1205 Amendment of Application During Appeal
1205.01 In General
If, within six months following the issuance of a final action, or a second refusal on the same ground(s), or a repeated requirement, an applicant files both an amendment to its application and an ex parte appeal to the Board, and the examining attorney has not yet acted on the amendment when the appeal is filed, the applicant should check the box on the ESTTA notice of appeal form indicating that it has filed a request for reconsideration. In the rare circumstances the notice of appeal is filed as a paper submission, the applicant should indicate in its notice of appeal that it has also filed an amendment, or if it is being filed contemporaneously with the notice of appeal, the amendment should be submitted along with the notice of appeal. See TBMP § 1202.03 and TBMP § 1204.
The Board will acknowledge receipt of the amendment and appeal, institute the appeal and suspend further proceedings (including the applicant’s time for filing its appeal brief) with respect to the appeal, see TBMP § 1203.02(a), and remand the application to the examining attorney for consideration of the amendment. The Board’s remand letter will also include instructions to the examining attorney with respect to the further actions that may and/or should be taken by the examining attorney in conjunction with the examining attorney’s consideration of the amendment. [ Note 1.] TBMP § 1204. If the examining attorney believes that the outstanding issue(s) can be resolved, the examining attorney may contact the applicant and attempt to work out a resolution. Although the examining attorney may submit evidence with respect to any issues relevant to the amendment, the examining attorney may not assert a new refusal or requirement or submit evidence unrelated to the amendment or material submitted therewith unless the examining attorney files with the Board a request under 37 C.F.R. § 2.142(f)(6) for remand to assert the new refusal or requirement or submit additional evidence, and the request is granted. [ Note 2.] See TBMP § 1209.02.
When an applicant files a notice of appeal through ESTTA and checks the box that it has filed a request for reconsideration, an order will be electronically generated that institutes the appeal, suspends proceedings in it, and remands the application to the examining attorney for consideration of the amendment/request for reconsideration. Although the notice of appeal is filed through ESTTA, if the applicant is filing an amendment/request for reconsideration contemporaneously with the filing of the notice of appeal, that document should be filed through TEAS, through which responses to Office actions are electronically filed.
In the rare circumstances the notice of appeal is filed by a paper submission, and the applicant has also timely filed an amendment, but has not heard from the Board within sixty days with regard to the appeal and amendment, the applicant should not file its appeal brief. Rather, it may assume that the Board will institute the appeal if the written explanation for paper filing is acceptable, and then suspend proceedings and remand the application to the examining attorney, so that the due date for the appeal brief will be reset in the event that the amendment does not place the application in condition for publication (or registration, in the case of an application on the Supplemental Register). The applicant does not need to verify with the Board that the due date for its brief on appeal will be changed if necessary. [ Note 3.] TBMP § 1203.02(a). However, the applicant may wish to make a status inquiry with the Board if it has not received an institution and suspension order within sixty days of the filing of the notice of appeal.
If the examining attorney is persuaded, on the basis of the amendment, 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 and the Board by telephone or email that the amendment has been accepted and the application has been approved. [ Note 4.] The applicant will also receive notification that the application has been approved for publication when the Office issues a computer-generated notice of publication; in addition, the applicant may ascertain the status of the application by checking the TSDR database.
If the examining attorney, after consideration of the amendment, accepts the amendment but adheres to the final refusal to register, either because there are other grounds for refusal or requirements which have not been satisfied, or because the amendment, while acceptable, does not obviate the requirement/refusal, the examining attorney should issue a written action to that effect. That is, the Office action should indicate that the amendment has been accepted, and also indicate what refusals/requirements remain. The six-month response clause should be omitted; the application should be returned to the Board; proceedings with respect to the appeal will be resumed; and the applicant will be allowed time in which to file its appeal brief. If the examining attorney refuses to accept the amendment, and the amendment raises a new issue, the examining attorney must allow the applicant an opportunity to respond before issuing a final refusal and returning the application to the Board. Therefore, the first Office action that considers and refuses the amendment must be a nonfinal action, and must include the six-month response clause. See TBMP § 1201.02 and TMEP § 714.05 et seq. and TMEP § 715.04(b) regarding amendments which raise new issues.
