1207    Submission of Evidence During Appeal of Refusal of Application

1207.01    General Rule — Evidence Submitted After Appeal Untimely

37 C.F.R. § 2.142(d)  The record in the application should be complete prior to the filing of an appeal. Evidence should not be filed with the Board after the filing of a notice of appeal.

  • (1) In an appeal from a refusal to register, if the appellant or the examining attorney desires to introduce additional evidence after an appeal is filed, the appellant or the examining attorney should submit a request to the Board to suspend the appeal and to remand the application for further examination.

The evidentiary record in an application should be complete prior to the filing of an ex parte appeal to the Board. [ Note 1.] See TBMP § 1203.02(e).

However, if the applicant or the examining attorney submits excerpts from articles during examination, the nonoffering party may submit the complete article, even if such submission is made after the appeal is filed. [ Note 2.] If the nonoffering party wishes to have the entire article considered, the better practice is to submit the article with a request for remand. However, because the party submitting the excerpt of the article had the opportunity to review the entire article, if the article is submitted with an appeal brief, the Board need not remand the application, and may instead consider the article as part of the record. [ Note 3.] See also TBMP § 1208.01.

If evidence that was previously unavailable comes to the applicant’s or examining attorney’s attention after an appeal is filed, the proper procedure is to submit a request to the Board to suspend the appeal and remand the application. [ Note 4.] See TBMP § 1209.02 and TBMP § 1209.04.

NOTES:

 1.   37 C.F.R. § 2.142(d). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69968 (Oct. 7, 2016) ("The Office is amending § 2.142(d) to clarify that evidence should not be filed with the Board after a notice of appeal is filed. The amendment more directly states the prohibition.").

For decisions issued in 2000 and after, see also In re James S. Fallon, 2020 USPQ2d 11249, at *2 (TTAB 2020) (applicant’s submission of a patent drawing with its appeal brief was untimely and therefore not considered); In re tapio GmbH, 2020 USPQ2d 11387, at *3 (TTAB 2020) (Board sustained the examining attorney’s objection and declined to consider the Internet screen shots embedded in applicant’s brief, Internet exhibit and declarations attached to brief); In re ADCO Industries – Technologies, L.P., 2020 USPQ2d 53786, at *2 (TTAB 2020) (evidence submitted for the first time in supplemental trial brief not considered); In re Jimmy Moore LLC, 119 USPQ2d 1764, 1767 (TTAB 2016) (copy of patent excerpt submitted with appeal brief not considered); In re Fiat Group Marketing & Corporate Communications S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014) (examining attorney’s objection to applicant’s submission of registrations with appeal brief sustained); In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013) (copies of documents pertaining to district court litigation submitted with applicant’s appeal brief not considered); In re Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163, 1165 n.3 (TTAB 2013) (new evidence submitted with reply brief is "untimely and therefore not part of the record for this case"); In re HSB Solomon Associates LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (printouts submitted with reply brief not considered); In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012) (exhibits attached to applicant’s supplemental brief not considered; noted that evidence could have been submitted during the period of further examination after remand); In re Luxuria s.r.o., 100 USPQ2d 1146, 1147-48 (TTAB 2011) (materials submitted with reply brief, after two requests for remand were denied, were not of record and, because reply brief discussed materials at length, reply brief also not considered); In re Giovanni Food Co., 97 USPQ2d 1990, 1990-91 (TTAB 2011) (documents from file of cited registration submitted with applicant’s appeal brief are late-filed and not considered; examining attorney’s objection sustained); In re Van Valkenburgh, 97 USPQ2d 1757, 1768 n.32, 1769 (TTAB 2011) (applicant has responsibility to make sure that the record is complete prior to filing a notice of appeal); In re Trans Continental Records Inc., 62 USPQ2d 1541, 1541 n.2 (TTAB 2002) (materials from web search engines submitted with appeal brief not considered); In re Lamb-Weston Inc., 54 USPQ2d 1190, 1191 n.2 (TTAB 2000).

