USPTO Appeals

A final refusal from an examining attorney feels like the end of an application. It usually isn't. The refusal can be challenged through a request for reconsideration, an ex parte appeal to the Trademark Trial and Appeal Board, or both — and many refusals that survive examination do not survive a well-constructed appeal brief. The decision to appeal, however, deserves the same candor as the appeal itself: some refusals are worth fighting, and some are better answered by amending the application or refiling on a stronger footing.

We begin with that assessment — a straight evaluation of the refusal's strength and your realistic prospects — and proceed accordingly: requests for reconsideration presenting new evidence or amendment, the appeal brief and reply brief before the Board, and oral hearing where one would help. Because an appeal is decided on the examination record, we also advise on whether to bolster that record before briefing begins.

Ex parte appeals are conducted entirely on the papers between you and the USPTO — there is no adversary and no discovery. Where a matter warrants it, the Firm may associate experienced outside counsel to assist, with your informed consent. Review beyond the Board — in the Federal Circuit or district court — is outside our practice and is referred to appropriate counsel. All appeal work is quoted as a flat fee, stage by stage.