In a precedential opinion issued June 6, 2025, the United States Patent and Trademark Office’s (“USPTO”) Trademark Trial and Appeal Board (“TTAB”) affirmed the refusal to register PRINCETON EQUITY GROUP as a trademark for “strategic financial advisory services; providing equity capital for others.” The Board agreed with the USPTO Examining Attorney that the mark is primarily geographically descriptive under § 2(e)(2) of the Lanham Act because the applicant is based in Princeton, New Jersey, and “EQUITY GROUP” adds only descriptive matter to this geographic term. The Board declined to address a separate § 2(d) likelihood-of-confusion refusal because the geographic bar proved dispositive.
The Bigger Headline: No More Incorporation-by-Reference
While the geographic descriptiveness issue is straightforward, the opinion was made precedential for its procedural warning. The applicant’s appeal brief did not tackle the Examiner’s evidence or the factors relevant to geographic distinctiveness. Instead, it stated that it “repeats and restates the arguments and evidence set forth” in its earlier Office Action responses. The Board found that this approach “falls short of even setting forth a ‘conclusory, skeletal’ argument,” and—critically—announced a prospective rule: “Parties whose briefs purport to incorporate by reference arguments made during prosecution will be held to have failed thereby to present those arguments to the Board and will be deemed to have forfeited them.”
Put plainly, the Board will not dig through the file history to divine a party’s position. If the argument is worth preserving, it must appear in the four corners of the brief—within the 25-page limit.
Why the Board Is Drawing a Hard Line
The decision highlights three practical concerns. First, prosecution arguments often shift or narrow over time; blanket incorporation leaves the Board guessing which points remain live. Second, forcing the tribunal to reconstruct arguments “shifts the expenditure of resources from an applicant to the Board,” undermining judicial economy. Third, incorporation threatens to circumvent the appeal brief page limit, frustrating docket control.
By elevating the issue to precedential status, the Board has signaled that enforcement will be strict going forward. Given that it had not expressly ruled on this issue in a precedential decision before, it did consider the arguments the applicant had incorporated by reference but warned it would not do so in the future.
Practice Takeaways for Brand Owners and Their Counsel
Brief the issue—or lose it. TTAB appellants must treat the appeal as a fresh, self-contained submission. Any key arguments made in prosecution must be set out in the appeal brief.
The Board has offered a bright-line procedural rule here. Going forward, half-hearted attempts to incorporate arguments by reference will cost applicants their arguments—and perhaps their registrations. Practitioners would be well advised to treat the brief as their only bite at the apple, lest their best points be deemed waived.