For decisions issued prior to 2000, see also In re Psygnosis Ltd., 51 USPQ2d 1594 (TTAB 1999); In re Posthuma, 45 USPQ2d 2011, 2012 n.2 (TTAB 1998) (third-party registration attached to appeal brief not considered); In re Wada, 48 USPQ2d 1689 n.2 (TTAB 1998) (evidence submitted with reply brief not considered), aff’d, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999); In re L.C. Licensing Inc., 49 USPQ2d 1379, n.3 (TTAB 1998) (third-party registrations first submitted with appeal brief not considered); In re Caterpillar Inc., 43 USPQ2d 1335, 1337 (TTAB 1997) (new material attached to appeal and reply briefs, and submitted at oral hearing and subsequent to hearing untimely and not considered); In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992); In re Pennzoil Products Co., 20 USPQ2d 1753, 1756 n.9 (TTAB 1991); In re Nationwide Industries Inc., 6 USPQ2d 1882, 1884 n.5 (TTAB 1988); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224, 1226 n.2 (TTAB 1987); In re Gold’s Gym Enterprises Inc., 3 USPQ2d 1716 n.2 (TTAB 1987); In re International Environmental Corp., 230 USPQ 688, 690 (TTAB 1986); In re Mayer-Beaton Corp., 223 USPQ 1347, 1348 (TTAB 1984); In re Compagnie Internationale Pour L’Informatique-Cie Honeywell Bull, 223 USPQ 363 n.3 (TTAB 1984); In re Carvel Corp., 223 USPQ 65, 66 (TTAB 1984); In re Jos. Schlitz Brewing Co., 223 USPQ 45, 46 n.1 (TTAB 1983); In re Best Western Family Steak House, Inc., 222 USPQ 827 n.1 (TTAB 1984); In re Jeep Corp., 222 USPQ 333, 336 n.3 (TTAB 1984); In re Pierre Fabre S.A., 221 USPQ 1210, 1212 n.2 (TTAB 1984); In re Development Dimensions International, Inc., 219 USPQ 161, 162 n.2 (TTAB 1983); In re Gagliardi Brothers, Inc., 218 USPQ 181, 183 (TTAB 1983); In re Royal Viking Line A/S, 216 USPQ 795, 797 n.3 (TTAB 1982).

Cf. In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 820 (Fed. Cir. 1986); In re Volvo White Truck Corp., 16 USPQ2d 1417, 1419 n.4 (TTAB 1990).

 2.   See In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 820 (Fed. Cir. 1986) (if only a portion of an article is submitted, that portion is not thereby insulated from the context from whence it came).

 3.   But see In re Psygnosis Ltd., 51 USPQ2d 1594, 1597-98 (TTAB 1999) (if, after appeal, an applicant attempts to submit a full printout of articles from the NEXIS database which were revealed in an examining attorney’s search, but which were not introduced by the examining attorney, such articles are considered to be additional evidence and therefore untimely).

 4.   37 C.F.R. § 2.142(d)(1); see MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69968 (Oct. 7, 2016) ("The Office is further amending § 2.142(d) for clarity, including by specifying that an appellant or examining attorney who desires to introduce additional evidence after an appeal is filed should submit a request to the Board to suspend the appeal and remand the application for further examination."); see also In re Max Capital Group Ltd., 93 USPQ2d 1243, 1244 n.4 (TTAB 2010) (registration that issued after notice of appeal and submitted with appeal brief not considered, applicant could have filed a request for remand).

1207.02    Request to Remand for Additional Evidence

If an applicant or examining attorney wishes to introduce additional evidence after an appeal has been filed, the applicant or examining attorney may file a written request with the Board to suspend the appeal and remand the application for further examination. [ Note 1.]

A request under 37 C.F.R. § 2.142(d)(1)  to suspend and remand for additional evidence must be filed prior to the rendering of the Board’s final decision on the appeal. [ Note 2.] In addition, the request must include a showing of good cause therefor (which may take the form of a satisfactory explanation as to why the evidence was not filed prior to appeal), and be accompanied by the additional evidence sought to be introduced. [ Note 3.] The length of the delay in making the request after the reason for the remand becomes known, or the point in the appeal process at which the request for remand is made, will be considered in the determination of whether good cause exists. Generally, the later in the appeal proceeding that the request for remand is filed, the stronger the reason that must be given for good cause to be found. [ Note 4.]

