1304    Effect of Request for Reconsideration of Final Action in Expungement or Reexamination Proceeding

During the period between issuance of a final action and expiration of the time for filing an appeal therefrom, a registrant may file a request for reconsideration of the final Office action that seeks to further address the issue of use of the mark in commerce and/or comply with any outstanding requirement maintained in the final action. [ Note 1.] However, the filing of a request for reconsideration will not serve to stay the time for filing an appeal (or for petitioning the Director, if appropriate). [ Note 2.] If the examining attorney does not reconsider, and no appeal or other proper response to the final refusal has been filed during the three months following issuance of the final action, the registration will be cancelled. [ Note 3.] Thus, if a registrant that has filed a request for reconsideration of a final action wishes to preserve its right to appeal in the event that the request is unsuccessful, the registrant also must file an appeal prior to the expiration of the three-month period following issuance of the final action.

When a registrant files, in response to a final action, both a request for reconsideration and an appeal, the request for reconsideration should be made by separate submission through TEAS. The request for reconsideration should not be combined in the body of the notice of appeal. When the notice of appeal is filed through ESTTA, the registrant should check the box stating that a request for reconsideration has been filed.

In the rare circumstances the registrant files its notice of appeal as a paper submission and also files a request for reconsideration, or has a request for reconsideration pending, the notice of appeal should indicate this. When the written explanation for paper filing is acceptable, a Board paralegal will then send the registrant an order, to the same effect as the order automatically generated when the notice of appeal is filed through ESTTA. However, because the order is not automatically generated, it will not issue immediately. Where a registrant has timely filed both a notice of appeal on paper and a request for reconsideration, but has not heard from the Board within sixty days with regard to the appeal and reconsideration request, the registrant should not file its appeal brief. [ Note 4.] Rather, it may assume that the Board will institute the appeal, if the written explanation for the paper filing is acceptable, and then suspend proceedings, so that the due date for the appeal brief will be reset in the event that the examining attorney denies the request for reconsideration. The registrant does not need to verify with the Board that the due date for its brief on appeal will be changed if necessary. [ Note 5.] TBMP §1302.02. However, the registrant 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 an appeal is late-filed, but the registrant timely filed a request for reconsideration, the Board will issue an order informing the registrant of the lateness of its appeal, stating that the late appeal cannot be entertained by the Board, and the examining attorney will consider the request for reconsideration. See TBMP § 1303.02(a).

NOTES:

 1.   See 37 C.F.R § 2.93(c)(1)(i).

 2.   See 37 C.F.R § 2.93(c)(2)(i).

 3.   See 37 C.F.R § 2.93(c)(3)(ii); 37 C.F.R § 2.94.

 4.   Should the registrant file an appeal brief in this situation, the Board will normally remand the proceeding to the examining attorney to consider the request for reconsideration and, if reconsideration is denied, the Board may upon resumption of proceedings in the appeal give the registrant an opportunity to submit a supplemental appeal brief. Cf. In re Husqvarna Aktiebolag, 91 USPQ2d 1436, 1437 (TTAB 2009) (because Board was not aware of applicant’s request for reconsideration which was filed two days before notice of appeal, the order instituting the appeal allowed applicant sixty days to file its appeal brief; examining attorney, unaware of either notice of appeal or appeal brief, issued nonfinal Office action, and subsequently another final refusal, and returned application to Board for resumption of appeal; applicant requested that it be permitted to file second brief, and Board accepted it as operative brief).

 5.   See In re Live Earth Products Inc., 49 USPQ2d 1063, 1064 (TTAB 1998).