1204 Effect of Request for Reconsideration of Final Action
During the period between issuance of a final action and expiration of the time for filing an appeal therefrom, an applicant may file a request for reconsideration, with or without an amendment and/or new evidence. [ Note 1.] However, the filing of a request for reconsideration will not serve to stay the time for filing an appeal (or for petitioning the Director, if appropriate). [ Note 2.] TBMP § 1201.02 and TBMP § 1201.05. If, upon the examining attorney’s consideration of the request, all refusals and requirements are not withdrawn, and no appeal or other proper response to the final refusal has been filed during the six months following issuance of the final action, the application will be abandoned. [ Note 3.] TBMP § 1202.02. Thus, if an applicant which has filed a request for reconsideration of a final action wishes to preserve its right to appeal in the event that the request is unsuccessful, the applicant also must file an appeal prior to the expiration of the six-month period following issuance of the final action.
When an applicant files, in response to a final action or a second refusal on the same ground(s), or a repeated requirement, both a request for reconsideration and an appeal, the request for reconsideration should be made by separate submission and should specify the reasons why the applicant believes reconsideration is warranted. The request for reconsideration should not be combined in the body of the notice of appeal. When the notice of appeal is filed through ESTTA, the applicant should check the box stating that a request for reconsideration has been filed. The request for reconsideration should be filed separately through TEAS. In the rare circumstances the notice of appeal is a paper submission, the applicant should indicate, in the notice of appeal, that a request for reconsideration has also been filed. See TBMP § 1202.03.
A request for reconsideration filed more than six months from a final action is treated by the Board as a request for remand. See TBMP § 1209.04. Further, once briefing has begun, a request for reconsideration, even if filed within six months of a final action, is treated as a request for remand. As with a request for reconsideration, a request for remand should not be combined with the applicant’s appeal brief, but should be made by a separate document. [ Note 4.]
When an applicant which has filed a timely request for reconsideration of a final action, second refusal on the same ground(s), or repeated requirement, also files a timely appeal through ESTTA and checks the "request for reconsideration" box on the ESTTA form, the system will automatically generate an order instituting the appeal, suspending further proceedings (including the applicant’s time for filing its appeal brief) with respect to the appeal, and remanding the application to the examining attorney for consideration of the request.
In the rare circumstances the applicant files its notice of appeal as a paper submission and also files a request for reconsideration, or has a request for reconsideration pending, the notice of appeal should indicate this. When the written explanation for paper filing is acceptable, a Board paralegal will then send the applicant an order, to the same effect as the order automatically generated when the notice of appeal is filed through ESTTA. However, because the order is not automatically generated, it will not issue immediately. Where an applicant has timely filed both a notice of appeal on paper and a request for reconsideration, but has not heard from the Board within sixty days with regard to the appeal and reconsideration request, the applicant should not file its appeal brief. [ Note 5.] Rather, it may assume that the Board will institute the appeal, if the written explanation for the 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 examining attorney denies the request for reconsideration. [ Note 6.] 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 7.] 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 request for reconsideration raises a new issue, the examining attorney must give the applicant an opportunity to respond before issuing a new final refusal and returning the application to the Board. New issues are typically raised by a request for reconsideration which amends the application to seek registration under the provisions of Trademark Act § 2(f), 15 U.S.C. § 1052(f), or to seek registration on the Supplemental Register, or to amend the identification of goods or services, if a requirement for an acceptable identification of goods or services was not the subject of the final Office action. See TBMP § 1201.02 for examples of new issues that would preclude the issuance of a final action. [ Note 8.] 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. [ Note 9.]
