IP Law Daily, TRADEMARK—TTAB: Parties can't incorporate trademark prosecution arguments by reference in TTAB proceedings, Board rules, (Jun 9, 2025)

By Steven Melendez

The Board said in a precedential opinion it won't accept arguments presented that way in the future.

The Trademark Trial and Appeal Board (TTAB) will not accept arguments incorporated by reference from trademark prosecution filings, the Board said in a precedential opinion. In view of the applicant’s failure to present arguments on appeal, the Board affirmed a trademark examining attorney’s refusal to register the mark PRINCETON EQUITY GROUP on the ground that it was primarily geographically descriptive of the applicant's financial services (In re Princeton Equity Group LLC, No. 97397212 (T.T.A.B. Jun. 6, 2025)).

The ruling concerned an attempt by Princeton Equity Group LLC to register the mark PRINCETON EQUITY GROUP. An examining attorney had denied the registration, finding it primarily geographically descriptive of the services provided by the Princeton, New Jersey, company. The examiner also cited likelihood of confusion with an existing PRINCETON ENTREPRENEURIAL HUB mark.

Princeton Equity Group appealed, but the Board found that its "appeal brief says little about this refusal" and "does not address its legal or evidentiary basis." The company did argue that it is "common" for geographic terms to be allowed in financial firms' marks, citing three examples including the term ASPEN. But pointing to other successfully registered marks as counterexamples isn't enough to address why the refusal was purportedly improper, according to the ruling.

"The only remark Applicant directs specifically at this refusal is to state that Applicant 'repeats and restates the arguments and evidence set forth in' its June 2023 response to the Nonfinal Office Action and its August 2024 request for reconsideration," according to the ruling. "As we explain next, this is an insufficient presentation of whatever arguments Applicant may have contemplated."

The Trademark Trial and Appeal Board Manual of Procedure (TBMP) cautions that arguments from trademark prosecution not explicitly asserted in appellate briefs can be deemed waived, according to the ruling. And the Board has previously held that if refusal is based on more than one "substantive ground or requirement," and one isn't addressed in the appeal brief, the entire appeal can be thrown out.

Simply saying that a trademark applicant "repeats and restates" arguments from prosecution forces the board to "rummage through the prosecution filings to try to identify, extract, articulate, and address whatever we think that may be," according to the ruling. That shifts work from an applicant to the TTAB, risks giving applicants a way to circumvent the Board's 25-page limit on appeal briefs, and causes issues if arguments shifted during examination, according to the ruling.

Because the Board hadn't previously explicitly said so in a past precedential opinion, it said it would try to "identify and address" the relevant cited arguments but would not accept arguments incorporated by reference from prosecution materials in the future.

The Board also found that Princeton Equity Group didn't make a clear argument in its cited prosecution materials that registration should be allowed, beyond mentioning the ASPEN marks also pointed to in the appellate briefs. It therefore affirmed the decision not to register the mark.

Since registration was refused based on the geographic argument, the Board didn't reach the question of likelihood of confusion.

The Case is Serial No. 97397212.

Judge: Casagrande, T.

Attorneys: Robert W. Clarida (Reitler Kailas & Rosenblatt, LLP) for Princeton Equity Group LLC. Marc Leipzig for the USPTO.

Companies: Princeton Equity Group LLC

Cases: Trademark USPTO