Examples of circumstances that have been found to constitute good cause for a remand for additional evidence include the following:

  • (1) The evidence was not previously available. [ Note 5.] Even if the evidence was not previously available, good cause may not be found if the newly available evidence is merely cumulative in nature. Thus, if the examining attorney requests remand in order to submit an article which was published subsequent to the filing of the appeal, but which is of substantially the same nature as articles previously made of record, the request may be denied. Nor can the examining attorney use the subsequent publication of a single article to make of record articles which were previously available. Similarly, if the applicant requests remand to make of record its most recent monthly sales or advertising figures in support of a Trademark Act § 2(f), 15 U.S.C. § 1052(f), claim, the request may be denied. There is a point at which prosecution or examination must come to an end.
  • (2) A new attorney for the applicant, or a new examining attorney, has taken over the case and wishes to supplement the evidence of record. The transfer of a case from one firm member to another is not considered by the Board to constitute good cause for a remand under the "new attorney" rationale. However, the transfer of the case from in-house counsel to an outside firm is treated as a new attorney taking over the case. Similarly, a different examining attorney being assigned the application is treated as a new attorney taking over the case.
  • (3) The applicant and examining attorney have agreed to the remand. [ Note 6.]

In addition, because a consent agreement offered in response to a refusal to register under Trademark Act § 2(d), 15 U.S.C. § 1052(d), is inherently difficult and time-consuming to obtain, and may be highly persuasive of registrability [ Note 7.], the Board will grant a request to suspend and remand for consideration of a consent agreement if the request, accompanied by the consent agreement, is filed at any time prior to the rendering of the Board’s final decision on the appeal.

If a request to remand for additional evidence is granted, the nonrequesting party may submit additional evidence in response to the evidence submitted with the request. [ Note 8.] However, depending on the stage of the appeal, the Board may direct that any responsive evidence be submitted with a supplemental brief. [ Note 9.]

When an applicant’s request to suspend and remand for additional evidence is granted, and the application is remanded to the examining attorney for further examination, the examining attorney may approve the application for publication (or for registration, in the case of a Supplemental Register application), or adhere to the action from which the appeal was taken. The examining attorney may also issue a new nonfinal action asserting any new refusal or requirement necessitated by the new evidence. The examining attorney may not, however, assert a new refusal or requirement unrelated to the new evidence unless the examining attorney files with the Board a request under 37 C.F.R. § 2.142(f)(6)  for remand to assert the new refusal or requirement, and the request is granted. If the examining attorney is persuaded, on the basis of the new evidence, that the applicant is entitled to the registration sought, and approves the application for publication (or for registration, in the case of a Supplemental Register application), the appeal will be moot. The applicant will receive notification that the application has been approved for publication when the Office issues a computer-generated notice of publication; in addition, the applicant may ascertain the status of the application by checking the TSDR database. If the examining attorney, after consideration of the new evidence, adheres to the final refusal to register, or ultimately issues a new final refusal to register, the response clause should be omitted; 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.

When an examining attorney’s request to suspend and remand for additional evidence is granted, the Board, in its action granting the request, will allow the examining attorney time in which to issue an Office action relating to the new evidence to be submitted therewith and, depending on the circumstances, will either direct the examining attorney to issue a nonfinal action so that the applicant can respond with argument and evidence, or to issue an Office action omitting the response clause and return the application to the Board. If the applicant’s appeal brief has already been filed, applicant will be allowed an opportunity, if it so desires, to file a supplemental brief directed to the new evidence submitted by the examining attorney.

For more information about requests for remand by examining attorneys, see TMEP § 1209.02. For more information about requests for remand by applicants, see TBMP § 1209.04.

NOTES:

