria, VA 22314; mail goes to the Trademark Trial and Appeal Board, P.O. Box 1451, Alexandria, VA 22313-1451. The Board accepts neither email nor fax. TBMP § 107.
[ ] Kestrel. Notice of appeal filed 30 April 2025 as to Class 28 only, $225 paid, reconsideration box checked, request to divide Class 25 filed the same day for $100. The Class 25 child published in July and registered in October — a certificate in hand, and an Amazon Brand Registry enrollment, while the parent was still suspended.

Phase 5 — Work the suspension window

[ ] Confirm the Board's order acknowledging the appeal, suspending proceedings, and remanding the file. Docket a status check at eight weeks.
[ ] Track which of three outcomes arrives.

| Examining attorney's action | Effect on the appeal | Your move | | --- | --- | --- | | Withdraws the refusal | Appeal is moot | Docket publication and the opposition period | | Maintains the refusal | Board resumes and resets the brief deadline, usually 60 days from its order | Phase 6 | | Withdraws finality, issues a new non-final action | Prosecution restarts with a fresh response period | Respond; the appeal is discharged |

[ ] File the request to divide now if you have not already. 37 C.F.R. § 2.87; TBMP § 1205.02; $100 per child. Before or with the notice of appeal it goes through Trademark Center; afterward it goes to the Board through ESTTA. Dividing extends no deadline.
[ ] Consider a suspension for good cause if something outside the appeal may dispose of it: a pending civil action or Board proceeding, a co-pending application on the same question, or a cited registration coming due for its § 8 declaration or § 9 renewal. TBMP § 1213.
- Why. Cited registrations die on schedule. An appeal suspended when the blocking registration cancels ends in a withdrawal rather than an affirmance. Whether the non-use theory is real is a question for Use It or Lose It.
[ ] Keep the consent negotiation moving and paper every step — first contact, each draft, each exchange. You will need that chronology to show good cause for remand at Phase 8.
[ ] Do not file an amendment to allege use or a statement of use during the appeal. An AAU filed after the response period following the appealed final action has expired is untimely, 37 C.F.R. § 2.76(a), and every SOU filed before a notice of allowance is premature by definition, 37 C.F.R. § 2.88(a). Both are returned and the fee refunded. Sequencing is in From Notice of Allowance to Registration and the Statement of Use Filing Checklist.
[ ] Remember that express abandonment under 37 C.F.R. § 2.68 is available at any point and moots the appeal. Sometimes it is the right answer after you read the examining attorney's brief.
[ ] Kestrel. The examining attorney denied reconsideration on 8 August 2025 and maintained the refusal. The Board resumed the appeal on 15 August; brief due 14 October. Counsel wrote to Kestral Fitness Holdings on 6 May and exchanged four drafts between August and December.

Phase 6 — Write the appellant's brief

[ ] Confirm the mechanics before you draft: filed through ESTTA, due 60 days from the date of the appeal or from the Board's order resuming proceedings, 25 pages maximum in its entirety without prior leave, at least 11-point type, double-spaced, with a fee of $200 per class. 37 C.F.R. §§ 2.126(a), 2.142(a)-(b), 2.6(a)(19).
- Trap. ESTTA will not complete the filing without the fee. Do not discover that at 11:40 p.m.
[ ] If you need more time, ask before the deadline and give a reason. File nothing and expect an order to show cause; dismissal on that ground abandons the application.
[ ] Open with a statement of the issues that names the ground, the statutory subsection, and the goods, and that carries the Rule 2.142(c) compliance sentence identifying the requirement you satisfied and when.
- Why. Forty seconds of drafting. It is the sentence that would have saved the applicant in In re Brack.
[ ] Write a description of the record — what was submitted, by whom, on what date — before you write a word of argument.
[ ] Write one sentence naming who bears the burden and what the standard is, then build the argument around that sentence.