If an applicant that has filed a timely appeal to the Board files an amendment to its application more than six months after the issuance of the final action, or the second refusal on the same ground(s), or the repeated requirement from which the appeal was taken, the Board will treat the amendment as a request for remand. See TBMP § 1209.04. The Board will also treat as a request for remand an amendment filed after the filing of a notice of appeal, even if filed within six months of the final action, if the examining attorney had previously acted on an amendment or request for reconsideration after the filing of the notice of appeal. Similarly, if the amendment is filed along with the applicant’s appeal brief or thereafter, even if filed within six months of the final action, the Board will treat the submission as a request for remand. See TBMP § 1204. The amendment must accompany the request for remand. Both the request and the amendment should be submitted through ESTTA. The amendment should not be filed separately through TEAS.
A request for remand to consider an amendment will be granted upon a showing of good cause. Good cause will generally be found, for example, when the amendment is an attempt to comply with a requirement, such as an amendment to the identification of goods or services in response to a requirement for an acceptable identification, when the amendment will obviate a ground for refusal, such as an amendment to the Supplemental Register or an amendment to assert a Trademark Act § 2(f) claim (15 U.S.C. § 1052(f) ) in order to avoid or overcome a refusal under Trademark Act § 2(e)(1), Trademark Act § 2(e)(2) or Trademark Act § 2(e)(4), 15 U.S.C. § 1052(e)(1), 15 U.S.C. § 1052(e)(2) or 15 U.S.C. § 1052(e)(4), or when the examining attorney consents to remand for consideration of the amendment. [ Note 5.] However, whether good cause will be found will depend, in part, on the stage of the appeal at the time the amendment is filed, including the reason given for the delay. [ Note 6.] If the request for remand is granted, the Board will suspend proceedings with respect to the appeal and remand the application to the examining attorney for consideration of the amendment. The Board’s remand letter will also include instructions to the examining attorney with respect to the further actions that may and/or should be taken by the examining attorney in conjunction with the examining attorney’s consideration of the amendment.
Remand in an ex parte appeal is a matter of discretion with the Board, and the Board may refuse to remand for consideration of an amendment filed more than six months after the date of the action from which the appeal was taken, or an amendment filed after the examining attorney had, after the filing of a notice of appeal, acted on a request for reconsideration or an amendment. In such cases remand may be refused if, for example, the amendment was filed in bad faith, or would serve no useful purpose. [ Note 7.] Further, if remand is made, the Board’s instructions to the examining attorney concerning the handling of the amendment, and further action in connection therewith may differ for an amendment filed more than six months after the date of the action from which the appeal was taken and those given by the Board for an amendment filed within six months after that date. For example, if an amendment is filed at the point the examining attorney’s brief is due, the Board may direct the examining attorney that if the amendment is not acceptable the examining attorney should simply indicate this in the appeal brief, or if the amendment is acceptable but does not overcome the refusal, the examining attorney may include in the appeal brief argument and evidence directed to the amendment, while the applicant may address this in the reply brief. [ Note 8.]
If an appeal is late-filed, but the applicant timely filed an amendment to its involved application, the Board will issue a written action informing the applicant of the lateness of its appeal; stating that the late appeal cannot be entertained by the Board; and forwarding the application to the examining attorney for appropriate action with respect to the amendment.
If, at the time the applicant files its appeal brief, it also wishes to amend its application in order to, for example, attempt to comply with a final requirement or to overcome a final refusal, the proper procedure is to file a request for remand and a request to suspend proceedings in the appeal pending the Board’s decision on the request for remand. However, occasionally an applicant will include an amendment as part of its brief. If this amendment is noted by the Board (and frequently it will not be noted if it is not made by a separate submission), the Board will treat the proposed amendment as a request for remand, and consider whether good cause has been shown in determining the request. If the Board does not note the request, but the examining attorney, upon reviewing applicant’s appeal brief, considers the amendment and allows it, the amendment will be entered. In such a circumstance, the preferred practice is for the examining attorney to specifically state in his or her brief that he/she has accepted the amendment; however, if the examining attorney makes no reference to the amendment and merely treats the application as having been amended, the Board will treat the amendment as having been accepted. [ Note 9.] If the examining attorney, upon noting the proposed amendment in the applicant’s brief, believes that the amendment raises a new issue or that further examination would be required as a result of the amendment, the examining attorney should contact the Board and advise that the brief contains an amendment that should be considered as a request for remand.
