1209 Remand in Appeal of Refusal of Application
1209.01 Upon Board’s Own Initiative
37 C.F.R. § 2.142 Time and manner of ex parte appeals.
- (f)
- (1) If, during an appeal from a refusal of registration, it appears to the Trademark Trial and Appeal Board that an issue not previously raised may render the mark of the appellant unregistrable, the Board may suspend the appeal and remand the application to the examining attorney for further examination to be completed within the time set by the Board.
- (2) If the further examination does not result in an additional ground for refusal of registration, the examining attorney shall promptly return the application to the Board, for resumption of the appeal, with a written statement that further examination did not result in an additional ground for refusal of registration.
- (3) If the further examination does result in an additional ground for refusal of registration, the examining attorney and appellant shall proceed as provided by §§ 2.61, 2.62, and 2.63. If the ground for refusal is made final, the examining attorney shall return the application to the Board, which shall thereupon issue an order allowing the appellant sixty days from the date of the order to file a supplemental brief limited to the additional ground for the refusal of registration. If the supplemental brief is not filed by the appellant within the time allowed, the appeal may be dismissed.
- (4) If the supplemental brief of the appellant is filed, the examining attorney shall, within sixty days after the supplemental brief of the appellant is sent to the examining attorney, file with the Board a written brief answering the supplemental brief of appellant and shall email or mail a copy of the brief to the appellant. The appellant may file a reply brief within twenty days from the date of mailing of the brief of the examining attorney.
- (5) If an oral hearing on the appeal had been requested prior to the remand of the application but not yet held, an oral hearing will be set and heard as provided in paragraph (e) of this section. If an oral hearing had been held prior to the remand or had not been previously requested by the appellant, an oral hearing may be requested by the appellant by a separate notice filed not later than ten days after the due date for a reply brief on the additional ground for refusal of registration. If the appellant files a request for an oral hearing, one will be set and heard as provided in paragraph (e) of this section.
If, during an ex parte appeal to the Board, it appears to the Board that an issue not previously raised may render the mark of the applicant unregistrable, the Board may issue a written action suspending the appeal and remanding the application to the examining attorney for further examination with respect to that issue. [ Note 1.] However, the Board normally will not remand an application for consideration of a requirement or ground for refusal if the examining attorney had previously made that requirement or refused registration on that ground and then withdrew it. [ Note 2.]
The Board may also sua sponte remand an application to the examining attorney if, after examination and/or briefing has been completed, a decision in another case is rendered that is likely to have a bearing on the examining attorney’s position [ Note 3.] or if the nonproffering party consents to the submission of new evidence, even at a late stage of the appeal. [ Note 4.] Or the Board may remand an application for clarification of the issues on appeal, where, for example, the examining attorney and the applicant appear to be arguing different grounds of refusal.
The further examination must be completed within the time set by the Board, or within an extension of time for that purpose. [ Note 5.]
If the examining attorney, upon consideration of the issue specified in the Board’s remand letter, does not believe that the specified issue renders the mark of the applicant unregistrable, the examining attorney must promptly return the application to the Board with a written statement that further examination did not result in an additional requirement or ground for refusal of registration. [ Note 6.] The Board will then resume proceedings with respect to the appeal, and take further appropriate action. The issues ultimately determined by the Board will be those that were the subject of the appeal; no consideration will be given to the issue that was the subject of the remand. [ Note 7.]
If, on the other hand, the further examination does result in an additional requirement or ground for refusal of registration, the examining attorney and the applicant should proceed as specified in 37 C.F.R. § 2.61 through 37 C.F.R. § 2.63. [ Note 8.] If the additional requirement or ground for refusal of registration is ultimately made final, the response clause should be omitted from the Office action; the application should be returned to the Board; proceedings with respect to the appeal will be resumed; and further appropriate action will be taken therein. Specifically, the Board will issue an order allowing the applicant 60 days from the date of the order in which to file a supplemental brief directed (solely) to the additional ground for refusal of registration. [ Note 9.]
