1207.02    Request to Remand for Additional Evidence

If an applicant or examining attorney wishes to introduce additional evidence after an appeal has been filed, the applicant or examining attorney may file a written request with the Board to suspend the appeal and remand the application for further examination. [ Note 1.]

A request under 37 CFR § 2.142(d)  to suspend and remand for additional evidence must be filed prior to the rendering of the Board’s final decision on the appeal. [ Note 2.] In addition, the request must include a showing of good cause therefor (which may take the form of a satisfactory explanation as to why the evidence was not filed prior to appeal), and be accompanied by the additional evidence sought to be introduced. [ Note 3.] The length of the delay in making the request after the reason for the remand becomes known, or the point in the appeal process at which the request for remand is made, will be considered in the determination of whether good cause exists. Generally, the later in the appeal proceeding that the request for remand is filed, the stronger the reason that must be given for good cause to be found. [ Note 4.]

Examples of circumstances that have been found to constitute good cause for a remand for additional evidence include the following:

  • (1) The evidence was not previously available. [ Note 5.] Even if the evidence was not previously available, good cause may not be found if the newly available evidence is merely cumulative in nature. Thus, if the examining attorney requests remand in order to submit an article which was published subsequent to the filing of the appeal, but which is of substantially the same nature as articles previously made of record, the request may be denied. Nor can the examining attorney use the subsequent publication of a single article to make of record articles which were previously available. Similarly, if the applicant requests remand to make of record its most recent monthly sales or advertising figures in support of a Trademark Act § 2(f), 15 U.S.C. § 1052(f), claim, the request may be denied. There is a point at which prosecution or examination must come to an end.
  • (2) A new attorney for the applicant, or a new examining attorney, has taken over the case and wishes to supplement the evidence of record. The transfer of a case from one firm member to another is not considered by the Board to constitute good cause for a remand under the "new attorney" rationale. However, the transfer of the case from in-house counsel to an outside firm is treated as a new attorney taking over the case. Similarly, a different examining attorney being assigned the application is treated as a new attorney taking over the case.
  • (3) The applicant and examining attorney have agreed to the remand.

In addition, because a consent agreement offered in response to a refusal to register under Trademark Act § 2(d), 15 U.S.C. § 1052(d), [ Note 6.] is inherently difficult and time-consuming to obtain, and may be highly persuasive of registrability, the Board will grant a request to suspend and remand for consideration of a consent agreement if the request, accompanied by the consent agreement, is filed at any time prior to the rendering of the Board’s final decision on the appeal.

If a request to remand for additional evidence is granted, the nonrequesting party may submit additional evidence in response to the evidence submitted with the request. [ Note 7.] However, depending on the stage of the appeal, the Board may direct that any responsive evidence be submitted with a supplemental brief. [ Note 8.]

When an applicant’s request to suspend and remand for additional evidence is granted, and the application is remanded to the examining attorney for further examination, the examining attorney may approve the application for publication (or for registration, in the case of a Supplemental Register application), or adhere to the action from which the appeal was taken. The examining attorney may also issue a new nonfinal action asserting any new refusal or requirement necessitated by the new evidence. The examining attorney may not, however, assert a new refusal or requirement unrelated to the new evidence unless the examining attorney files with the Board a request under 37 CFR § 2.142(f)(6)  for remand to assert the new refusal or requirement, and the request is granted. If the examining attorney is persuaded, on the basis of the new evidence, that the applicant is entitled to the registration sought, and approves the application for publication (or for registration, in the case of a Supplemental Register application), the appeal will be moot. However, the examining attorney should so notify the applicant by telephone or email. [ Note 9.] If the examining attorney, after consideration of the new evidence, adheres to the final refusal to register, or ultimately issues a new final refusal to register, the six-month response clause should be omitted from the action; the application should be returned to the Board; proceedings with respect to the appeal will be resumed; and further appropriate action will be taken therein.

