In a precedential decision issued June 6, 2025, the Trademark Trial and Appeal Board (TTAB) confirmed what has long been suggested in its procedural manual: Appellants in ex parte appeals may not incorporate arguments from prior prosecution by reference in their briefs. In In re Princeton Equity Group LLC, the Board held that an applicant’s attempt to incorporate arguments from earlier filings without actually making them in the appeal brief was insufficient to preserve those arguments for review.
In the underlying prosecution history, the USPTO refused registration of the mark at issue on multiple grounds, including that the mark is primarily geographically descriptive under Section 2(e)(2). On appeal, the applicant didn't directly address the geographic descriptiveness refusal in its brief, instead stating that it “repeats and restates” its earlier arguments made in response to the refusals now being appealed.
The Board held that such an incorporation-by-reference approach was inadequate. Citing both Federal Circuit precedent and its own non-precedential cases, the Board explained that “[a]rguments ‘adverted to in a perfunctory manner, unaccompanied by some effort at developed argumentation, are deemed waived.’” From now on, the TTAB will treat these incorporation statements as forfeiting the underlying arguments entirely.
Because there was no controlling precedent prohibiting appellants from doing so, the Board took it upon itself to review the referenced filings. After finding them unpersuasive, it made clear that it will not do so in future cases. The decision sets a clear precedent that all legal and factual arguments must be included directly in the appeal brief.
The Board further noted that this requirement not only provides clarity and promotes judicial efficiency, but also prevents parties from bypassing the TTAB’s word and page limits on briefing. Allowing incorporation by reference could otherwise create a loophole ripe for abuse.
Practitioners should note that when appealing to the TTAB, all substantive arguments must be clearly stated and fully developed in the appeal brief. Simply referring to arguments made during prosecution will result in waiver of those arguments.
[W]e could deem Applicant to have forfeited any objection to this refusal.
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