1203.02(b)    Trademark Examining Attorney’s Brief

When the applicant’s main appeal brief has been received by the Board, the Board sends the application to the examining attorney for preparation of a brief. Within 60 days after the date of the Board’s written order forwarding the application to the examining attorney, or within an extension of time for the purpose, the examining attorney must file an appeal brief answering the applicant’s main brief. [ Note 1.] The examining attorney must also send a copy of his or her brief to the applicant. [ Note 2.] 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 3.] An examining attorney’s failure to file a brief will not result in the application being approved; the Board will simply decide the appeal without the benefit of the brief.

If the examining attorney, having received the application for preparation of his or her appeal brief, is persuaded by the applicant’s appeal brief 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 Board by telephone or email. [ Note 4.] If there is more than one ground of refusal or requirement and the examining attorney determines that one ground or requirement is no longer tenable, the examining attorney should state in his or her appeal brief that the refusal or requirement has been withdrawn. [ Note 5.] The appeal will then go forward on the remaining ground(s)/requirement(s). Please Note: Even if the examining attorney does not specifically state in the appeal brief that the refusal or requirement has been withdrawn, the Board may treat the refusal/requirement to have been withdrawn if no mention is made of it in the brief. See TBMP § 1203.02(g).

On the other hand, the examining attorney, having received the application for preparation of his or her appeal brief, may decide that registration should be refused on an additional ground, or that a new requirement should be made, or that the application should be suspended. In that event, the examining attorney, during the time for and instead of preparing an appeal brief, should send to the Board, with a copy to the applicant, a written request that the application be remanded to him or her for further examination. For information concerning requests for remand, see TBMP § 1209.02 and TMEP § 1504.05. [ Note 6.] However, an examining attorney need not request remand in order to make a new argument or change the rationale for a refusal or requirement, as that is not considered to be a new refusal or requirement. [ Note 7.] If a request for remand is denied, the Board will reset the examining attorney’s time in which to file an appeal brief. [ Note 8.] However, if the examining attorney submits a request for remand in order to make a new refusal or requirement, it is the general practice of the Board to grant such a request. See TBMP § 1209.02. If the request is granted, the Board will suspend proceedings with respect to the appeal, and remand the application to the examining attorney for further examination in accordance with the request for remand. If, during the course of the further examination, the application is ultimately approved for publication (or for registration, in the case of a Supplemental Register application), the appeal will be moot. If the examining attorney refuses registration on a new ground, or makes a new requirement, and the new refusal or requirement is ultimately made final, the new final action should not include a six-month response clause; the application should be returned to the Board; and the Board will resume proceedings with respect to the appeal and allow the applicant 60 days in which to submit a supplemental appeal brief directed to the new issue or issues, following which the application will be returned to the examining attorney for preparation of his or her appeal brief.

NOTES:

 1.   37 C.F.R. § 2.142(b)(1); In re Wells Fargo & Co., 231 USPQ 106, 107 n.2 (TTAB 1986); In re Tennessee Walking Horse Breeders’ and Exhibitors’ Association, 223 USPQ 188 n.3 (TTAB 1984); TMEP § 1501.02. See also In re Miller Brewing Co., 226 USPQ 666, 667 n.4 (TTAB 1985).

 2.   37 C.F.R. § 2.142(b)(1). See In re De Luxe N.V., 990 F.2d 607, 26 USPQ2d 1475, 1476 n.3 (Fed. Cir. 1993).

 3.   See In re Tennessee Walking Horse Breeders’ and Exhibitors’ Association, 223 USPQ 188, 188 n.3 (TTAB 1984).

 4.   See TMEP § 1501.03.

 5.   See TMEP § 1501.03.

 6.   37 C.F.R. § 2.142(f)(6); TMEP § 1501.02. Cf. In re Dietrich, 91 USPQ2d 1622, 1624 (TTAB 2009) (to the extent examining attorney attempted to reject Trademark Act § 2(f) claim for the first time in appeal brief, rejection untimely and not considered); In re Moore Business Forms Inc., 24 USPQ2d 1638, 1638 n.2 (TTAB 1992) (ground for refusal first raised in examining attorney’s appeal brief given no consideration).

 7.   In re Paper Doll Promotions Inc., 84 USPQ2d 1660, 1665 (TTAB 2007). Cf. In re Future Ads LLC, 103 USPQ2d 1571, 1573 (TTAB 2012) (while examining attorney need not limit arguments made in appeal brief to those raised in Office actions, using the evidence for a totally different purpose not hinted at in the Office actions was unfair based on circumstances of case).

 8.   See In re Miller Brewing Co., 226 USPQ 666, 667 n.4 (TTAB 1985).