 1.   See 37 C.F.R. § 2.142(d)(1). See also In re Information Builders Inc., 2020 USPQ2d 10444, at *3 n.5 (TTAB 2020) ("To the extent Applicant wished to introduce additional evidence after its appeal had been filed, Applicant should have filed a written request with the Board to suspend the appeal and remand the application for further examination pursuant to Trademark Rule 2.142(d)."), appeal dismissed, No. 20-1979 (Fed. Cir. Oct. 20, 2020); In re tapio GmbH, 2020 USPQ2d 11387, at *3-4 n.11 (TTAB 2020); In re James S. Fallon, 2020 USPQ2d 11249, at *2 (TTAB 2020); In re I-Coat Co., 126 USPQ2d 1730, 1734 n.15 (TTAB 2018); In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1696 (TTAB 1992); In re Wells Fargo & Co., 231 USPQ 95, 101 n.24 (TTAB 1986); In re Big Wrangler Steak House, Inc., 230 USPQ 634, 635 n.4 (TTAB 1986); In re Bercut-Vandervoort & Co., 229 USPQ 763, 766 n.6 (TTAB 1986); In re Chung, Jeanne & Kim Co., 226 USPQ 938, 940 n.6 (TTAB 1985); In re Mayer-Beaton Corp., 223 USPQ 1347, 1348 (TTAB 1984); In re Compagnie Internationale Pour L’Informatique-Cie Honeywell Bull, 223 USPQ 363 n.3 (TTAB 1984); In re Carvel Corp., 223 USPQ 65, 66 (TTAB 1984); In re Jos. Schlitz Brewing Co., 223 USPQ 45, 46 n.1 (TTAB 1983); In re Best Western Family Steak House, Inc., 222 USPQ 827 n.1 (TTAB 1984); In re Jeep Corp., 222 USPQ 333, 336 n.3 (TTAB 1984); In re Consolidated Foods Corp., 218 USPQ 184, 186 n.2 (TTAB 1983); In re Royal Viking Line A/S, 216 USPQ 795, 797 n.3 (TTAB 1982). See also In re Jimmy Moore LLC, 119 USPQ2d 1764, 1767 (TTAB 2016) (request for remand under 37 C.F.R. § 2.142(d) is appropriate procedure; 37 C.F.R. § 2.122(e) for inter partes proceedings is inapplicable).

 2.   See In re Johanna Farms, Inc., 223 USPQ 459, 460 (TTAB 1984); In re Carvel Corp., 223 USPQ 65 (TTAB 1984).

 3.   See In re Adlon Brand Gmbh & Co., 120 USPQ2d 1717, 1725 (TTAB 2016) (applicant’s request for remand, included in applicant’s brief, denied, explaining that proper procedure "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."); In re Luxuria s.r.o., 100 USPQ2d 1146, 1147 (TTAB 2011) (applicant’s request for remand denied for failure to show good cause); In re Big Wrangler Steak House, Inc., 230 USPQ 634, 635 n.4 (TTAB 1986); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986); In re Chung, Jeanne & Kim Co., 226 USPQ 938, 940 n.6 (TTAB 1985); In re Mayer-Beaton Corp., 223 USPQ 1347, 1348 (TTAB 1984); In re Compagnie Internationale Pour L’Informatique-Cie Honeywell Bull, 223 USPQ 363, 636 n.3 (TTAB 1984); In re Jeep Corp., 222 USPQ 333 (TTAB 1984); and In re Historic Wharf’s Associates, Inc., 222 USPQ 92, 93 n.1 (TTAB 1984).

 4.   See In re Luxuria s.r.o., 100 USPQ2d 1146, 1147 (TTAB 2011) (denial of request for remand made after appeal briefs filed); In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1334 (TTAB 2009) (request for remand denied for failure to show good cause so late in the appeal). See also In re Pennzoil Products Co., 20 USPQ2d 1753, 1756 n.9 (TTAB 1991).

 5.   See In re Zanova Inc., 59 USPQ2d 1300, 1302 (TTAB 2001); In re Central Sprinkler Co., 49 USPQ2d 1194 n.2 (TTAB 1998) (applicant’s request for remand made in its appeal brief in order to allow examining attorney to consider additional third-party registrations denied because such evidence could have been submitted earlier in the prosecution).

 6.   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).

 7.   See, e.g., In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969, 970 (Fed. Cir. 1985); In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973).

 8.   See In re Northland Aluminum Products, Inc., 221 USPQ 1110, 1112 (TTAB 1984), aff’d, 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985). Cf. In re Development Dimensions International, Inc., 219 USPQ 161, 162 (TTAB 1983).

 9.   In re HerbalScience Group LLC, 96 USPQ2d 1321, 1323 n.2 (TTAB 2010).

1207.03    Evidence Considered Due to Actions of Nonoffering Party

Evidence submitted after appeal, without a granted request to suspend and remand for additional evidence, see TBMP § 1207.02, may be considered by the Board, despite its untimeliness, if the nonoffering party (1) does not object to the new evidence, and (2) discusses the new evidence or otherwise affirmatively treats it as being of record. [ Note 1.] In such a situation, the Board may consider evidence submitted by the nonoffering party to rebut the untimely evidence. [ Note 2.]