If the applicant fails to file a supplemental brief within the specified 60-day period, or during an extension of time for that purpose, the appeal may be dismissed. [ Note 10.] If the applicant files a supplemental brief, the Board will forward the application to the examining attorney. Within 60 days after the date of the Board’s written action forwarding the application to the examining attorney, or within an extension of time for that purpose, the examining attorney must file a written brief answering the supplemental brief of the applicant. If the examining attorney had not previously submitted an appeal brief, the written brief may answer not just the applicant’s supplemental brief, but also its original appeal brief. [ Note 11.] The examining attorney must also send a copy of their brief to the applicant. [ Note 12.] If the examining attorney’s brief is late-filed, the Board may exclude it in the absence of an adequate explanation for the late filing. [ Note 13.] TBMP § 1203.02(b). Within 20 days from the date of the examining attorney’s brief, or within an extension of time for the purpose, the applicant may, if it so desires, file a reply brief. [ Note 14.] The filing of a reply brief is not mandatory. If the applicant files a reply brief, the Board will notify the examining attorney so that it can be reviewed.
If an oral hearing on the appeal had been requested by the applicant prior to the remand of the application, but had not yet been held, the oral hearing will be set after the expiration of the applicant’s time for filing a reply brief or, depending on the circumstances, a supplemental reply brief directed to the additional ground for refusal of registration. [ Note 15.] If an oral hearing had been held prior to the remand, or had not previously been requested by the applicant, an oral hearing may be requested by the applicant by separate submission filed not later than 10 days after the due date for a reply brief on the additional ground for refusal of registration; the oral hearing will be set by the Board upon receipt of the request. [ Note 16.]
If the examining attorney is persuaded by the applicant’s supplemental brief and/or reply brief that the additional requirement or ground for refusal of registration should be withdrawn, the examining attorney should issue a written action withdrawing the requirement or additional ground, and return the application to the Board for resumption of proceedings in the appeal.
The examining attorney may not, upon remand under 37 C.F.R. § 2.142(f)(1), make a requirement or refuse registration on a new ground not specified in the Board’s remand letter. If the examining attorney, upon remand, wishes to make a requirement or refuse registration on a new ground not specified in the Board’s remand letter, the examining attorney must file a request with the Board, pursuant to 37 C.F.R. § 2.142(f)(6), for jurisdiction to make a requirement or refuse registration on the new ground. Nor may the examining attorney, upon remand under 37 C.F.R. § 2.142(f)(1), submit evidence relating to a requirement or ground not specified in the Board’s remand letter. [ Note 17.] For information on informalities which are noted by the Board in its final decision, but for which remand was not considered necessary, see TBMP § 1217.
For information concerning the submission of new evidence after remand for refusal of registration on an additional ground, see TBMP § 1207.05.
NOTES:
1. 37 C.F.R. § 2.142(f)(1). See In re Opryland USA Inc., 1 USPQ2d 1409, 1411 (TTAB 1986); In re Diet Tabs, Inc., 231 USPQ 587, 588 (TTAB 1986); In re Johanna Farms, Inc., 223 USPQ 459, 461 (TTAB 1984). See also In re Wella A.G., 858 F.2d 725, 8 USPQ2d 1365, 1369 (Fed. Cir. 1988), rev’g 230 USPQ 77, 79 (TTAB 1986).
2. In re Bed & Bars Ltd., 122 USPQ2d 1546, 1548 n.2 (TTAB 2017) ("the Board normally will not remand an application for consideration of a ground of refusal if the Examining Attorney … had previously refused registration on that ground and then withdrew the refusal").
3. See In re Dekra e.V., 44 USPQ2d 1693, 1694-95 (TTAB 1997) (after briefs were filed, the Federal Circuit issued a decision with applicability to the case; Board remanded case to examining attorney to consider refusal in light of that decision). See also In re Consolidated Specialty Restaurants Inc., 71 USPQ2d 1921, 1922 (TTAB 2004) (Board granted examining attorney’s request for remand in view of Federal Circuit decision setting forth new standard for primarily geographically deceptively misdescriptive marks).
