1203.02(g) Waiver of Claim or Requirement in Brief
If an applicant, in its appeal brief, does not assert an argument made during prosecution, it may be deemed waived by the Board. [ Note 1.] Similarly, if an applicant, in its appeal brief, complies with a requirement and the examining attorney does not discuss the requirement, or if the examining attorney does not discuss a ground for refusal in their brief, the requirement or refusal may be deemed withdrawn. [ Note 2.] See TBMP § 1203.02(b). However, if an applicant seeks to comply with a requirement, the better practice is to file a separately captioned request to remand with a showing of good cause rather than simply offering the amendment as part of its brief. See TBMP § 1205. [ Note 3.]
NOTES:
1. See In re Katch, LLC, 2019 USPQ2d 233842, at *1-2 (TTAB 2019) (applicant who briefed only the refusal under Section 23(c) waived its appeal of the refusal to registration under Trademark Sections 1, 2, 3 and 45); In re Gibson Guitar Corp., 61 USPQ2d 1948, 1950 n.2 (TTAB 2001) (applicant did not, in its appeal brief, pursue claim of inherent distinctiveness, and therefore the claim was not considered by Board). See also In re Rainier Enterprises, LLC, 2019 USPQ2d 463361, *2-3 (TTAB 2019) (failure to address refusals is a basis for dismissing the appeal); In re Harley, 119 USPQ2d 1755, 1758 (TTAB 2016) (failure to address refusals is a basis for affirming the examining attorney’s refusal on all grounds); In re E5 LLC, 103 USPQ2d 1578, 1579 n.1 (TTAB 2012) (during prosecution, applicant argued that mark was unitary but did not maintain argument in its appeal brief).
Cf. In re MK Diamond Products, Inc., 2020 USPQ2d 10882, at *1 n.2 (TTAB 2020) (Board considered final refusal based on request for information under 37 C.F.R. § 2.61(b) withdrawn because the examining attorney did not pursue it in appeal brief); In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1852 n.31 (TTAB 2012) (applicant mentioned claim of acquired distinctiveness in original appeal brief but not again in supplemental appeal brief; because the examining attorney addressed the point in supplemental brief, Board considered the claim).
2. 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) (requirement for translation deemed moot because applicant, in its appeal brief, offered translation, and examining attorney, in her appeal brief, did not address issue).
3. Cf. In re Ox Paperboard, LLC, 2020 USPQ2d 10878, at *2 (TTAB 2020) (amendments embedded in an appeal brief are discouraged because they may be inadvertently overlooked or, they may needlessly delay the proceeding; proper procedure is to file separately captioned request for remand with showing of good cause).