When an examining attorney’s request to suspend and remand for additional evidence is granted, the Board, in its action granting the request, will allow the examining attorney time in which to issue an Office action (omitting the six-month response clause) relating to the new evidence to be submitted therewith. After the examining attorney’s new action has been issued, the application should be returned to the Board; and proceedings with respect to the appeal will be resumed. The applicant will be allowed an opportunity to submit, if it so desires, responsive evidence; and further appropriate action with respect to the appeal will be taken. If the applicant’s appeal brief has already been filed, applicant will be allowed an opportunity, if it so desires, to file a supplemental brief directed to the new evidence submitted by the examining attorney.

NOTES:

 1.   See 37 CFR § 2.142(d). See also In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1696 (TTAB 1992); In re Wells Fargo & Co., 231 USPQ 95, 101 n.24 (TTAB 1986); In re Big Wrangler Steak House, Inc., 230 USPQ 634, 635 n.4 (TTAB 1986); In re Bercut-Vandervoort & Co., 229 USPQ 763, 766 n.6 (TTAB 1986); In re Chung, Jeanne & Kim Co., 226 USPQ 938, 940 n.6 (TTAB 1985); In re Mayer-Beaton Corp., 223 USPQ 1347, 1348 (TTAB 1984); In re Compagnie Internationale Pour L’Informatique-Cie Honeywell Bull, 223 USPQ 363 n.3 (TTAB 1984); In re Carvel Corp., 223 USPQ 65, 66 (TTAB 1984); In re Jos. Schlitz Brewing Co., 223 USPQ 45, 46 n.1 (TTAB 1983); In re Best Western Family Steak House, Inc., 222 USPQ 827 n.1 (TTAB 1984); In re Jeep Corp., 222 USPQ 333, 336 n.3 (TTAB 1984); In re Consolidated Foods Corp., 218 USPQ 184, 186 n.2 (TTAB 1983); In re Royal Viking Line A/S, 216 USPQ 795, 797 n.3 (TTAB 1982).

 2.   See In re Johanna Farms, Inc., 223 USPQ 459, 460 (TTAB 1984); In re Carvel Corp., 223 USPQ 65 (TTAB 1984).

 3.   See In re Luxuria s.r.o., 100 USPQ2d 1146, 1147 (TTAB 2011) (applicant’s request for remand denied for failure to show good cause); In re Big Wrangler Steak House, Inc., 230 USPQ 634, 635 n.4 (TTAB 1986); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986); In re Chung, Jeanne & Kim Co., 226 USPQ 938, 940 n.6 (TTAB 1985); In re Mayer-Beaton Corp., 223 USPQ 1347, 1348 (TTAB 1984); In re Compagnie Internationale Pour L’Informatique-Cie Honeywell Bull, 223 USPQ 363, 636 n.3 (TTAB 1984); In re Jeep Corp., 222 USPQ 333 (TTAB 1984); and In re Historic Wharf’s Associates, Inc., 222 USPQ 92, 93 n.1 (TTAB 1984).

 4.   See In re Luxuria s.r.o., 100 USPQ2d 1146, 1147 (TTAB 2011) (denial of request for remand made after appeal briefs filed); In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1334 (TTAB 2009) (request for remand denied for failure to show good cause so late in the appeal). S ee also In re Pennzoil Products Co., 20 USPQ2d 1753, 1756 n.9 (TTAB 1991).

 5.   See In re Zanova Inc., 59 USPQ2d 1300, 1302 (TTAB 2001); In re Central Sprinkler Co., 49 USPQ2d 1194 n.2 (TTAB 1998) (applicant’s request for remand made in its appeal brief in order to allow examining attorney to consider additional third-party registrations denied because such evidence could have been submitted earlier in the prosecution).

 6.   See, e.g., In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969, 970 (Fed. Cir. 1985); In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973).

 7.   See In re Northland Aluminum Products, Inc., 221 USPQ 1110, 1112 (TTAB 1984), aff’d, 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985). Cf. In re Development Dimensions International, Inc., 219 USPQ 161, 162 (TTAB 1983).

 8.   In re HerbalScience Group LLC, 96 USPQ2d 1321, 1323 n.2 (TTAB 2010).

 9.   See TMEP § 715.04.