| Refusal | Who must show what | How the brief opens | | --- | --- | --- | | Genericness | Office must show genericness by clear evidence. In re Merrill Lynch, 828 F.2d at 1571 | Quantify the Office's record and show it is mixed | | Mere descriptiveness, § 2(e)(1) | Office makes a prima facie case; doubt goes to the applicant. TMEP § 1209.01(b) | Multi-stage imagination argument, doubt rule as the closer | | Acquired distinctiveness, § 2(f) | Applicant bears the burden | Lead with the evidence, not the law | | Likelihood of confusion, § 2(d) | Office makes the prima facie case; doubt goes against the newcomer. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65 (Fed. Cir. 1988) | Never argue a tie; argue an affirmative DuPont story | | Specimen, drawing, description | Office identifies the defect; applicant shows the rule is met | Lead with the documentary record. See Specimen Refusals |

[ ] In a § 2(d) brief, make the highest-value argument the one the Board can be reversed on: that the examining attorney never weighed a DuPont factor on which you put in evidence.
- Authority. In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973); Recot, Inc. v. Becton, 214 F.3d 1322, 1326 (Fed. Cir. 2000) (confusion is a legal conclusion built on factual findings); In re Guild Mortgage Co., 912 F.3d 1376 (Fed. Cir. 2019) (vacating where the Board failed to address the applicant's evidence and argument on a DuPont factor).
- Why. A failure to weigh a factor is legal error that survives all the way to the Federal Circuit. "The Board weighed the marks wrong" does not.
[ ] Where the register is crowded, argue weakness with the actual registrations, not a count. Extensive third-party use and registration of similar marks narrows the scope of protection. Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334 (Fed. Cir. 2015); Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. New Millennium Sports, S.L.U., 797 F.3d 1363 (Fed. Cir. 2015).
- Trap. Do not argue that prior registrations entitle you to one. They do not. In re Nett Designs, Inc., 236 F.3d 1339, 1342 (Fed. Cir. 2001).
[ ] Cite the record the way the Board wants it: date of submission, document name, TSDR page. TBMP § 1203.01. Judges who cannot find your exhibit do not weigh your exhibit.
[ ] Attach no evidence to the brief. Rule 2.142(d) closed the record at the notice of appeal. In re Jimmy Moore LLC, 119 U.S.P.Q.2d 1764 (T.T.A.B. 2016); In re Big Wrangler Steak House, Inc., 230 U.S.P.Q. 634 (T.T.A.B. 1986). If you need evidence in, you need Phase 8.
[ ] Sweep every response for every theory you have ever advanced, then either brief it or drop it deliberately. Arguments omitted from the brief are treated as waived. TBMP § 1203.02(g).
[ ] Label non-precedential decisions accurately. Only decisions the Board designates precedential bind it. TBMP § 101.03.
[ ] Kestrel. Twenty-one pages, filed 14 October 2025 with $200. Part III argues the sixth DuPont factor on the sixteen coexisting registrations; Part IV argues the second and third factors on the buyer and channel evidence — a $1,400 rowing machine bought from a specialty dealer against a $700 elliptical bought from a big-box floor; Part V argues that the examining attorney's decision made no finding at all on factor six despite the evidence being of record since April.

Phase 7 — Read the examining attorney's brief and decide whether to reply

[ ] Calendar the reply the day the Office's brief issues: 20 days from its mailing date, 10 pages maximum. 37 C.F.R. § 2.142(b)(1)-(2). No further briefs without leave.
[ ] Check first for new exhibits. Rule 2.142(d) binds the examining attorney too.
[ ] If new evidence appears, object in the reply specifically, by exhibit number, cite 37 C.F.R. § 2.142(d)(1) and In re Big Wrangler Steak House, ask that the exhibits be given no consideration, and then address them in the alternative and expressly without waiver.
- Trap. Evidence discussed on the merits without objection is treated as of record by waiver. TBMP § 1203.02(e); In re Pennzoil Products Co., 20 U.S.P.Q.2d 1753 (T.T.A.B. 1991). Silence plus argument equals admission.
[ ] Check for a new rationale for the same refusal. The Board may affirm on a rationale the examining attorney never articulated, and the Office may argue one for the first time in its brief. TBMP § 1217. The reply is your only chance to answer it.
[ ] Check for a concession — a ground quietly dropped — and note it so the decision comes out clean.
[ ] Skip the reply if the Office's brief merely restates the final action. A reply that adds nothing reminds the panel of the Office's best sentence.
[ ] Kestrel. The Office's brief mailed 8 December 2025 and attached four new retailer printouts. Kestrel replied on 22 December: eight pages, an objection to Exhibits 12 through 15 by number, and an alternative treatment of them expressly without waiver.