In the rare circumstance when an applicant files its notice of appeal and a request for reconsideration at the same time by a paper submission, the examining attorney occasionally may act on the request for reconsideration before the Board can institute the appeal and remand the application. In that event, if the notice of appeal filed in paper form is accepted, the Board will institute the appeal after the examining attorney acts on the request for reconsideration. Depending on the action the examining attorney has taken, the Board will either remand the application to the examining attorney (generally to await the applicant’s response to a nonfinal Office action) or, if the examining attorney has denied the request for reconsideration, will proceed with the appeal, and allow the applicant 60 days from the issue date of the Board order in which to file its appeal brief. [ Note 10.] The date for filing the appeal brief is reset in this situation because the applicant, at the time it filed its notice of appeal and request for reconsideration, had the expectation that the Board would follow its normal procedure and suspend proceedings in the appeal. [ Note 11.]
If, after suspension and remand for consideration by the examining attorney of a timely request for reconsideration, the examining attorney approves the application for publication (or for registration, in the case of a Supplemental Register application), the appeal will be moot. The applicant will receive notification of the approval for publication when the Office issues a computer-generated notice of publication. The applicant may also ascertain the status of the application by checking the TSDR database. If, upon the examining attorney’s consideration of the request, all refusals and requirements are not withdrawn, and a new final refusal to register or action maintaining the finality of a prior Office action is issued (either in the examining attorney’s action on the request for reconsideration, or in a subsequent action), 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. The examining attorney must, prior to returning the application to the Board to resume proceedings in the appeal, issue a written Office action apprising the applicant of that fact, indicating the examining attorney’s withdrawal and maintenance of any refusals or requirements and acceptance of any amendments; it is not sufficient to make a note in the application file and return the application to the Board. The new final Office action does not give the applicant an automatic right to file a request for reconsideration, as is the case with a first final Office action; a request for reconsideration may only be filed during the period between issuance of a final action and expiration of the time for filing an appeal therefrom, and because an appeal had previously been filed, any request for further consideration of the application by the examining attorney must be by a request for remand, for which good cause must be shown. See TMEP § 715.04(b). [ Note 12.]
If an appeal is late-filed, but the applicant timely filed a request for reconsideration, the Board will issue an order 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 consideration of the request for reconsideration. See TBMP § 1202.02.
A timely request for reconsideration of an appealed action may be accompanied by an amendment and/or by additional evidence. See TBMP § 1207.04. The evidentiary record in an application should be complete prior to the filing of an appeal, and additional evidence filed after appeal normally will be given no consideration by the Board. [ Note 13.] See TBMP § 1207. The Board will regard additional evidence a proper part of the record on appeal if it is submitted, together with a request for reconsideration, before the expiration of the six-month response period, even if it is submitted after the notice of appeal is filed. [ Note 14.] However, if the examining attorney denies a request for reconsideration filed with a notice of appeal, a second request for reconsideration will be treated as a request for remand even if it is filed within six months of the final Office action, and therefore additional evidence filed with the second request will become part of the record only if the request for remand is granted upon a showing of good cause. See TBMP § 1207.02 and TBMP § 1209.04.
If the examining attorney, upon consideration of a request for reconsideration (made with or without new evidence), does not find the request persuasive, and issues a new action, the examining attorney may submit therewith new evidence directed to the issue(s) for which reconsideration is sought. [ Note 15.] Unless the action is a nonfinal action, the applicant may not submit additional evidence, even in response to evidence submitted by the examining attorney. If the applicant wishes to submit additional evidence, it must file a request for remand. [ Note 16.] TBMP § 1207.02 and TBMP § 1209.04.
For more information about requests for reconsideration filed after issuance of a final action but before filing of a notice of appeal, see TMEP § 715.03. For more information about requests for reconsideration filed in conjunction with a notice of appeal, see TMEP § 715.04. For more information about requests for remand, see TBMP § 1209.02.
NOTES:
1. See 37 C.F.R. § 2.63(b). See also TMEP § 715.03; In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1334 (TTAB 2009) (new evidence may be filed with request for reconsideration). Requests for consistency review under the Consistency Initiative do not impact the time to file an appeal or serve to suspend the appeal. In addition, although the request is entered into the application TSDR record, the Office will not respond directly to the request and any evidence submitted with such request will not be considered. See www.uspto.gov for further information on the Consistency Initiative.