4. See, e.g., In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048, at *1 & n.3 (TTAB 2020) (Board sua sponte remanded applications to the examining attorney to consider evidence submitted by applicant with its reply brief because the evidence was responsive to a previous Rule 2.61 request for information by the examining attorney, and applicant submitted it with the examining attorney’s asserted consent).
6. See 37 C.F.R. § 2.142(f)(2). See In re Diet Tabs, Inc., 231 USPQ 587, 588 (TTAB 1986).
7. See In re Diet Tabs, Inc., 231 USPQ 587, 588 (TTAB 1986).
11. See In re Boston Beer Co. L.P., 47 USPQ2d 1914, 1918 (TTAB 1998).
13. Cf. In re Tennessee Walking Horse Breeders’ and Exhibitors’ Association, 223 USPQ 188 n.3 (TTAB 1984).
17. See In re W.W. Henry Co., 82 USPQ2d 1213, 1213-14 (TTAB 2007) (because claimed date of first use and use in commerce is subsequent to application filing date, final decision allowed applicant to file either an amendment to the dates of use or an amendment to the basis for the application); In re Sandberg & Sikorski Diamond Corp., 42 USPQ2d 1544, 1545 n.1 (TTAB 1996) (in final decision, Board recommended that applicant, if it ultimately prevailed, amend description of mark to clearly set forth claim); In re EBSCO Industries Inc., 41 USPQ2d 1913, 1915 n.3 (TTAB 1996) (if applicant ultimately prevailed, it should file an amended drawing).
1209.02 Upon Request by Trademark Examining Attorney
37 C.F.R. § 2.142(f)(6) If, during an appeal from a refusal of registration, it appears to the examining attorney that an issue not involved in the appeal may render the mark of the appellant unregistrable, the examining attorney may, by written request, ask the Board to suspend the appeal and to remand the application to the examining attorney for further examination. If the request is granted, the examining attorney and appellant shall proceed as provided by §§ 2.61, 2.62, 2.63 and 2.64. After the additional ground for refusal of registration has been withdrawn or made final, the examining attorney shall return the application to the Board, which shall resume proceedings in the appeal and take further appropriate action with respect thereto.
If, during an ex parte appeal to the Board, it appears to the examining attorney that an issue not involved in the appeal may render the mark of the applicant unregistrable, the examining attorney may file a written request with the Board to suspend the appeal and remand the application for further examination. [ Note 1.] Such a request may be filed at any point in the appeal prior to the Board’s rendering a final decision, including at the point the examining attorney is to submit an appeal brief or supplemental appeal brief. [ Note 2.]
Because the mandate of the USPTO is to register only eligible marks, an examining attorney’s request for remand will generally be granted unless there is no valid basis for the request, e.g., remand is requested to require a disclaimer of a term which is not part of the mark. If the examining attorney’s request for remand is granted, the Board will forward the application to the examining attorney for further examination in accordance with the request. In its action granting the request, the Board will allow the examining attorney a specified time in which to issue an Office action pursuant to the request. Thereafter, the examining attorney and applicant should proceed as provided in 37 C.F.R. § 2.61 through 37 C.F.R. § 2.64. [ Note 3.]
If, upon remand, the examining attorney determines that registration should not be finally refused on the additional ground or that it is appropriate to withdraw the requirement mentioned in the request for remand, the examining attorney should issue a written Office action in which the response clause is omitted and return the application to the Board; proceedings with respect to the appeal will be resumed and further appropriate action will be taken therein. [ Note 4.] If the examining attorney determines, after considering applicant’s response to the nonfinal Office action, that a final refusal on that ground should issue or that a requirement should be made final, the examining attorney should issue a new action, omitting the response clause, which makes the refusal final as to both the additional ground and/or requirement and the ground(s) and/or requirements asserted in the previous final action. The application should then be returned to the Board, and proceedings in the appeal will be resumed. For information as to the further action taken by the Board, i.e., for information concerning the filing of supplemental briefs, and a request for oral hearing, see TBMP § 1209.01. [ Note 5.]
