There are quite a few differences in the way deadlines are calculated for trademark practice, as opposed to patent practice. One of the main differences is how to calculate the deadline for filing an appeal to the Trademark Trial and Appeal Board (TTAB). And one of the main problems in figuring out the deadline is that you must look beyond the TMEP to find the answer - one important rule is located in the TBMP. Below I list the main rules that dictate how the appeal deadlines are calculated for trademark practice.
- You have 6 months to file a Notice of Appeal and an Appeal Brief in response to a final refusal to register a trademark. TMEP 1501
- Assuming you file a Notice of Appeal more than two months before the 6 month deadline (see above), you have 60 days to file an Appeal Brief after the Notice of Appeal. TMEP 1501.02(a)
- You have 6 months to file a Request for Reconsideration in response to a final refusal to register a trademark. TMEP 715.03. But keep in mind that the Request for Reconsideration does not affect the 6 month deadline above.
- If you timely file a Request for Reconsideration and a Notice of Appeal in response to a final refusal , then the 6 month deadline is halted. If the Examiner subsequently decides to deny your Request for Reconsideration, the TTAB will give you additional time to file your Appeal Brief. TBMP 1204
Lesson Learned: You should always file a Notice of Appeal along with the Request for Reconsideration, since there is no penalty for doing so and it will stop the 6 month Appeal Brief deadline. Subsequently, you will either get a Notice of Allowance from the trademark examining attorney (which will render the appeal moot) or you will receive a new refusal and the TTAB will give you additional time to file an Appeal Brief.
The only reason not to file the Notice of Appeal with the Request for Reconsideration, would be to save the $100 (per class) fee that goes with the Notice of Appeal. But that small benefit is outweighed by the halting of the deadline and the ease of which this process fits into a standard patent/trademark docketing program. Further, if you file a Request for Reconsideration without filing a Notice of Appeal, there is a possibility that you will run into the 6 -month deadline, without having received a response to the Request, thereby forcing you to file the Notice of Appeal without having the benefit of reading the examining attorney's last refusal. Thus, it's better to stop the 6-month deadline so you can receive a response to the Request and then have additional time to prepare and file an Appeal Brief.