1203.02(c) Applicant’s Reply Brief
Within 20 days from the issue date of the examining attorney’s appeal brief, or within an extension of time for the purpose, the applicant may, if it so desires, file a reply brief. [ Note 1.] However, the filing of a reply brief is not mandatory.
The reply brief should not include a proposed amendment, a request for remand, or a request for an oral hearing, within the body of the brief. [ Note 2.] Such requests should be filed by separately captioned submissions. See TBMP § 1205.01, TBMP § 1207.02 and TBMP § 1216.
If the applicant files a reply brief, the Board will notify the examining attorney. If the examining attorney, having read the applicant’s reply brief, is persuaded thereby that the applicant is entitled to the registration sought, the examining attorney may approve the application for publication (or for registration, in the case of a Supplemental Register application), and the appeal will be moot. The examining attorney should notify the applicant by telephone or email. [ Note 3.]
There is no provision in the rules for the filing by the examining attorney of a written response to the applicant’s reply brief. However, if the applicant requests an oral hearing, the examining attorney may respond orally, at the oral hearing, to arguments raised in the applicant’s reply brief. [ Note 4.]
NOTES:
1. See 37 CFR § 2.142(b)(1); In re Gena Laboratories, Inc., 230 USPQ 382, 383 n.4 (TTAB 1985); In re Randall & Hustedt, 226 USPQ 1031, 1033 n.2 (TTAB 1985). Cf. In re Gale Hayman Inc., 15 USPQ2d 1478 n.3 (TTAB 1990).
2. See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1859 (TTAB 2014) ("To the extent applicant seeks to request remand for such consideration by the examining attorney, burying this request in its reply brief is not sufficient for the Board to treat it as a request for remand."). TMEP § 1501.03.
3. See TMEP § 1501.03.
4. See TMEP § 1501.02(c).