1209.02 Upon Request by Trademark Examining Attorney
37 CFR § 2.142(f)(6) If, during an appeal from a refusal of registration, it appears to the examiner that an issue not involved in the appeal may render the mark of the appellant unregistrable, the examiner may, by written request, ask the Board to suspend the appeal and to remand the application to the examiner for further examination. If the request is granted, the examiner and appellant shall proceed as provided by §§ 2.61, 2.62, 2.63 and 2.64. After the additional ground for refusal of registration has been withdrawn or made final, the examiner shall return the application to the Board, which shall resume proceedings in the appeal and take further appropriate action with respect thereto.
If, during an ex parte appeal to the Board, it appears to the examining attorney that an issue not involved in the appeal may render the mark of the applicant unregistrable, the examining attorney may file a written request with the Board to suspend the appeal and remand the application for further examination. [ Note 1.] Such a request may be filed at any point in the appeal prior to the Board’s rendering a final decision, including at the point the examining attorney is to submit his or her appeal brief or supplemental appeal brief. [ Note 2.]
Because the mandate of the USPTO is to register only eligible marks, an examining attorney’s request for remand will generally be granted unless there is no valid basis for the request, e.g., remand is requested to require a disclaimer of a term which is not part of the mark. If the examining attorney’s request for remand is granted, the Board will forward the application to the examining attorney for further examination in accordance with the request. In its action granting the request, the Board will allow the examining attorney a specified time in which to issue an Office action pursuant to the request. Thereafter, the examining attorney and applicant should proceed as provided in 37 CFR § 2.61 through 37 CFR § 2.64. [ Note 3.]
If, upon remand, the examining attorney determines that registration should not be finally refused on the additional ground for refusal of registration or that it is appropriate to withdraw the requirement mentioned in the request for remand, the examining attorney should issue a written Office action in which the six-month response clause is omitted and return the application to the Board; proceedings with respect to the appeal will be resumed and further appropriate action will be taken therein. [ Note 4.] If the examining attorney determines, after considering applicant’s response to the nonfinal Office action, that a final refusal on that ground should issue or that a requirement should be made final, the examining attorney should issue a new action, omitting the six-month response clause, which makes the refusal final as to both the additional ground and/or requirement and the ground(s) and/or requirements asserted in the previous final action. The application should then be returned to the Board, and proceedings in the appeal will be resumed. For information as to the further action taken by the Board, i.e., for information concerning the filing of supplemental briefs, and a request for oral hearing, see TBMP § 1209.01. [ Note 5.]
The examining attorney may not, upon remand under 37 CFR § 2.142(f)(6), make a requirement or refuse registration on a new ground not mentioned in the examining attorney’s request for remand. If the examining attorney, upon remand, wishes to make a new requirement or refuse registration on a new ground not mentioned in the request for remand, the examining attorney must file a new request with the Board for jurisdiction to make a new requirement or refuse registration on the new ground. Nor may the examining attorney submit evidence that does not relate to the requirement or ground mentioned in the request for remand; thus, the examining attorney may not submit evidence that supports the grounds for refusal on which the appeal was originally filed.
For information concerning the submission of new evidence after remand for refusal of registration on an additional ground, see TBMP § 1207.05.
NOTES:
2. See In re Boston Beer Co. L.P., 47 USPQ2d 1914, 1918 (TTAB 1998) (Board granted examining attorney’s request for remand which was filed after submission of applicant’s appeal brief and supplemental appeal brief in order to allow examining attorney to refuse registration on additional ground).
3. See 37 CFR § 2.142(f)(6). Cf. 37 CFR § 2.142(f)(3).
4. See 37 CFR § 2.142(f)(6).
5. See In re Boston Beer Co. L.P., 47 USPQ2d 1914, 1918 (TTAB 1998).