1203.02(c)    Applicant’s Reply Brief

Within 20 days from the issue date of the examining attorney’s appeal brief, or within an extension of time for the purpose, the applicant may, if it so desires, file a reply brief that shall not exceed ten pages in length in its entirety. [ Note 1.] However, the filing of a reply brief is not mandatory. Although there is a fee for filing an appeal brief, none is required for filing a reply brief. [ Note 2.]

The reply brief should not include a proposed amendment, a request for remand, or a request for an oral hearing, within the body of the brief. [ Note 3.] Such requests should be filed by separately captioned submissions. See TBMP § 1205.01, TBMP § 1207.02 and TBMP § 1216.

If the applicant files a reply brief, the Board will notify the examining attorney. If the examining attorney, having read the applicant’s reply brief, is persuaded thereby that the applicant is entitled to the registration sought, the examining attorney may approve the application for publication (or for registration, in the case of a Supplemental Register application), and the appeal will be moot. The examining attorney should notify the applicant and Board by telephone or email. [ Note 4.]

There is no provision in the rules for the filing by the examining attorney of a written response to the applicant’s reply brief. However, if the applicant requests an oral hearing, the examining attorney may respond orally, at the oral hearing, to arguments raised in the applicant’s reply brief. [ Note 5.] Unless instructed or ordered by the Board, supplemental briefs filed after an oral hearing will not be considered. [ Note 6.] For further information regarding oral hearings, see TBMP § 1216.

NOTES:

 1.   Cf. 37 C.F.R. § 2.6(a)(18)(vi)  and 37 C.F.R. § 2.6(a)(18)(vii).

 2.   See 37 C.F.R. § 2.142(b)(1), 37 C.F.R. § 2.142(b)(2); In re Gena Laboratories, Inc., 230 USPQ 382, 383 n.4 (TTAB 1985); In re Randall & Hustedt, 226 USPQ 1031, 1033 n.2 (TTAB 1985). Cf. In re Gale Hayman Inc., 15 USPQ2d 1478 n.3 (TTAB 1990). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69968 (Oct. 7, 2016) ("The Office is amending § 2.142(b)(2) to … add [ ] that a reply brief from an appellant shall not exceed ten pages in length and that no further briefs are permitted unless authorized by the Board.").

 3.   See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1859 (TTAB 2014) ("To the extent applicant seeks to request remand for such consideration by the examining attorney, burying this request in its reply brief is not sufficient for the Board to treat it as a request for remand."). TMEP § 1501.03. Cf. In re Ox Paperboard, LLC, 2020 USPQ2d 10878, at *2 (TTAB 2020) ("Embedded amendments in an appeal brief are not prohibited but they are discouraged because they may be inadvertently overlooked by the Board before the Examining Attorney files his or her brief; if noticed, they may needlessly delay the proceeding.").

 4.   See TMEP § 1501.03.

 5.   See TMEP § 1501.02(c). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69960, 69968 (Oct. 7, 2016) ("The Office is amending § 2.142(b)(2) to … add [ ] that a reply brief from an appellant shall not exceed ten pages in length and that no further briefs are permitted unless authorized by the Board.").

 6.   In re Well Living Lab Inc., 122 USPQ2d 1777, 1778 n.3 (TTAB 2017) (Board refused to consider unauthorized supplemental brief filed after oral hearing), aff’d, 749 F. App’x 987 (Fed. Cir. 2018).