Precedential No. 5: TTAB Will Not Accept Incorporation-By-Reference of An Appellant's Prosecution Arguments
The Board wasted little time in affirming a Section 2(e)(2) refusal to register the mark PRINCETON EQUITY GROUP, agreeing with Examining Attorney Marc Leipzig that the mark is primarily geographically descriptive of Applicant's financial services. The Board was more concerned about applicant's arguments on appeal, or lack thereof, and particularly with applicant's attempt to incorporate its prosecution arguments by reference. In re Princeton Equity Group LLC, Serial No. 97397212 (June 6, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).
In its brief, applicant's only remark specifically directed to the refusal was to state that it "repeats and reiterates the arguments and evidence set forth" during prosecution of the application. The Board was not happy: "this is an insufficient presentation of whatever arguments Applicant may have contemplated."
[T]he Court in SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312 (Fed. Cir. 2006) approvingly quoted Tolbert v. Queens Coll., 242 F.3d 58, 75 (2d Cir. 2001), for the proposition that arguments “adverted to in a perfunctory manner, unaccompanied by some effort at developed argumentation, are deemed waived.” 439 F.3d at 1320. More recently, in In re Killian, 45 F.4th 1373 (Fed. Cir. 2022), the court said that “failing to present anything more than a conclusory, skeletal argument” on an issue of patentability will result in forfeiture. Id. at 1385-86.
Here, applicant failed to present even "a 'conclusory, skeletal' substantive argument, nor does it advert to any particular issue 'in a perfunctory manner,' let alone display 'some effort at developed argumentation.'" Its statement leaves it to the Board to ferret out what applicant's argument might be, and acceptance of such an incorporation-by-reference might encourage circumvention of the 25-page limit on appeal briefs.
The Board noted that it could rule that applicant had forfeited any objection to the refusal. But because the Board has not previously held, in a precedential decision, that incorporation-by-reference statements are inadequate to present an applicant's argument, the Board made an attempt to identify what argumens applicant had it mind. But the Board made it clear that, in futuro:
Parties whose briefs purport to incorporate by reference arguments made during prosecution will be held to have failed thereby to present whatever arguments the incorporation statement purports to cover to the Board and will be deemed to have forfeited them.
Reviewing the prosecution history of the subject application, the Board did not find anything that "even purports to challenge that the proposed mark is primarily geographically descriptive." Applicant did assert, as it did in its appeal brief, that it is "common" for the USPTO to allow businesses in the financial field "to use geographic terms" in their marks, citing three registrations form marks containing the word ASPEN. The Board observed once again that each case must be decided on its own record, and that "[p]ointing to a few other registrations does nothing to show that the Section 2(e)(2) refusal in this case was improper."
And so, the Board affirmed the refusal.
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TTABlogger comment: WYHA?
1 Comments:
This sounds to me like the applicant's counsel was trying to handle a difficult situation with a difficult client, i.e. the client insisted on appealing but not paying for it; or instructing the lawyer to appeal by just resubmitting its prosecution arguments; or maybe the lawyers were just presenting a test case. I am only speculating, however.
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