An application that has been considered and decided on appeal may be amended, if at all, only in accordance with 37 C.F.R. § 2.142(g). For further information concerning amendment after decision on appeal, see TBMP § 1218 and TMEP § 1501.06.
NOTES:
1. For information concerning the actions which may be taken by the examining attorney upon consideration of the amendment, see TMEP § 715.04, TMEP § 715.04(a) and TMEP § 715.04(b). See also In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1696 n.8 (TTAB 1992); In re Abolio y Rubio S.A.C.I. y G., 24 USPQ2d 1152, 1153-54 (TTAB 1992); In re Pierce Foods Corp., 230 USPQ 307, 308 n.1 (TTAB 1986). But see In re Integrated Embedded, 120 USPQ2d 1504, 1510-12 (TTAB 2016) (applicant advised of option to amend to Supplemental Register during prosecution of application but did not do so; reservation of a right does not constitute an amendment in the alternative).
2. See In re Hughes Furniture Industries, Inc., 114 USPQ2d 1134, 1135-36 (TTAB 2015) (application was remanded to consider applicant’s proposed disclaimer, it was not permissible for examining attorney to submit evidence in support of refusal that was not the subject of remand request).
3. See In re Live Earth Products Inc., 49 USPQ2d 1063, 1064 (TTAB 1998).
4. See TMEP § 715.04 and TMEP § 1501.05.
5. In re Hughes Furniture Industries, Inc., 114 USPQ2d 1134, 1135 (TTAB 2015) (applicant’s seeking to comply with requirement for disclaimer constituted good cause).
6. See, e.g., In re Thomas White International Ltd., 106 USPQ2d 1158, 1160 n.2 (TTAB 2013) ("at this late juncture applicant would not be able to show good cause" for a proposed amendment made in its appeal brief to expand the goods to cover related services after applicant previously deleted services from the application).
7. See In re Big Pig Inc., 81 USPQ2d 1436, 1437-38 (TTAB 2006) (applicant’s request for remand after filing of reply brief denied; because proposed claim of ownership of a registration was irrelevant, and clarification of the nature of its typed drawing was unnecessary, applicant failed to show good cause).
8. In re HerbalScience Group LLC, 96 USPQ2d 1321, 1323 n.2 (TTAB 2010).
9. See In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1512 n.2 (TTAB 2001) (one ground for refusal was requirement for translation of mark; because applicant offered translation in appeal brief and examining attorney did not address the issue in his brief, Board treated requirement as moot).
1205.02 Request to Divide
An applicant may submit a request to divide the application to divide out goods or services within a class, or entire classes prior to, with, or after the filing of a notice of appeal. [ Note 1.] An applicant may wish to submit such a request in a situation where a refusal to register or requirement applies only to certain classes in a multi-class application or to certain goods or services within a class in either a single-class or multi-class application. See TBMP § 1202.05.
Procedures for when a request to divide is filed within six months of the issuance of the appealed final refusal or requirement (i.e., prior to or with the notice of appeal) are discussed below. If a request to divide is submitted after an appeal is instituted, the request should be filed with the Board through ESTTA, rather than directed to the examining attorney or filed through the TEAS system. In ESTTA, the applicant should "identify paper" by checking the "Other Motions/Papers" box and identifying the paper as a request to divide. The Board will determine whether to suspend action on the appeal and forward the application to the ITU/Divisional Unit, or defer the processing of the request to divide and continue proceedings in the appeal. Such a determination will be based on such factors as the reason for the request to divide (e.g., if the division will result in the withdrawal of the refusal as to certain of the classes) and the stage of the appeal.
Filing a request to divide with the Board must be through ESTTA. If ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, submissions may be filed in paper form and must include a written explanation of such technical problems or extraordinary circumstances. [ Note 2.]
