515 Motion to Remand Application to Examining Attorney
37 C.F.R. § 2.130 New matter suggested by the trademark examining attorney. If, while an inter partes proceeding involving an application under section 1 or 44 of the Act is pending, facts appear which, in the opinion of the examining attorney, render the mark in the application unregistrable, the examining attorney should request that the Board remand the application. The Board may suspend the proceeding and remand the application to the trademark examining attorney for an ex parte determination of the question of registrability. A copy of the trademark examining attorney’s final action will be furnished to the parties to the inter partes proceeding following the final determination of registrability by the trademark examining attorney or the Board on appeal. The Board will consider the application for such further inter partes action as may be appropriate.
37 C.F.R. § 2.131 Remand after decision in inter partes proceeding. If, during an inter partes proceeding involving an application under section 1 or 44 of the Act, facts are disclosed which appear to render the mark unregistrable, but such matter has not been tried under the pleadings as filed by the parties or as they might be deemed to be amended under Rule 15(b) of the Federal Rules of Civil Procedure to conform to the evidence, the Trademark Trial and Appeal Board, in lieu of determining the matter in the decision on the proceeding, may remand the application to the trademark examining attorney for reexamination in the event the applicant ultimately prevails in the inter partes proceeding. Upon remand, the trademark examining attorney shall reexamine the application in the light of the matter referenced by the Board. If, upon reexamination, the trademark examining attorney finally refuses registration to the applicant, an appeal may be taken as provided by §§ 2.141 and 2.142.
If, during the pendency of an opposition, concurrent use, or interference proceeding involving an application under Trademark Act § 1, 15 U.S.C. § 1051, or Trademark Act § 44, 15 U.S.C. § 1126, the examining attorney learns of facts that, in his or her opinion, render the mark of the involved application unregistrable, the examining attorney may file a request that the Board suspend the inter partes proceeding and remand the application to the examining attorney for further ex parte examination. [ Note 1.] An application under Trademark Act § 66(a), 15 U.S.C. § 1141f(a), may not be remanded under 37 C.F.R. § 2.130 or 37 C.F.R. § 2.131. [ Note 2.]
There is no provision under which such a remand may be made upon motion by a party to the proceeding. Moreover, a request to amend an application that is the subject of an inter partes proceeding before the Board is not remanded to the examining attorney for consideration, but rather is considered and determined by the Board. [ Note 3.] See TBMP § 514.
However, if, during the course of an opposition, concurrent use, or interference proceeding, involving an application under Trademark Act § 1, 15 U.S.C. § 1051, or Trademark Act § 44, 15 U.S.C. § 1126, facts are disclosed that appear to render the mark of the involved application unregistrable, and the matter has not been tried under the pleadings as filed by the parties or as they might be deemed to be amended pursuant to Fed. R. Civ. P. 15(b), the Board, in its decision in the proceeding, will, in addition to determining the pleaded matters, include a statement that in the event applicant ultimately prevails in the inter partes proceeding, the examining attorney shall reexamine the application in light of the disclosed facts. [ Note 4.] A 37 C.F.R. § 2.131 remand may be made by the Board upon its own initiative, or upon request granted by the Board. Thus, if a party to the proceeding believes that the facts disclosed therein appear to render the mark of an involved application unregistrable, but the matter was not pleaded or tried by the express or implied consent of the parties pursuant to Fed. R. Civ. P. 15(b), the party may request that the Board include, in its decision in the proceeding, a 37 C.F.R. § 2.131 remand to the examining attorney. The request may be made in the party’s brief on the case, at oral hearing, or by separate motion. An application under § 66(a) may not be remanded under 37 C.F.R. § 2.130 or 37 C.F.R. § 2.131. [ Note 5.]
NOTES:
2. See 37 C.F.R. § 2.130 and 37 C.F.R. § 7.25 (Sections of part 2 applicable to extension of protection).
3. See generally 37 C.F.R. § 2.133(a).
4. See, e.g., 37 C.F.R. § 2.131; First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628, 1636 n.6 (TTAB 1988) (remand for consideration of evidence regarding applicant’s date of first use); West End Brewing Co. of Utica, N.Y. v. South Australian Brewing Co., 2 USPQ2d 1306, 1309 n.5 (TTAB 1987) (remand for determination of status of underlying foreign registration); Floralife, Inc. v. Floraline International Inc., 225 USPQ 683, 686 n.10 (TTAB 1984) (remand for consideration of evidence regarding applicant’s use of mark prior to application filing date); Wilderness Group, Inc. v. Western Recreational Vehicles, Inc., 222 USPQ 1012, 1014-15 n.6 (TTAB 1984) (if applicant ultimately prevails, Board recommends that registration be withheld pending reexamination for clarification as to whether applicant has abandoned the mark as to certain goods as well as deletion from the identification of any goods for which applicant has non-use); Color Key Corp. v. Color 1 Associates, Inc., 219 USPQ 936, 941, 944-45 n.11 (TTAB 1983) (if applicant ultimately prevails, registration should be deferred pending reexamination of the application under Trademark Rule 2.131); Antillian Cigar Corp. v. Benedit Cigar Corp., 218 USPQ 187, 189 n.2 (TTAB 1983) (if applicant ultimately prevails, Board recommends registration be withheld pending reexamination of Section 2(a) ground for refusal).
5. See 37 C.F.R. § 7.25.