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.").