NOTES:
1. See generally 37 C.F.R. § 2.87 and TMEP § 1110 regarding requests to divide.
2. See 37 C.F.R. § 2.126.
1205.02(a) Request to Divide When Notice of Appeal is Submitted Electronically
When an applicant submits a notice of appeal through ESTTA, and submits at the same time or has pending a request to divide, the applicant should not check the "request for reconsideration" box on the ESTTA form unless it has pending or is contemporaneously filing a request for reconsideration/amendment. The request to divide is not considered to be either a request for reconsideration or an amendment. The applicant should file the notice of appeal through ESTTA and the contemporaneously or previously filed request to divide through TEAS. The applicant will receive an electronically generated order instituting the appeal, and requesting the applicant to contact the Board paralegal to whom the application has been assigned so that appropriate action can be taken on the request to divide, depending on the circumstances. If the notice of appeal is limited to the classes which the applicant seeks to have divided out of the application, the appeal will be instituted for those classes, proceedings in the appeal will be suspended, and the Board will forward the application to the ITU/Divisional Unit of the Office for action on the request to divide. After the request to divide has been processed, the application for which no appeal has been filed will be forwarded to the examining attorney for appropriate action, while the application to which the appeal applies will be returned to the Board. The Board will then resume proceedings in the appeal with respect to that application, and allow the applicant 60 days in which to submit its appeal brief. If the notice of appeal applies to classes in each of the divided applications, both applications will be returned to the Board, which will resume proceedings in the appeal with respect to both applications, and allow the applicant 60 days in which to submit its appeal briefs. [ Note 1.] The Board may also consolidate the appeals. See TBMP § 1214.
If the applicant has pending or is simultaneously filing a request for reconsideration/amendment with the request to divide and the notice of appeal, the applicant should check the appropriate box on the ESTTA form. The electronically generated order instituting the appeal will suspend proceedings in the appeal and remand the application to the examining attorney to consider both the request for reconsideration/amendment and the request to divide. The examining attorney will then forward the application and the request to divide to the ITU/Divisional Unit of the Office for action on the request to divide. After the request to divide has been processed the applications will be sent to the examining attorney, who will then decide the request for reconsideration/amendment in the same procedure that is followed for any request for reconsideration or amendment. See TBMP § 1204 and TBMP § 1205. If registrability is not found on the basis of these documents, the examining attorney will return to the Board the application or applications containing the class or classes for which the appeal has been instituted. As for the application containing the classes for which no timely appeal was filed, unless the examining attorney issues a new final action with respect to that application, the applicant may not subsequently submit a notice of appeal.
NOTES:
1. However, the applicant may not subsequently submit a notice of appeal for any classes for which it had not previously filed a timely notice of appeal.
1205.02(b) Request to Divide When Notice of Appeal is Submitted on Paper due to ESTTA Technical Problems or Extraordinary Circumstances
The following information applies in the rare circumstances when a notice of appeal is filed as a paper submission, because ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, and a request to divide is also filed. An applicant that files a request to divide or that has pending a request to divide at the time it files its notice of appeal should advise the Board of the request to divide in the notice of appeal.
If the applicant files with the notice of appeal or has pending at the time the appeal is filed only a request to divide, the Board will institute the appeal if the written explanation for paper filing is acceptable, suspend proceedings in it, and forward the application to the ITU/Divisional Unit of the Office for action on the request to divide. If the appeal applies to only one of the applications resulting from the division, then after the request to divide has been processed the application for which no appeal has been filed will be forwarded to the examining attorney for appropriate action, while the application to which the appeal applies will be returned to the Board. The Board will then resume proceedings in the appeal with respect to that application, and allow the applicant 60 days in which to submit its appeal brief. If the appeal applies to both applications, the Board will resume action in the appeals with respect to both applications. In the latter situation, the Board may consolidate the appeals.
If the applicant files a request to divide as well as a request for reconsideration/amendment with its notice of appeal (or if these requests are pending with the examining attorney at the time the notice of appeal is filed), the Board will institute the appeal if the written explanation for paper filing is acceptable, suspend proceedings in it, and remand the application to the examining attorney to arrange for processing of the request to divide and then to decide the request for reconsideration/amendment in the same procedure that is followed for any request for reconsideration or amendment. See TBMP § 1204 and TBMP § 1205. If registrability is not found on the basis of these documents, the examining attorney will return to the Board the application or applications containing the class or classes for which the appeal has been instituted. As for the application containing the class or classes for which no timely appeal was filed, unless the examining attorney issues a new final action with respect to that application, the applicant may not subsequently submit a notice of appeal.