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).