Phase 8 — Request a remand when the record has to reopen

[ ] Move the moment the new evidence exists. Discretion tightens as the appeal ages, and a request filed after briefing closes asks the Board to unwind work it has already done.
[ ] File a request to suspend the appeal and remand the application under 37 C.F.R. § 2.142(d)(2); TBMP § 1207.02, and include both required parts: the evidence itself, attached, and a showing of good cause for why it was not submitted earlier.
- Trap. A request that promises evidence is not a request. Attach it.
[ ] Match your facts to a recognized good-cause category: the evidence did not exist or was not available; new counsel has taken over and wishes to supplement; the examining attorney agrees; or you have finally obtained a consent agreement, which the Board recognizes as "inherently difficult and time-consuming to obtain." TBMP § 1207.02.
[ ] Recite the negotiation chronology by date — first contact, each draft, execution — so good cause is a timeline rather than an assertion.
[ ] Make the consent worth the motion. A bare "we consent" carries little weight; an agreement reciting each party's actual goods, channels of trade, customers, geographic scope, and the concrete steps each will take to avoid confusion carries a great deal. TMEP § 1207.01(d)(viii).
[ ] Understand what a grant buys: the examining attorney may issue a new non-final action on any issue necessitated by the new evidence, but may not raise an unrelated refusal without the Board's leave under 37 C.F.R. § 2.142(f)(6).
[ ] Prepare for the Board's own remand. If the panel spots an unraised ground that may bar registration it suspends and remands for further examination, ordinarily within 30 days; if the examining attorney then makes a new refusal final, no new notice of appeal is needed and supplemental briefing runs 60 / 60 / 20. 37 C.F.R. § 2.142(f)(1)-(5). Budget six to nine months and re-triage from Phase 1 as to the new ground.
[ ] Read any examining-attorney remand request closely. It occasionally reveals that the Office has found something worse than the refusal you are fighting.
[ ] Kestrel. The Consent to Register and Coexistence Agreement with Kestral Fitness Holdings was executed 14 January 2026. The remand request went in on 20 January attaching it as Exhibit 1, with the chronology from the 6 May 2025 first contact through four drafts. The Board granted, suspended, and remanded on 26 February. The examining attorney withdrew the refusal on 3 April 2026 and the Class 28 parent was approved for publication.

Phase 9 — The oral hearing

[ ] Decide in the week your reply is due. The request must be filed through ESTTA with the $500 fee not later than ten days after the due date for a reply brief. 37 C.F.R. § 2.142(e)(1).
[ ] Ask for a hearing when the goods or services are technical enough to be misread, when multiple grounds or alternative § 2(f) pleadings have tangled the issues, when the appeal issue was never crisply defined during prosecution, or when a deal with the examining attorney is still possible. TBMP § 1216.
- Why. The last one is the most underrated reason to show up. Hearings do occasionally produce an amendment everyone can live with.
[ ] Skip it on a clean record with one issue. A good brief already says everything you have.
[ ] Offer three tentative dates and times and state whether you will appear in person or by video. Video is the norm in current practice, and you arrange and pay for your own connection. TBMP § 1216.
[ ] Docket the scheduling notice and prepare exactly three things: a ninety-second opening stating the single reason the refusal is wrong; a one-page answer to the worst question you can imagine; and a five-minute rebuttal reserve you will spend on what the examining attorney actually says.
- Why. You get 20 minutes, some reservable for rebuttal; the examining attorney gets 10. 37 C.F.R. § 2.142(e)(3).
[ ] Bring record cites, not the record. The panel has the file and will ask for TSDR pages by number.
[ ] Do not recite the legal standard. The panel decides these every week.
[ ] Expect two surprises: the panel that decides need not be the panel that heard argument, and substitution is not error, In re Bose Corp., 772 F.2d 866, 869 (Fed. Cir. 1985); and a question from nowhere may be the panel testing a ground for affirmance nobody briefed, TBMP § 1217.

Practice tip. Twenty minutes is a conversation, not a speech. If the panel is asking about your third-best point, that is the point you should be arguing — the first two are already won or already lost.

