In a significant decision issued June 6, 2025, the Trademark Trial and Appeal Board (TTAB) ruled that appellants cannot reference arguments made during prosecution in their appeal briefs. This precedential ruling in Princeton Equity Group LLC v. USPTO underscores a long-standing procedural requirement.
The case involved an applicant's attempt to incorporate-by-reference arguments regarding geographic descriptiveness, which had been previously rejected by the U.S. Patent and Trademark Office (USPTO) during examination. On appeal before the TTAB, counsel stated they were "repeating and restating" earlier legal positions without including them directly in the brief. The Board found this approach insufficient.
This ruling reinforces a fundamental principle: all arguments challenging an examiner's refusal must be explicitly included in the initial appeal filing to remain preserved for TTAB review. Incorporation-by-reference does not create a waiver, it results in forfeiture of those specific legal positions, according to the Board.
The decision offers practical insight into two critical aspects of trademark law.
- Confusability: The case highlights scrutiny surrounding trademarks that may be confusing with existing marks or misleading due to descriptive language. Comprehensive briefing on each refusal ground is essential.
Thorough tracking of all proceedings involving client marks is also paramount for trademark counsel. They must ensure complete visibility into potential conflicts and related legal actions across various jurisdictions.
The emphasis on direct presentation underscores the importance businesses place on clear, immediate access to monitoring data regarding their trademarks. Such tools facilitate proactive defense strategies against infringement claims by enabling early identification of conflicts before they reach appeal stages.