805 Final Decision Remand to Examining Attorney
37 C.F.R. § 2.131 Remand after decision in inter partes proceeding. If, during an inter partes proceeding involving an application under Section 1 or 44 of the Act, facts are disclosed which appear to render the mark unregistrable, but such matter has not been tried under the pleadings as filed by the parties or as they might be deemed to be amended under Rule 15(b) of the Federal Rules of Civil Procedure to conform to the evidence, the Trademark Trial and Appeal Board, in lieu of determining the matter in the decision on the proceeding, may remand the application to the trademark examining attorney for reexamination in the event the applicant ultimately prevails in the inter partes proceeding. Upon remand, the trademark examining attorney shall reexamine the application in the light of the matter referenced by the Board. If, upon reexamination, the trademark examining attorney finally refuses registration to the applicant, an appeal may be taken as provided by §§ 2.141 and 2.142.
If, during the course of an opposition, concurrent use, or interference proceeding involving an application under Trademark Act § 1, 15 U.S.C. § 1051, or Trademark Act § 44, 15 U.S.C. § 1126, facts are disclosed which appear to render the mark of the involved application unregistrable, and the matter has not been tried under the pleadings as filed by the parties or as they might be deemed to be amended pursuant to Fed. R. Civ. P. 15(b), the Board, in its decision on the proceeding, may, in addition to determining the pleaded matters, remand the application to the examining attorney for further examination in light of the disclosed facts. That is, the Board may include in its decision a recommendation that in the event the applicant ultimately prevails in the inter partes proceeding, the examining attorney reexamine the application in light of the disclosed facts. [ Note 1.] See also TBMP § 515 . Cf. TBMP § 1217.
If a party to an opposition, concurrent use, or interference proceeding involving an application under Trademark Act § 1, 15 U.S.C. § 1051, or Trademark Act § 44, 15 U.S.C. § 1126, believes that the facts disclosed therein appear to render the mark of the involved application unregistrable, but the matter was not pleaded or tried by the express or implied consent of the parties pursuant to Fed. R. Civ. P. 15(b), the party may request that the Board include, in its decision in the proceeding, a 37 C.F.R. § 2.131 remand to the examining attorney. The request may be made in the party’s brief on the case, or by separate motion.
An application under Trademark Act § 66(a), 15 U.S.C. § 1141f(a), may not be remanded under 37 C.F.R. § 2.131.
NOTES:
1. 37 C.F.R. § 2.131. See, e.g., First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628, 1636 n. 6 (TTAB 1988) (in the event applicant ultimately prevails, the involved application will be remanded to the examining attorney for reexamination).