Registration Appeal Process
Process for “Request for Reconsideration or Appeal” received from and an applicant and/or his/her counsel:
The Registrar of the Trademark (TM) office manages the normal TM review and approval process. Assuming an applicant is denied, and subsequently files a “Request for Reconsideration”, the TM Registrar initiates the review process, and analyzes the Request for Reconsideration – evaluating the applicant’s case and appeal for reconsideration.
- It is important for the TM Registrar to develop a singular memo to 1) outline the Mark the registrant is trying to register, 2) highlight any relevant points the registrant is making in their own advocacy, and 3) the legal and policy basis for the TM Registrar’s recommendation for denial.
- If the TM Registrar chooses to reverse their original decision, they communicate appropriately with the registrant.
- If the TM Registrar feels a denial is still in order, they send the case file to the Deputy Director of the Policy & Government Affairs department for additional review and analysis.
- Upon review, if the Deputy Director of P&GR agrees with the original denial - it is sent back to the TM Registrar, who sends the registrant a Final Agency Denial letter of the appeal.
- If however, that review recommends an agency reversal, the Deputy Director of P&GR develops a singular memo outlining the pertinent policy and legal basis for the recommendation to reverse the agency denial. Then (and only then) would it trigger a broader agency TM Appeal Review Committee to meet, review the Appeal, and issue a recommendation.
- The Committee will be comprised of qualified attorneys and paralegals within the agency.
- The initial review committee members are: Jennifer Waddell, Sherrell Forbes, and Kelly Collier.
- The Deputy Secretary for Policy & Govt Relations, a non-voting member of the Committee will Chair the meeting and facilitate the discussion.
- Prior to the Committee meeting, the TM Registrar would send each of the committee members the previously prepared memo, outlining: 1) the registrants TM registration request, 2) any pertinent points the registrant is making on their own behalf, and 3) more specifically, the Director's policy and / or legal reasons for recommending a denial.
- Additionally, the Deputy Director of P&GR would also send the committee members the previously prepared memo outlining reasons for recommending a reversal of the denial.
- Ideally, the committee would need to have a week to review the two memos, and subsequently meet (in person if possible - or in a virtual context due to COVID or other reasons).
- At the Committee meeting, both the TM Registrar and the Deputy Director of P&GR would verbally present their respective memo and the pertinent facts before the committee.
- Following the presentations, the Committee would of course be encouraged to ask questions of both. At that point, the Committee would meet along with the Chair for further discussion and to develop a “Consensus” recommendation.
- If it’s a unanimous recommendation, then the Registrar would send the registrant a letter reflecting the Final Agency Decision.
- If the recommendation is not unanimous, the case file, and the committee's (2-1) recommendation would be later presented to the Chief Deputy of the Agency by the Deputy Secretary of P&GRs, who would then make the Final Agency Decision. The TM Registrar would then communicate that Final Agency Decision to the registrant.
(REVISED POLICY – October 7, 2020 – with approval from the Chief Deputy)