1207.01 General Rule — Evidence Submitted After Appeal Untimely
37 C.F.R. § 2.142(d) The record in the application should be complete prior to the filing of an appeal. Evidence should not be filed with the Board after the filing of a notice of appeal. If the appellant or the examining attorney desires to introduce additional evidence after an appeal is filed, the appellant or the examining attorney should submit a request to the Board to suspend the appeal and to remand the application for further examination.
The evidentiary record in an application should be complete prior to the filing of an ex parte appeal to the Board. [ Note 1.] See TBMP § 1203.02(e).
However, if the applicant or the examining attorney submits excerpts from articles during examination, the nonoffering party may submit the complete article, even if such submission is made after the appeal is filed. [ Note 2.] If the nonoffering party wishes to have the entire article considered, the better practice is to submit the article with a request for remand. However, because the party submitting the excerpt of the article had the opportunity to review the entire article, if the article is submitted with an appeal brief, the Board need not remand the application, and may instead consider the article as part of the record. [ Note 3.] See also TBMP § 1208.01.
If evidence that was previously unavailable comes to the applicant’s or examining attorney’s attention after an appeal is filed, the proper procedure is to submit a request to the Board to suspend the appeal and remand the application. [ Note 4.] See TBMP § 1209.02 and TBMP § 1209.04.
NOTES:
1. 37 C.F.R. § 2.142(d). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69968 (Oct. 7, 2016) ("The Office is amending § 2.142(d) to clarify that evidence should not be filed with the Board after a notice of appeal is filed. The amendment more directly states the prohibition.").
See also In re Jimmy Moore LLC, 119 USPQ2d 1764, 1767 (TTAB 2016) (copy of patent excerpt submitted with appeal brief not considered); In re Fiat Group Marketing & Corporate Communications S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014) (examining attorney’s objection to applicant’s submission of registrations with appeal brief sustained); In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013) (copies of documents pertaining to district court litigation submitted with applicant’s appeal brief not considered); In re Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163, 1165 n.3 (TTAB 2013) (new evidence submitted with reply brief is "untimely and therefore not part of the record for this case"); In re HSB Solomon Associates LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (printouts submitted with reply brief not considered); In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012) (exhibits attached to applicant’s supplemental brief not considered; noted that evidence could have been submitted during the period of further examination after remand); In re Luxuria s.r.o., 100 USPQ2d 1146, 1147-48 (TTAB 2011) (materials submitted with reply brief, after two requests for remand were denied, were not of record and, because reply brief discussed materials at length, reply brief also not considered); In re Giovanni Food Co., 97 USPQ2d 1990, 1990-91 (TTAB 2011) (documents from file of cited registration submitted with applicant’s appeal brief are late-filed and not considered; examining attorney’s objection sustained); In re Van Valkenburgh, 97 USPQ2d 1757, 1768 n.32, 1769 (TTAB 2011) (applicant has responsibility to make sure that the record is complete prior to filing a notice of appeal); In re Trans Continental Records Inc., 62 USPQ2d 1541, 1541 n.2 (TTAB 2002) (materials from web search engines submitted with appeal brief not considered); In re Lamb-Weston Inc., 54 USPQ2d 1190, 1191 n.2 (TTAB 2000); In re Psygnosis Ltd., 51 USPQ2d 1594 (TTAB 1999); In re Posthuma, 45 USPQ2d 2011, 2012 n.2 (TTAB 1998) (third-party registration attached to appeal brief not considered); In re Wada, 48 USPQ2d 1689 n.2 (TTAB 1998) (evidence submitted with reply brief not considered), aff’d, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999); In re L.C. Licensing Inc., 49 USPQ2d 1379, n.3 (TTAB 1998) (third-party registrations first submitted with appeal brief not considered); In re Caterpillar Inc., 43 USPQ2d 1335, 1337 (TTAB 1997) (new material attached to appeal and reply briefs, and submitted at oral hearing and subsequent to hearing untimely and not considered); In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992); In re Pennzoil Products Co., 20 USPQ2d 1753, 1756 n.9 (TTAB 1991); In re Nationwide Industries Inc., 6 USPQ2d 1882, 1884 n.5 (TTAB 1988); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224, 1226 n.2 (TTAB 1987); In re Gold’s Gym Enterprises Inc., 3 USPQ2d 1716 n.2 (TTAB 1987); In re International Environmental Corp., 230 USPQ 688, 690 (TTAB 1986); In re Mayer-Beaton Corp., 223 USPQ 1347, 1348 (TTAB 1984); In re Compagnie Internationale Pour L’Informatique-Cie Honeywell Bull, 223 USPQ 363 n.3 (TTAB 1984); In re Carvel Corp., 223 USPQ 65, 66 (TTAB 1984); In re Jos. Schlitz Brewing Co., 223 USPQ 45, 46 n.1 (TTAB 1983); In re Best Western Family Steak House, Inc., 222 USPQ 827 n.1 (TTAB 1984); In re Jeep Corp., 222 USPQ 333, 336 n.3 (TTAB 1984); In re Pierre Fabre S.A., 221 USPQ 1210, 1212 n.2 (TTAB 1984); In re Development Dimensions International, Inc., 219 USPQ 161, 162 n.2 (TTAB 1983); In re Gagliardi Brothers, Inc., 218 USPQ 181, 183 (TTAB 1983); In re Royal Viking Line A/S, 216 USPQ 795, 797 n.3 (TTAB 1982).
Cf. In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 820 (Fed. Cir. 1986); In re Volvo White Truck Corp., 16 USPQ2d 1417, 1419 n.4 (TTAB 1990).
2. See In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 820 (Fed. Cir. 1986) (if only a portion of an article is submitted, that portion is not thereby insulated from the context from whence it came).
3. But see In re Psygnosis Ltd., 51 USPQ2d 1594, 1597-98 (TTAB 1999) (if, after appeal, an applicant attempts to submit a full printout of articles from the NEXIS database which were revealed in an examining attorney’s search, but which were not introduced by the examining attorney, such articles are considered to be additional evidence and therefore untimely).
4. 37 C.F.R. § 2.142(d); see MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69968 (Oct. 7, 2016) ("The Office is further amending § 2.142(d) for clarity, including by specifying that an appellant or examining attorney who desires to introduce additional evidence after an appeal is filed should submit a request to the Board to suspend the appeal and remand the application for further examination."); see also In re Max Capital Group Ltd., 93 USPQ2d 1243, 1244 n.4 (TTAB 2010) (registration that issued after notice of appeal and submitted with appeal brief not considered, applicant could have filed a request for remand).