1203.02(g) Waiver of Claim or Requirement in Brief
If an applicant, in its appeal brief, does not assert a claim made during prosecution, it may be deemed waived by the Board. [ Note 1.] Similarly, if an applicant, in its appeal brief, complies with a requirement and the examining attorney does not discuss the requirement, or if the examining attorney does not discuss a ground for refusal in his brief, the requirement or refusal may be deemed withdrawn. See TBMP § 1203.02(b). [ Note 2.] However, the better practice, if an applicant seeks to comply with a requirement, is to request remand rather than simply offering the amendment as part of its brief. See TBMP § 1205.
NOTES:
1. See In re Gibson Guitar Corp., 61 USPQ2d 1948,1950 n.2 (TTAB 2001) (applicant did not, in its appeal brief, pursue claim of inherent distinctiveness, and therefore the claim was not considered by Board). See also In re E5 LLC, 103 USPQ2d 1578, 1579 n.1 (TTAB 2012) (during prosecution, applicant argued that mark was unitary but did not maintain argument in its appeal brief). Cf. In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1852 n.31 (TTAB 20120) (applicant mentioned claim of acquired distinctiveness in original appeal brief but not again in supplemental appeal brief; because the examining attorney addressed the point in supplemental brief, Board considered the claim).
2. See In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1512 n.2 (TTAB 2001) (requirement for translation deemed moot because applicant, in its appeal brief, offered translation, and examining attorney, in her appeal brief, did not address issue).