1209.01 Upon Board’s Own Initiative
- (1) If, during an appeal from a refusal of registration, it appears to the Trademark Trial and Appeal Board that an issue not previously raised may render the mark of the appellant unregistrable, the Board may suspend the appeal and remand the application to the examining attorney for further examination to be completed within the time set by the Board.
- (2) If the further examination does not result in an additional ground for refusal of registration, the examining attorney shall promptly return the application to the Board, for resumption of the appeal, with a written statement that further examination did not result in an additional ground for refusal of registration.
- (3) If the further examination does result in an additional ground for refusal of registration, the examining attorney and appellant shall proceed as provided by §§ 2.61, 2.62, and 2.63. If the ground for refusal is made final, the examining attorney shall return the application to the Board, which shall thereupon issue an order allowing the appellant sixty days from the date of the order to file a supplemental brief limited to the additional ground for the refusal of registration. If the supplemental brief is not filed by the appellant within the time allowed, the appeal may be dismissed.
- (4) If the supplemental brief of the appellant is filed, the examining attorney shall, within sixty days after the supplemental brief of the appellant is sent to the examining attorney, file with the Board a written brief answering the supplemental brief of appellant and shall email or mail a copy of the brief to the appellant. The appellant may file a reply brief within twenty days from the date of mailing of the brief of the examining attorney.
- (5) If an oral hearing on the appeal had been requested prior to the remand of the application but not yet held, an oral hearing will be set and heard as provided in paragraph (e) of this section. If an oral hearing had been held prior to the remand or had not been previously requested by the appellant, an oral hearing may be requested by the appellant by a separate notice filed not later than ten days after the due date for a reply brief on the additional ground for refusal of registration. If the appellant files a request for an oral hearing, one will be set and heard as provided in paragraph (e) of this section.
If, during an ex parte appeal to the Board, it appears to the Board that an issue not previously raised may render the mark of the applicant unregistrable, the Board may issue a written action suspending the appeal and remanding the application to the examining attorney for further examination with respect to that issue. [ Note 1.] However, the Board normally will not remand an application for consideration of a requirement or ground for refusal if the examining attorney had previously made that requirement or refused registration on that ground and then withdrew it. [ Note 2.]
The Board may also sua sponte remand an application to the examining attorney if, after examination and/or briefing has been completed, a decision in another case is rendered that is likely to have a bearing on the examining attorney’s position. [ Note 3.] Or the Board may remand an application for clarification of the issues on appeal, where, for example, the examining attorney and the applicant appear to be arguing different grounds of refusal.
The further examination must be completed within the time set by the Board, or within an extension of time for that purpose. [ Note 4.]
If the examining attorney, upon consideration of the issue specified in the Board’s remand letter, does not believe that the specified issue renders the mark of the applicant unregistrable, the examining attorney must promptly return the application to the Board with a written statement that further examination did not result in an additional requirement or ground for refusal of registration. [ Note 5.] The Board will then resume proceedings with respect to the appeal, and take further appropriate action. The issues ultimately determined by the Board will be those that were the subject of the appeal; no consideration will be given to the issue that was the subject of the remand. [ Note 6.]
If, on the other hand, the further examination does result in an additional requirement or ground for refusal of registration, the examining attorney and the applicant should proceed as specified in 37 C.F.R. § 2.61 through 37 C.F.R. § 2.63. [ Note 7.] If the additional requirement or ground for refusal of registration is ultimately made final, the six-month response clause should be omitted from the Office action; the application should be returned to the Board; proceedings with respect to the appeal will be resumed; and further appropriate action will be taken therein. Specifically, the Board will issue an order allowing the applicant 60 days from the date of the order in which to file a supplemental brief directed (solely) to the additional ground for refusal of registration. [ Note 8.]
If the applicant fails to file a supplemental brief within the specified 60-day period, or during an extension of time for that purpose, the appeal may be dismissed. [ Note 9.] If the applicant files a supplemental brief, the Board will forward the application to the examining attorney. Within 60 days after the date of the Board’s written action forwarding the application to the examining attorney, or within an extension of time for that purpose, the examining attorney must file a written brief answering the supplemental brief of the applicant. If the examining attorney had not previously submitted an appeal brief, the written brief may answer not just the applicant’s supplemental brief, but also its original appeal brief. [ Note 10.] The examining attorney must also send a copy of his or her brief to the applicant. [ Note 11.] If the examining attorney’s brief is late-filed, the Board may exclude it in the absence of an adequate explanation for the late filing. [ Note 12.] TBMP § 1203.02(b). Within 20 days from the date of the examining attorney’s brief, or within an extension of time for the purpose, the applicant may, if it so desires, file a reply brief. [ Note 13.] The filing of a reply brief is not mandatory. If the applicant files a reply brief, the Board will notify the examining attorney so that it can be reviewed.