2. See 37 C.F.R. § 2.63(b). See also TMEP § 715.03 and TMEP § 715.03(c).
3. See 37 C.F.R. § 2.63(b). See also TMEP § 715.03.
4. See In re Best Western Family Steak House, Inc., 222 USPQ 827, 828 (TTAB 1984).
5. Should the applicant file an appeal brief in this situation, the Board will normally remand the application to the examining attorney to consider the request for reconsideration and, if the refusal of registration is maintained or a new final refusal issues, will upon resumption of proceedings in the appeal give the applicant an opportunity to submit a supplemental appeal brief directed to any arguments or evidence in the examining attorney’s action. Cf. In re Husqvarna Aktiebolag, 91 USPQ2d 1436, 1437 (TTAB 2009) (because Board was not aware of applicant’s request for reconsideration which was filed two days before notice of appeal, the order instituting the appeal allowed applicant sixty days to file its appeal brief; examining attorney, unaware of either notice of appeal or appeal brief, issued nonfinal Office action, and subsequently another final refusal, and returned application to Board for resumption of appeal; applicant requested that it be permitted to file second brief, and Board accepted it as operative brief).
6. For information concerning the actions that an examining attorney may take in response to a request for reconsideration of a final action, 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).
7. In re Live Earth Products Inc., 49 USPQ2d 1063, 1064 (TTAB 1998).
8. See TMEP § 714.05. See also In re Adlon Brand Gmbh & Co. KG, 120 USPQ2d 1717, 1725 (TTAB 2016) ("Neither Applicant’s new evidence and arguments regarding the outstanding refusal under Section 2(e)(4), submitted with its request for reconsideration, nor the Examining Attorney’s submission of additional evidence regarding the same refusal, provided in response to that request, raised a new issue such as to make appropriate a nonfinal Office Action that would have allowed a six-month response period.") (citations omitted).
9. In re Faucher Industries Inc., 107 USPQ2d 1355, 1358 13 (TTAB 2013) (Board encourages "open and frank discussion" between applicant and the examining attorney to resolve issue of identification and classification of goods).
10. If an applicant files its notice of appeal through ESTTA and indicates it is filing a request for reconsideration, the appeal will be instituted and the application remanded immediately. However, occasionally the examining attorney will not be aware that an appeal has been filed when he or she acts on the request for reconsideration. Whether the appeal is filed through ESTTA or on paper, if the examining attorney is not aware that a notice of appeal has been filed when he or she acts on the request for reconsideration, the Board will take action on the appeal as indicated above. Because the applicant has already filed a notice of appeal, the applicant may ignore any comment by the examining attorney about filing a notice of appeal made in the denial of a request for reconsideration.
11. See In re Live Earth Products Inc., 49 USPQ2d 1063 (TTAB 1998).
12. Cf. TMEP § 716.02(b) regarding issuance of a new nonfinal Office action when no appeal has been filed.
13. See 37 C.F.R. § 2.142(d).
14. See In re Psygnosis Ltd., 51 USPQ2d 1594, 1598 n.4 (TTAB 1999); In re Corning Glass Works, 229 USPQ 65, 66 n.5 (TTAB 1985), and In re Best Western Family Steak House, Inc., 222 USPQ 827, 828 n.3 (TTAB 1984).
15. In re HerbalScience Group LLC, 96 USPQ2d 1321, 1323 (TTAB 2010); In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1201 (TTAB 2009). Cf. In re Hughes Furniture Industries Inc., 114 USPQ2d 1134, 1135-36 (TTAB 2015) (request for remand to comply with particular requirement did not give examining attorney right to submit evidence in support of refusal that was not subject of remand request).
16. See 37 C.F.R. § 2.142(d); In re HerbalScience Group LLC, 96 USPQ2d 1321, 1323 (TTAB 2010); In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1201 (TTAB 2009).