Phase 10 — Read the decision like a diagnostician

[ ] Calendar three dates the day the decision issues: the one-month reconsideration deadline under 37 C.F.R. § 2.144, the 63-day judicial-review deadline under 37 C.F.R. § 2.145(d), and, if the refusal turned on a missing disclaimer, the 30-day window in which the Board will sometimes set its decision aside on entry of an acceptable disclaimer. In re Crystal Geyser Water Co., 85 U.S.P.Q.2d 1374 (T.T.A.B. 2007); In re Brown-Forman Corp., 81 U.S.P.Q.2d 1284 (T.T.A.B. 2006).
[ ] Run the four-question diagnostic within 48 hours.
1. Did the Board find facts or state a legal rule? Descriptiveness, genericness, functionality, acquired distinctiveness, and each individual DuPont factor are facts; the ultimate confusion conclusion, statutory interpretation, and constitutional questions are law. In re Cordua Restaurants, Inc., 823 F.3d 594, 599 (Fed. Cir. 2016).
2. Did the Board rely on evidence you could have rebutted but had nothing to answer with? That is an evidence problem, and evidence problems are solved in district court, not on appeal.
3. Did the Board decline to address something you briefed and put evidence on? That is the most promising judicial-review theory there is.
4. Is the decision precedential? TBMP § 101.03. A precedential adverse decision is a durable asset for every future adversary.
[ ] Decide whether to ask the Board to reconsider, rehear, or modify, within one month. 37 C.F.R. § 2.144; TBMP § 1219.01. No new evidence is allowed; either side may file, In re Ferrero S.p.A., 22 U.S.P.Q.2d 1800 (T.T.A.B. 1992); any response is due 20 days from service and any reply 20 days after that, TBMP § 543. It must be filed before any notice of appeal for judicial review. 37 C.F.R. § 2.145(a)(1), (c)(1).
- Why file. It works on an intervening change in the law, In re Hines, 32 U.S.P.Q.2d 1376 (T.T.A.B. 1994), or where the Board plainly overlooked or misread evidence, In re Digequip Security Industries, Inc., 225 U.S.P.Q. 230 (T.T.A.B. 1984). It also resets the 63-day clock and buys months you can spend commissioning a survey or drafting a complaint.
- Trap. It hands the Board a chance to write a tighter, better-supported opinion — precisely the opinion you will attack on substantial-evidence review. If the Federal Circuit is the plan, think hard before improving the decision you intend to challenge.
[ ] Do not plan on reopening a decided application for anything else. 37 C.F.R. § 2.142(g); TBMP § 1218.
[ ] Kestrel, counterfactual. Suppose Kestral Fitness Holdings had refused to sign and the Board had affirmed. The opinion recites the marks, the goods, and the channels, finds the goods related, and never mentions the sixteen third-party registrations. Question 1: mixed. Question 2: no — the evidence was in and unrebutted. Question 3: yes, and squarely. Question 4: non-precedential. That is a legal-error case, not an evidence case, and it points at one door only.

Phase 11 — The 63-day fork and further appeal

[ ] Diary day 63 from the Board's decision, or from its action on a timely reconsideration request, and treat it as immovable. 37 C.F.R. § 2.145(d). The statutory floor is 60 days, 15 U.S.C. § 1071(a)(2); the Office added three.
[ ] If you need more time, petition the Director — good cause if you ask before expiration, excusable neglect if you ask after. 37 C.F.R. § 2.145(e). Notice must go to the Board either way. 37 C.F.R. § 2.145(a), (c).
[ ] Understand that the choice is irrevocable. A party who appeals to the Federal Circuit is "thereby waiving his right to proceed under subsection (b)." 15 U.S.C. § 1071(a)(1).
[ ] Choose using the diagnostic from Phase 10.

| Your problem | Door | Why | | --- | --- | --- | | The statute itself — First Amendment, statutory interpretation | § 1071(a), Federal Circuit | A district court is bound by the same statute and does not bind the Board. Matal v. Tam, 582 U.S. 218 (2017) began as an ex parte refusal | | Legal error — wrong test, or a factor never weighed | § 1071(a), Federal Circuit | Legal conclusions are reviewed de novo. In re Cordua, 823 F.3d at 599 | | Facts you can win with evidence the Board never saw | § 1071(b), E.D. Virginia | New evidence on a disputed fact unlocks de novo findings on that issue. Kappos v. Hyatt, 566 U.S. 431 (2012); Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150, 155 (4th Cir. 2014) | | A Federal Circuit precedent that blocks you specifically | § 1071(b), E.D. Virginia | The Fourth Circuit is not bound by it. This is why Booking.com went there | | Facts, on a full record, with nothing to add | Neither | Substantial evidence tolerates two inconsistent conclusions. Consolo v. Federal Maritime Comm'n, 383 U.S. 607, 620 (1966) |