If an oral hearing on the appeal had been requested by the applicant prior to the remand of the application, but had not yet been held, the oral hearing will be set after the expiration of the applicant’s time for filing a reply brief or, depending on the circumstances, a supplemental reply brief directed to the additional ground for refusal of registration. [ Note 14.] If an oral hearing had been held prior to the remand, or had not previously been requested by the applicant, an oral hearing may be requested by the applicant by separate submission filed not later than 10 days after the due date for a reply brief on the additional ground for refusal of registration; the oral hearing will be set by the Board upon receipt of the request. [ Note 15.]
If the examining attorney is persuaded by the applicant’s supplemental brief and/or reply brief that the additional requirement or ground for refusal of registration should be withdrawn, the examining attorney should issue a written action withdrawing the requirement or additional ground, and return the application to the Board for resumption of proceedings in the appeal.
The examining attorney may not, upon remand under 37 C.F.R. § 2.142(f)(1), make a requirement or refuse registration on a new ground not specified in the Board’s remand letter. If the examining attorney, upon remand, wishes to make a requirement or refuse registration on a new ground not specified in the Board’s remand letter, the examining attorney must file a request with the Board, pursuant to 37 C.F.R. § 2.142(f)(6), for jurisdiction to make a requirement or refuse registration on the new ground. Nor may the examining attorney, upon remand under 37 C.F.R. § 2.142(f)(1), submit evidence relating to a requirement or ground not specified in the Board’s remand letter. [ Note 16.] For information on informalities which are noted by the Board in its final decision, but for which remand was not considered necessary, see TBMP § 1217.
For information concerning the submission of new evidence after remand for refusal of registration on an additional ground, see TBMP § 1207.05.
NOTES:
1. 37 C.F.R. § 2.142(f)(1). See In re Opryland USA Inc., 1 USPQ2d 1409, 1411 (TTAB 1986); In re Diet Tabs, Inc., 231 USPQ 587, 588 (TTAB 1986); In re Johanna Farms, Inc., 223 USPQ 459, 461 (TTAB 1984). See also In re Wella A.G., 858 F.2d 725, 8 USPQ2d 1365, 1369 (Fed. Cir. 1988), rev’g 230 USPQ 77, 79 (TTAB 1986).
2. In re Bed & Bars Ltd., 122 USPQ2d 1546, 1548 n.2 (TTAB 2017) ("the Board normally will not remand an application for consideration of a ground of refusal if the Examining Attorney … had previously refused registration on that ground and then withdrew the refusal").
3. See In re Dekra e.V., 44 USPQ2d 1693, 1694-95 (TTAB 1997) (after briefs were filed, the Federal Circuit issued a decision with applicability to the case; Board remanded case to examining attorney to consider refusal in light of that decision). See also In re Consolidated Specialty Restaurants Inc., 71 USPQ2d 1921, 1922 (TTAB 2004) (Board granted examining attorney’s request for remand in view of Federal Circuit decision setting forth new standard for primarily geographically deceptively misdescriptive marks).
5. See 37 C.F.R. § 2.142(f)(2). See In re Diet Tabs, Inc., 231 USPQ 587, 588 (TTAB 1986).
6. See In re Diet Tabs, Inc., 231 USPQ 587, 588 (TTAB 1986).
10. See In re Boston Beer Co. L.P., 47 USPQ2d 1914, 1918 (TTAB 1998).
12. Cf. In re Tennessee Walking Horse Breeders’ and Exhibitors’ Association, 223 USPQ 188 n.3 (TTAB 1984).
16. See In re W.W. Henry Co., 82 USPQ2d 1213, 1213-14 (TTAB 2007) (because claimed date of first use and use in commerce is subsequent to application filing date, final decision allowed applicant to file either an amendment to the dates of use or an amendment to the basis for the application); In re Sandberg & Sikorski Diamond Corp., 42 USPQ2d 1544, 1545 n.1 (TTAB 1996) (in final decision, Board recommended that applicant, if it ultimately prevailed, amend description of mark to clearly set forth claim); In re EBSCO Industries Inc., 41 USPQ2d 1913, 1915 n.3 (TTAB 1996) (if applicant ultimately prevailed, it should file an amended drawing).