1205.01(a) Amendments of Application and Requests for Reconsideration
If, within the time provided, which is six months until December 1, 2022, 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 a notice of appeal to the Board, and the examining attorney has not yet acted on the amendment when the notice of 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. See TBMP § 1204. In the rare circumstances the applicant files its notice of appeal as a paper submission and also files an amendment, or has an amendment pending with the examining attorney, the applicant should indicate this in 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 to submit additional evidence, and the request is granted. [ Note 2.] See TBMP § 1207.02 and 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. [ Note 5.] The 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 response clause, which is six months until December 1, 2022. See TBMP § 1201.02 and TMEP § 714.05 et seq. and TMEP § 715.04(b) regarding amendments which raise new issues.
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. See In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478, at *4 n.5 (TTAB 2021) ("We would be remiss if we failed to point out that when a proposed amendment is acceptable to the Examining Attorney, the next Office Action should so state, leaving no room for doubt going forward or in the case of an appeal") appeals docketed, Nos. 21-2114, -2115 (Fed. Cir. Oct. 29, 2021).