The examining attorney may not, upon remand under 37 C.F.R. § 2.142(f)(6), make a requirement or refuse registration on a new ground not mentioned in the examining attorney’s request for remand. If the examining attorney, upon remand, wishes to make a new requirement or refuse registration on a new ground not mentioned in the request for remand, the examining attorney must file a new request with the Board for jurisdiction to make a new requirement or refuse registration on the new ground. Nor may the examining attorney submit evidence that does not relate to the requirement or ground mentioned in the request for remand; thus, the examining attorney may not submit evidence that supports the grounds for refusal on which the appeal was originally filed.
In addition, the examining attorney may also request remand for other reasons, including, for example, to request information from an applicant regarding a previously issued refusal. [ Note 6.]
For information concerning the submission of new evidence after remand for refusal of registration on an additional ground, see TBMP § 1207.05.
NOTES:
1. 37 C.F.R. § 2.142(f)(6). See, e.g., In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048, at *1 (TTAB 2020) (Board granted examining attorney’s request for remand for consideration of new evidence that raised a potential ownership issue).
2. See In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048, at *1 (TTAB 2020) (Board granted examining attorney’s request for remand after full briefing of appeal; subsequently supplemental briefing allowed); In re Boston Beer Co. L.P., 47 USPQ2d 1914, 1918 (TTAB 1998) (Board granted examining attorney’s request for remand which was filed after submission of applicant’s appeal brief and supplemental appeal brief in order to allow examining attorney to refuse registration on additional ground).
3. See 37 C.F.R. § 2.142(f)(6). Cf. 37 C.F.R. § 2.142(f)(3).
4. See 37 C.F.R. § 2.142(f)(6).
5. See In re Boston Beer Co. L.P., 47 USPQ2d 1914, 1918 (TTAB 1998).
6. See In re Vox Populi Registry Ltd., 2020 USPQ2d 11289, at *2 (TTAB 2020) (in reviewing Board’s prior order granting examining attorney’s request for remand, Board found good cause for remand existed based on the examining attorney’s request for additional information as to the nature of applicant’s contract with ICANN; such information was relevant to the failure to function refusal), appeal filed, No. 2021-1496 (Fed. Cir. Dec. 31, 2020).
1209.03 Upon Determination of Letter of Protest
A third party that has objective evidence bearing upon the registrability of a mark in a pending application may bring such evidence to the attention of the Office by filing, with the Office of the Deputy Commissioner for Trademark Examination Policy, a "letter of protest" that complies with the requirements of 37 C.F.R. § 2.149. [ Note 1.] TBMP § 1207.06. The Deputy Commissioner will determine if the submission complies with the requirements of Trademark Rule 2.149 and whether any submitted evidence should be included in the application record for consideration by the examining attorney. See TBMP § 215.
Proceedings in an ex parte appeal will not be suspended pending determination by the Deputy Commissioner of a letter of protest. However, if the Deputy Commissioner determines that the letter of protest submission complies with the requirements of Rule 2.149 and includes submitted evidence in the application record, and the examining attorney, having considered the evidence, believes that an issue not involved in the appeal may render the mark of the applicant unregistrable, the examining attorney may file a written request with the Board, pursuant to 37 C.F.R. § 2.142(f)(6), to suspend the appeal and remand the application for further examination.
For information concerning requests for remand for a new refusal or new requirement, and the further proceedings in the case if such a request is granted by the Board, see 37 C.F.R. § 2.142(f)(6), and TBMP § 1209.02.