Third-party registrations may not be made of record by merely listing them in response to an Office Action. "It is well-established that in order to make third-party registrations properly of record, ‘applicant should submit copies of the registrations themselves, or the electronic equivalent thereof’ from the USPTO’s electronic databases. ..." [ Note 3.]

If the applicant, during the prosecution of the application, provided a listing of third-party registrations, without also submitting actual copies of the registrations, and the examining attorney did not object or otherwise advise the applicant that a listing is insufficient to make such registrations of record at a point when the applicant could cure the insufficiency, the examining attorney will be deemed to have waived any objection as to the admissibility of the list. [ Note 4.] See TBMP § 1208.02 regarding third-party registrations, including discussion of evidentiary value of such listings.

NOTES:

 1.   See, e.g., In re International Watchman, Inc., 2021 USPQ2d 1171, at *29 n.49 (TTAB 2021) (Board treated applicant’s prior registration as if of record because examining attorney and applicant referred to it in briefing the appeal); In re MK Diamond Products, Inc., 2020 USPQ2d 10882, at *1 n.5 (TTAB 2020) (Board treated registration as of record because applicant submitted substantial portions of the registration’s file history as a basis for argument throughout prosecution, and the examining attorney addressed the registration in the office actions and brief, and did not object to its discussion); In re Olin Corp., 124 USPQ2d 1327, 1335 n.22 (TTAB 2017) (because the examining attorney addressed applicant’s registrations in her brief and neither objected to the discussion of the other, Board treated both registrations as though they were of record); In re Sadoru Group Ltd., 105 USPQ2d 1484, 1485, 1489 n.6 (TTAB 2012) (examining attorney stated she did not object to consideration of untimely evidence accompanying applicant’s brief); In re Heeb Media LLC, 89 USPQ2d 1071, 1072 (TTAB 2008) (examining attorney pointed out untimeliness of evidence attached to applicant’s brief, but considered it and relied on it, and therefore Board treated it as of record); In re Litehouse Inc., 82 USPQ2d 1471, 1475 n.2 (TTAB 2007) (third-party registrations submitted for first time with applicant’s appeal brief considered because examining attorney did not object in her brief and instead presented arguments in rebuttal of this evidence); In re Homeland Vinyl Products Inc., 81 USPQ2d 1378, 1381 n.5 (TTAB 2006) (declarations submitted for first time with applicant’s appeal brief treated of record because examining attorney did not object and addressed the evidence on the merits); In re Rodale Inc., 80 USPQ2d 1696, 1699 n.4 (TTAB 2006) (Board considered summary of applicant’s prior registrations presented for the first time in its appeal brief because the examining attorney did not object and also presented substantive arguments regarding the registrations); In re Jump Designs LLC, 80 USPQ2d 1370, 1372 (TTAB 2006) (examining attorney, after noting that evidence submitted with applicant’s appeal brief was untimely, specifically stated in her brief that she did not object to it); In re Gibson Guitar Corp., 61 USPQ2d 1948, 1952 n.5 (TTAB 2001) ("evidence" of sales mentioned for first time in applicant’s brief and thus not timely submitted, but because in her brief examining attorney treated the information as though of record, Board did also); In re Urbano, 51 USPQ2d 1776, 1778 n.4 (TTAB 1999) (third-party registrations submitted with examining attorney’s brief considered of record because applicant did not object and discussed the evidence on its merits in reply brief); In re Pennzoil Products Co., 20 USPQ2d 1753, 1756 n.9 (TTAB 1991); In re Nuclear Research Corp., 16 USPQ2d 1316, 1317 n.2 (TTAB 1990); In re Dana Corp., 12 USPQ2d 1748, 1749 n.8 (TTAB 1989); In re Pencils Inc., 9 USPQ2d 1410, 1411 (TTAB 1988).

See also In re Wells Fargo & Co., 231 USPQ 95, 101 n.24 (TTAB 1986); In re Weather Channel, Inc., 229 USPQ 854 n.3 (TTAB 1985); In re Bercut-Vandervoort & Co., 229 USPQ 763, 766 n.6 (TTAB 1986); In re Cotter & Co., 228 USPQ 202, 204 n.2 (TTAB 1985); In re Chung, Jeanne & Kim Co., 226 USPQ 938, 946 n.6 (TTAB 1985); In re Bee Pollen From England Ltd., 219 USPQ 163, 165 n.4 (TTAB 1983); In re Development Dimensions International, Inc., 219 USPQ 161 n.2 (TTAB 1983).