[ ] For a § 1071(a) appeal: file a written notice of appeal directed to the Director within the 63 days, 15 U.S.C. § 1071(a)(2); 37 C.F.R. § 2.145(b), file a copy with the Clerk of the Federal Circuit with the docketing fee, and comply with Fed. R. App. P. 15 and Fed. Cir. R. 15. Expect 12 to 18 months.
- Trap. Write it as a legal-error brief. On the facts you are not arguing that the Board was wrong; you are arguing that no reasonable factfinder could have reached its conclusion on that record. Conflating those is how applicants spend $60,000 to lose in six pages.
[ ] For a § 1071(b) action: file a complaint in the Eastern District of Virginia naming the Director as defendant, venue under 28 U.S.C. § 1391(e); TBMP § 903.03; serve under Fed. R. Civ. P. 4(i) and expect the United States to have 60 days to respond, Fed. R. Civ. P. 12(a)(2). The Board's record comes in with the same effect as if originally taken in the suit. 15 U.S.C. § 1071(b)(3).
[ ] Before filing under § 1071(b), write down every Board finding you intend to displace and the exhibit that displaces it. If the list is short, you have bought an expensive substantial-evidence review from a generalist judge instead of a cheap one from a specialist court.
[ ] Budget the expenses claim as a real risk. Section 1071(b)(3) makes the party bringing the case pay all the expenses "whether the final decision is in favor of such party or not," and in the Fourth Circuit that has included the Office's prorated attorney and paralegal salaries. Shammas v. Focarino, 784 F.3d 219 (4th Cir. 2015). Preserve the Peter v. NantKwest, Inc., 589 U.S. 23 (2019) argument; price the risk at Shammas levels anyway. Booking.com won its registration and still wrote a check for $76,873.61. Booking.com B.V. v. USPTO, 915 F.3d 171 (4th Cir. 2019).
[ ] Design any survey for a live Daubert challenge rather than a cold read. See Commissioning and Attacking a Trademark Survey, the Trademark Survey Design and Challenge Checklist, and the Evidence and Expert Witness Toolkit.
[ ] Remember the structural limit: there is no adverse private party in an ex parte § 1071(b) action, so you cannot join an infringement claim. If your real problem is a competitor, see Federal Court vs. TTAB.
[ ] If neither door is worth it, refile. Stare decisis does not bar re-prosecution where the facts or circumstances have changed. In re Hotels.com, L.P., 87 U.S.P.Q.2d 1100 (T.T.A.B. 2008). A new application opens a new record for $350 per class.
[ ] Kestrel, counterfactual. Question 3 came back yes, so the answer is the Federal Circuit under § 1071(a) — a legal-error brief arguing that the Board made no finding on the sixth DuPont factor despite sixteen registrations of record, on the authority of Guild Mortgage, Juice Generation, and Jack Wolfskin. E.D. Virginia would be the wrong door: Kestrel has no new evidence, and it would be paying the Office's lawyers for the privilege of losing the same argument twice.