NOTES:
1. See TMEP § 1715.
1209.04 Upon Request by Applicant
A request filed by an applicant to remand the application to the examining attorney that is filed within the time provided in the issuance of a final Office action, which is six months until December 1, 2022, is treated as a request for reconsideration, whether it is denominated as such, or is captioned as a request for remand, unless applicant has already filed a brief. See TBMP § 1204. Requests for reconsideration are granted by the Board as a matter of right. See TBMP § 1204. If the request is filed after the expiration of the time provided in the final refusal (generally after the filing of the notice of appeal), or within the time provided in the final Office Action but after the applicant has filed a brief, it will be treated as a request for remand, for which good cause must be shown, whether it is captioned as a request for remand or as a request for reconsideration. See TBMP § 1204 and TBMP § 1207.04.
Requests for remand are generally filed by applicants because they wish to make additional evidence of record, or because they wish to amend the application. Applicants may also request remand so that the examining attorney can consider a refusal in light of a recently decided case or amended Trademark Rule. [ Note 1.] No matter what the purpose, the request for remand must include a showing of good cause. [ Note 2.] In determining whether good cause has been shown, the Board will consider both the reason given and the point in the appeal at which the request for remand is made. For examples of circumstances that have been found to constitute good cause for a remand for the purpose of submitting additional evidence, see TBMP § 1207.02. For examples of what constitutes good cause for the purpose of amending an application, see TBMP § 1205.01.
If the applicant has not filed its appeal brief prior to filing the request for remand, it should not do so until the Board has acted on the remand request. If the request is denied, the Board will allow the applicant time in which to file its appeal brief. 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 request for remand. The Board’s order granting the remand and the directions to the examining attorney contained therein will depend on the nature of the remand request and the circumstances. [ Note 3.] If the request for remand is for the purpose of submitting additional evidence, see TBMP § 1207.02. If the request for remand is for the purpose of submitting an amendment to the application, see TBMP § 1205.01. The examining attorney may only consider the matter for which the application has been remanded. The examining attorney may not use the remand in order to submit evidence in connection with a refusal or requirement that is not the subject of the remand request. [ Note 4.] To submit such evidence, reinstate a refusal or requirement, or make a new refusal or requirement, the examining attorney would have to file separate request for remand. [ Note 5.] See TBMP § 1207.02.
NOTES:
1. But see In re Datapipe, Inc., 111 USPQ2d 1330, 1331 (TTAB 2014) (applicant’s alternative request for remand to consider informal nonpublic examination guide denied).
2. See In re Martin Container, Inc., 65 USPQ2d 1058, 1060 (TTAB 2002) (request for remand filed after notice of appeal in view of recent ruling by the Court of Appeals for the Federal Circuit). Cf. In re Adlon Brand Gmbh & Co., 120 USPQ2d 1717, 1725 (TTAB 2016) ("Applicant’s brief on the case is not the appropriate avenue for raising an objection to examination procedures. If Applicant believed that the issuance of the June 8, 2014 Office Action was procedurally erroneous, or if Applicant desired more time to address the Examining Attorney’s new evidence, Applicant’s recourse was to file with the Board, after the filing of the appeal but before briefing, a request for remand with a showing of good cause.") (citation omitted).
3. See TMEP § 1504.05.
4. In re Hughes Furniture Industries, Inc., 114 USPQ2d 1134, 1136 (TTAB 2015) (examining attorney’s submission of evidence on likelihood of confusion refusal unacceptable when applicant’s remand request was solely to comply with requirement for disclaimer).
5. 37 C.F.R. § 2.142(d)(1). See In re Hughes Furniture Industries, Inc., 114 USPQ2d 1134, 1136 (TTAB 2015) ("If, upon considering the request for remand the Examining Attorney wished to submit additional evidence regarding the Section 2(d) refusal (which was not affected by the disclaimer), the Examining Attorney should have filed with the Board her own request for remand for the purpose of submitting additional evidence in support of the likelihood of confusion refusal.").