1205.01(b)    Amendments of Application and Requests for Remand

1205.01(b)(1)    In General

If an applicant that has filed a timely appeal to the Board files an amendment to its application after the expiration of the time provided, which is six months until December 1, 2022, after the issuance of the final action, or the second refusal on the same ground(s), or the repeated requirement from which the appeal was taken, the Board will treat the amendment as a request for remand. See TBMP § 1209.04. The Board will also treat as a request for remand an amendment filed after the filing of a notice of appeal, even if filed within the time provided by the final action, if the examining attorney had previously acted on an amendment or request for reconsideration after the filing of the notice of appeal. Similarly, if the amendment is filed along with the applicant’s appeal brief or thereafter, even if filed within the time provided by the final action, the Board will treat the submission as a request for remand. See TBMP § 1204. The amendment must accompany the request for remand. Both the request and the amendment should be submitted through ESTTA. The amendment should not be filed separately through TEAS.

A request for remand to consider an amendment will be granted upon a showing of good cause. Good cause will generally be found, for example, when the amendment is an attempt to comply with a requirement, such as an amendment to the identification of goods or services in response to a requirement for an acceptable identification, when the amendment will obviate a ground for refusal, such as an amendment to the Supplemental Register or an amendment to assert a Trademark Act § 2(f) claim (15 U.S.C. § 1052(f) ) in order to avoid or overcome a refusal under Trademark Act § 2(e)(1), Trademark Act § 2(e)(2) or Trademark Act § 2(e)(4), 15 U.S.C. § 1052(e)(1), 15 U.S.C. § 1052(e)(2)  or 15 U.S.C. § 1052(e)(4), or when the examining attorney consents to remand for consideration of the amendment. [ Note 1.] However, whether good cause will be found will depend, in part, on the stage of the appeal at the time the amendment is filed, including the reason given for the delay. [ Note 2.] If the request for remand is granted, the Board will suspend proceedings with respect to the appeal 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.

Remand in an ex parte appeal is a matter of discretion with the Board, and the Board may refuse to remand for consideration of an amendment filed after the expiration of the time provided by the action from which the appeal was taken, or an amendment filed after the examining attorney had, after the filing of a notice of appeal, acted on a request for reconsideration or an amendment. In such cases remand may be refused if, for example, the amendment was filed in bad faith, or would serve no useful purpose. [ Note 3.] Further, if remand is made, the Board’s instructions to the examining attorney concerning the handling of the amendment, and further action in connection therewith may differ for an amendment filed after the expiration of the time provided by the action from which the appeal was taken and those given by the Board for an amendment filed within the time provided by the action. For example, if an amendment is filed at the point the examining attorney’s brief is due, the Board may direct the examining attorney that if the amendment is not acceptable the examining attorney should simply indicate this in the appeal brief, or if the amendment is acceptable but does not overcome the refusal, the examining attorney may include in the appeal brief argument and evidence directed to the amendment, while the applicant may address this in the reply brief. [ Note 4.]

If an appeal is late-filed, but the applicant timely filed an amendment to its involved application, the Board will issue a written action 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 appropriate action with respect to the amendment.

NOTES:

 1.   In re Hughes Furniture Industries, Inc., 114 USPQ2d 1134, 1135 (TTAB 2015) (applicant’s seeking to comply with requirement for disclaimer constituted good cause).

 2.   See, e.g., In re Thomas White International Ltd., 106 USPQ2d 1158, 1160 n.2 (TTAB 2013) ("at this late juncture applicant would not be able to show good cause" for a proposed amendment made in its appeal brief to expand the goods to cover related services after applicant previously deleted services from the application).

 3.   See In re Big Pig Inc., 81 USPQ2d 1436, 1437-38 (TTAB 2006) (applicant’s request for remand after filing of reply brief denied; because proposed claim of ownership of a registration was irrelevant, and clarification of the nature of its typed drawing was unnecessary, applicant failed to show good cause).

 4.   In re HerbalScience Group LLC, 96 USPQ2d 1321, 1323 n.2 (TTAB 2010).

1205.01(b)(2)    Preferred Practices for Amending an Application during Appeal

The Board may entertain a request for remand to allow the examining attorney to consider a proposed amendment when the request for remand is filed before the Board issues a final decision, see TBMP § 1218. Recently in In re Ox Paperboard, LLC, 2020 USPQ2d 10878, at *1 (TTAB 2020), the Board clarified:

  • As a best practice, an applicant seeking to obviate a refusal by proposing an amendment to an application should propose the amendment as early as possible during prosecution. If that does not occur, then the Board strongly prefers that an applicant make such an amendment in a request for reconsideration filed soon after the issuance of a final Office action but prior to the applicant’s deadline for filing a notice of appeal. Doing so provides an opportunity for the issue to be addressed before the appeal stage. If an applicant has missed that opportunity, then the next preferred alternative is to file a separately captioned request for remand and suspension of proceedings with the Board, ideally prior to the deadline for filing an appeal brief, so that the Board can make a prompt ruling on the request and the examining attorney does not have to draft a potentially unnecessary appeal brief. If the Board decides to remand the application to the examining attorney, it will suspend the appeal for consideration by the examining attorney of an amendment which might obviate the refusal (and thus the appeal). Embedded amendments in an appeal brief are not prohibited but they are discouraged because they may be inadvertently overlooked by the Board before the Examining Attorney files a brief; if noticed, they may needlessly delay the proceeding. In instances such as this where the Examining Attorney does not consent to a proposed amendment embedded in a brief but objects, the Board typically treats the proposed amendment as a request for remand for further examination, and considers whether good cause has been shown.

However, occasionally an applicant fails to follow the preferred practices noted above and will include an amendment as part of its brief. If this amendment is noted by the Board (and frequently it will not be noted if it is not made by a separate submission), the Board will treat the proposed amendment as a request for remand, and consider whether good cause has been shown in determining the request. See TBMP § 1205.01(b)(1). If the Board does not note the request, but the examining attorney, upon reviewing applicant’s appeal brief, considers the amendment and allows it, the amendment will be entered. In such a circumstance, the preferred practice is for the examining attorney to specifically state in their brief that the amendment is accepted. However, if the examining attorney makes no reference to the amendment and merely treats the application as having been amended, the Board will treat the amendment as having been accepted. [ Note 1.] If the examining attorney, upon noting the proposed amendment in the applicant’s brief, believes that the amendment raises a new issue or that further examination would be required as a result of the amendment, the examining attorney should contact the Board and advise that the brief contains an amendment that should be considered as a request for remand. See TBMP § 1205.01(a).

NOTES:

 1.   See In re S. Malhotra & Co., 128 USPQ2d 1100, 1102 n.3 (TTAB 2018) (refusals to register based on requirements for translation and transliteration statements deemed moot because examining attorney suggested statements during prosecution, applicant accepted them in its brief, and the Board entered them); In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1512 n.2 (TTAB 2001) (one ground for refusal was requirement for translation of mark; because applicant offered translation in appeal brief and examining attorney did not address the issue in his brief, Board treated requirement as moot).