 2.   See In re Development Dimensions International, Inc., 219 USPQ 161 (TTAB 1983).

 3.   In re City of Houston, 101 USPQ2d 1534, 1536 n.5 (TTAB 2012) (evidentiary submissions "should be made prior to appeal or, if after appeal, pursuant to a remand of the matter to the examining attorney for further examination. Trademark Rule 2.142(d).") (quoting In re Broadway Chicken Inc., 38 USPQ2d 1559, 1560 n.6 (TTAB 1996) (citing In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994)), aff’d, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013).

 4.   See In re City of Houston, 101 USPQ2d 1534, 1536 (TTAB 2012) ("[T]he examining attorney’s failure to advise applicant of the insufficiency of the list of registrations when it was proffered during examination constituted a waiver of any objection to consideration of that list. Accordingly, we will consider the ... list of registrations ... ‘for whatever limited probative value such evidence may have,’" (citing In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001))), aff’d, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013). See also In re Mayweather Promotions, LLC, 2020 USPQ2d 11298, at *4 n.17 (TTAB 2020) (because the examining attorney failed to object during prosecution to applicant’s improper listing of registrations, which would have allowed applicant to cure the deficiency, Board deemed the objection waived on appeal); In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB 2007) (although applicant first submitted a copy of its own registration with its appeal brief, Board viewed examining attorney as having treated registration of record because applicant referenced it in argument made in two responses during prosecution and examining attorney addressed the argument and therefore considered the registration; nor did examining attorney object to the registration as untimely filed); In re Hayes, 62 USPQ2d 1443, 1445 n.3 (TTAB 2002) (Board considered third-party registrations submitted with reply brief because applicant had submitted copies of Official Gazettes showing marks published for opposition during prosecution, and examining attorney did not advise applicant that copies of the registrations were necessary to make them of record); In re Boyd Gaming Corp., 57 USPQ2d 1944, 1945 n.4 (TTAB 2000). Cf. In re Lorillard Licensing Co., 99 USPQ2d 1312, 1314-15 n.3 (TTAB 2011) (examining attorney was not required to advise applicant that reference to a third-party registration was insufficient to make such registration of record when reference was made for the first time in a request for reconsideration which was denied).

1207.04    Evidence Filed with Timely Request for Reconsideration

A timely request for reconsideration of an appealed action may be accompanied by additional evidence, which will thereby be made part of the evidentiary record in the application. [ Note 1.] There is no need, in such a situation, for a 37 C.F.R. § 2.142(d)  request to suspend and remand for additional evidence. Evidence submitted with a timely request for reconsideration of an appealed action, that is, a request filed during the response period following issuance of the appealed action, is considered by the Board to have been filed prior to appeal, even if the notice of appeal was, in fact, filed earlier in the response period than the request for reconsideration. See TBMP § 1204. However, if the applicant has already filed a brief, then the Board will treat the request for reconsideration as a request for remand for which good cause must be shown, even if the request for reconsideration is filed within the time provided in the final Office action, which is six months until December 1, 2022. [ Note 2.] See TBMP § 1204.

When a timely request for reconsideration of an appealed action is filed (with or without new evidence), the examining attorney may submit, with their response to the request, new evidence directed to the issue(s) for which reconsideration is sought. [ Note 3.] However, the applicant may not submit additional evidence in response to any evidence submitted by the examining attorney unless the examining attorney’s action is a nonfinal action to which a response may be filed. Otherwise, if the applicant wishes to submit additional evidence, it must file a request for remand. [ Note 4.] See TBMP § 1207.01 and TBMP § 1207.02. This is the case even if the response is filed within the time provided in the final Office action. If the examining attorney denies a request for reconsideration after a notice of appeal is filed, a second request for reconsideration will be treated as a request for remand even if it is filed within the time provided in the final Office action. See TBMP § 1204, TBMP § 1207.02 and TBMP § 1209.04.