Common Mistakes

| Mistake | What it costs | The fix | | --- | --- | --- | | Filing the request for reconsideration without the notice of appeal | The application, on the day the deadline passes | File both the same afternoon; check the ESTTA box | | Calendaring six months on a § 1(a) file | Abandonment | Three months, extendable once for $125 before the original date. 37 C.F.R. §§ 2.142(a), 2.62(a) | | Leaving an unmet requirement in the file | Affirmance without the Board reaching your argument. In re Brack | Rule 2.142(c) sweep of the whole file before the notice | | Attaching evidence to the appeal brief | The evidence, and credibility. In re Big Wrangler | Get it in at Phase 3, or move to remand at Phase 8 | | Filing a reconsideration request against a thin Office record | A cured record and a re-finalized refusal | Skip it when the burden problem is theirs | | Arguing about the Office's late exhibits without objecting | Admission by waiver. TBMP § 1203.02(e) | Object by exhibit number, then argue in the alternative without waiver | | A screenshot with no URL or access date | The exhibit. TBMP § 1208.03 | Capture both at the moment of collection | | A search-report hit list offered as third-party registrations | The argument. TBMP § 1208.02 | Print the TSDR record showing status and title | | Deciding about the Supplemental Register after the Board rules | The register. 37 C.F.R. § 2.142(g) | Decide at Phase 2; execute by remand if needed | | Appealing all three classes when one is refused | $850 in extra fees and a slower certificate | Divide for $100 per child. 37 C.F.R. § 2.87 | | A bare "we consent" consent agreement | Little weight, and a wasted remand | Recite goods, channels, customers, geography, and avoidance steps | | Filing an AAU or SOU during the appeal | Returned papers and a refunded fee | 37 C.F.R. §§ 2.76(a), 2.88(a) — wait | | Arguing "the Board weighed it wrong" at the Federal Circuit | The appeal, in six pages | Argue an unweighed factor or a wrong legal test | | Filing a § 1071(b) action with no new evidence | Five figures, plus the Office's expenses | List the findings and the exhibits first | | Missing the appeal deadline entirely | $250 and a discretionary grant | Petition to revive within two months, 37 C.F.R. § 2.66, filed with the notice of appeal and fee |

Deadlines at a Glance

| Trigger | Deadline | Fee | Authority | | --- | --- | --- | --- | | Notice of appeal, § 1 / § 44 application | 3 months from the final action's issue date | $225 per class | 37 C.F.R. §§ 2.142(a)(1), 2.62(a), 2.6(a)(18) | | Extension of the response/appeal period | Requested and paid before the 3-month date | $125 | 37 C.F.R. § 2.6(a)(28) | | Notice of appeal, § 66(a) application | 6 months from the issue date; no extension | $225 per class | 37 C.F.R. § 2.62(a) | | Request for reconsideration after final | Same period as the appeal; does not extend it | $0 | 37 C.F.R. § 2.63(b)(3); TMEP § 715.03 | | Petition to the Director | 2 months from the action, generally | $400 | 37 C.F.R. § 2.146 | | Petition to revive an abandoned application | 2 months from the notice of abandonment | $250 | 37 C.F.R. § 2.66 | | Appellant's brief | 60 days from the date of the appeal or the Board's resumption order | $200 per class | 37 C.F.R. §§ 2.142(b)(1), 2.6(a)(19) | | Examining attorney's brief | 60 days after the Board forwards the appellant's brief | — | 37 C.F.R. § 2.142(b)(1) | | Reply brief, 10 pages maximum | 20 days from the mailing date of the Office's brief | $0 | 37 C.F.R. § 2.142(b)(1)-(2) | | Request for oral hearing | Not later than 10 days after the reply brief's due date | $500 | 37 C.F.R. § 2.142(e)(1) | | Request for remand for new evidence | Any time before decision; odds fall with delay | $0 | 37 C.F.R. § 2.142(d)(2) | | Examination after a Board-ordered remand | Ordinarily 30 days | — | 37 C.F.R. § 2.142(f)(1) | | Supplemental briefing after a new final refusal on remand | 60 / 60 / 20 days | — | 37 C.F.R. § 2.142(f)(2)-(4) | | Disclaimer cure after an affirmance, where offered | 30 days from the decision | $0 | In re Crystal Geyser Water Co., 85 U.S.P.Q.2d 1374 | | Request for reconsideration of the Board's decision | 1 month from the decision | $0 | 37 C.F.R. § 2.144 | | Notice of appeal to the Federal Circuit, or civil action | 63 days from the decision or the action on reconsideration | Court fees | 37 C.F.R. § 2.145(d); 15 U.S.C. § 1071 | | Request to divide | Any time before approval for publication | $100 per child | 37 C.F.R. § 2.87 |

Confirm current fees on the USPTO's own schedule before quoting a client. Elapsed time from final action to Board decision runs twelve to sixteen months when a reconsideration request and a hearing are both in the sequence — the broader prosecution timeline is in What Happens After You File.