NOTES:

 1.   In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1334 (TTAB 2009).

 2.   See also TMEP § 715.04(b).

 3.   In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1201 (TTAB 2009) (evidence submitted in response to request for reconsideration that is filed with notice of appeal is part of the application record); In re Giger, 78 USPQ 1405, 1406-07 (TTAB 2006). See also In re Jimmy Moore LLC, 119 USPQ2d 1764, 1767 (TTAB 2016) (may submit evidence in a request for reconsideration to a "subsequent final refusal").

 4.   See 37 C.F.R. § 2.142(d)(1); In re HerbalScience Group LLC, 96 USPQ2d 1321, 1323 (TTAB 2010).

1207.05    Submission of Evidence upon Remand for New Refusal

Additional evidence may be submitted, both by the examining attorney and by the applicant, if (1) an appealed application is remanded by the Board for further examination under 37 C.F.R. § 2.142(f)(1)  (i.e., a sua sponte remand by the Board when it appears to the Board that an issue not previously raised may render the mark of the applicant unregistrable), see TBMP § 1209.01, or under 37 C.F.R. § 2.142(f)(6)  (i.e., a remand by the Board upon written request by the examining attorney when it appears to the examining attorney that an issue not involved in the appeal may render the mark of the applicant unregistrable), see TBMP § 1209.02, and (2) the examining attorney, upon remand, does, in fact, issue a new refusal to register or a new requirement. [ Note 1.] If no new refusal or requirement is made, and the examining attorney instead returns the application to the Board, no additional evidence may be submitted. [ Note 2.]

NOTES:

 1.   See In re Yarnell Ice Cream, 2019 USPQ2d 265039, at *3 (TTAB 2019) (Board sua sponte remanded application to the Examining Attorney to consider the presence of the word "Applicant’s" in amended identification of goods); In re Bank America Corp., 229 USPQ 852, 853 n.4 (TTAB 1986).

 2.   See In re Diet Tabs, Inc., 231 USPQ 587, 588 n.3 (TTAB 1986).

1207.06    Letter of Protest Evidence

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.] 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. During prosecution, evidence included in the application record as a result of the letter of protest procedure and relied upon by the Examining Attorney or submitted with any Office action will be considered by the Board as evidence of record. [ Note 2.] If the examining attorney issues an Office action that includes any materials submitted with the letter of protest, that material becomes part of the record of the application for appeal. See TBMP § 1207.06.

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 wishes to rely on the evidence to support the appealed refusal of registration and have it made of record in the appeal, the examining attorney may file a written request with the Board, pursuant to 37 C.F.R. § 2.142(d)(1), to suspend the appeal and remand the application for further examination. See TBMP § 1207.02 for information concerning a request for remand for additional evidence.

The request must be filed prior to the rendering of the Board’s final decision on the appeal, and must be accompanied by the additional evidence included in the record as a result of the letter of protest procedure that is sought to be relied upon. See TBMP § 1207.02. In addition, the request must include a showing of good cause therefor, in the same manner as any other request to remand for additional evidence. See TBMP § 1207.02 for information concerning good cause for a remand for additional evidence.

Evidentiary value of material submitted by a third party through the letter of protest procedure will depend on whether it meets evidentiary requirements for authentication or foundation, identified as to nature or source. [ Note 3.]

NOTES:

 1.   See TMEP § 1715 et seq.

 2.   See In re International Watchman, Inc., 2021 USPQ2d 1171, at *2 n.2 (TTAB 2021) ("To be clear, only the evidence submitted with the Letter of Protest Memorandum and relied upon by the Examining Attorney is part of the record."); In re Information Builders Inc., 2020 USPQ2d 10444, at *5 n.11 (TTAB 2020) (evidence submitted with the Letter of Protest Memorandum and relied upon by the examining attorney was properly of record), appeal dismissed, No. 20-1979 (Oct. 20, 2020).

 3.   See In re Information Builders Inc., 2020 USPQ2d 10444, at *5 n.11 (TTAB 2020) ("…the evidence submitted with the Letter of Protest Memorandum does not carry any more weight than the other evidence submitted during prosecution. … we have considered each piece of evidence, including the evidence submitted with the Letter of Protest Memorandum, for whatever probative value it merits."), appeal dismissed, No. 20-1979 (Oct. 20, 2020); In re Urbano, 51 USPQ2d 1776, 1778-79 and 1778 n.5 (TTAB 1999) (documents submitted in connection with the letter of protest were of limited evidentiary value because no affidavits or other evidence establishing foundation, and no information establishing authenticity or source).