715.04 Request for Reconsideration Filed in Conjunction With Notice of Appeal
The Board has jurisdiction over an application upon the filing of the notice of appeal. In response to a request from an applicant, the Board may remand an application to the examining attorney for consideration of specific facts or issues. 37 C.F.R. §2.142(d). See TBMP §1209 regarding remand during an ex parte appeal, TBMP §515 regarding remand to the examining attorney during an inter partes proceeding, and TMEP §1504.05 regarding requests for remand.
If an applicant files a notice of appeal with a request for reconsideration, the Trademark Trial and Appeal Board will acknowledge the appeal, suspend further proceedings with respect to the appeal, including the applicant’s time to file an appeal brief, and remand the application to the examining attorney for review of the request for reconsideration. TBMP §1204. See TBMP Chapter 1200 and TMEP §§1501–1501.07 for further information about ex parte appeals.
If, upon remand, the examining attorney determines that the outstanding refusal or requirement should be withdrawn, the examining attorney may approve the application for publication or registration. In this situation, the appeal is moot. If there are remaining unresolved refusals, the request for reconsideration should be denied. See TMEP §715.04(a).
715.04(a) Examining Attorney's Action When No New Issue is Presented in Request for Reconsideration and Notice of Appeal Has Been Filed
If the request for reconsideration does not overcome or resolve the issues on appeal, and no new issue is presented therein, the examining attorney must issue a "Request for Reconsideration Denied – Return to TTAB" (or, if appropriate, "SU - Request for Reconsideration Denied - Return to TTAB") that: (1) acknowledges the request for reconsideration; (2) indicates that it is denied and explains why it does not overcome all refusals or satisfy all requirements; (3) identifies the final refusal(s) and/or requirements that are maintained and any that are satisfied or withdrawn; and (4) advises the applicant that the Board will be notified to resume the appeal. An Office action denying reconsideration of the final action must not include a six-month response clause.
If, in a request for reconsideration that does not overcome or resolve the issues on appeal, the applicant also withdraws a prior amendment submitted in response to a refusal or requirement made by the examining attorney in an Office action (e.g., an amendment to the Supplemental Register or disclaimer), this does not raise a new issue.
715.04(b) Examining Attorney's Action When New Issue or New Evidence is Presented and Notice of Appeal Has Been Filed
If the request for reconsideration includes an amendment that presents a new issue, the examining attorney must issue a new nonfinal Office action with a six-month response clause that addresses the new issue and maintains the refusals or requirements previously made final. For example, if the applicant’s request for reconsideration contains a §2(f) claim of acquired distinctiveness in response to a final §2(e)(1) refusal, and the claim fails to place the application in condition for approval, a nonfinal action may be appropriate. See TMEP §714.05(a)(i).
Whenever the examining attorney issues a new nonfinal action after remand of an application by the Board, the Office action should explain that the applicant must respond to all refusals and/or requirements within six months of the issuance date of the action, but should not file another appeal to the Board. If the applicant’s response to the new nonfinal action does not resolve all outstanding refusals and/or requirements and put the application in condition for publication or registration on the Supplemental Register, the examining attorney must issue an "Examiner’s Subsequent Final Refusal," with the six-month response clause omitted from the action. The subsequent final action should also notify the applicant that the appeal will be resumed. When proceedings with respect to the appeal are resumed, the Board will take further appropriate action with regard to any additional ground of refusal. See TBMP §1209.01.
If the request for reconsideration does not raise a new issue, but presents new evidence that is significantly different from evidence previously submitted by the applicant, the examining attorney must issue an "Examiner’s Subsequent Final Refusal," with a six‑month response clause. This provides the applicant with the opportunity to respond before the appeal. For example, if an applicant files a consent agreement in response to a final refusal under §2(d) of the Trademark Act, and the examining attorney finds the consent agreement insufficient to overcome the refusal, the examining attorney must issue an "Examiner’s Subsequent Final Refusal" that discusses applicant’s consent agreement. However, the examining attorney should not issue a subsequent final refusal if the applicant merely states that it is negotiating a consent agreement. See TMEP §714.05(d). Any response to the subsequent final action will be treated as a new request for reconsideration and processed according to the guidelines set forth in TMEP §§715.04–715.04(b).
Evidence or amendments that are merely cumulative and are not significantly different from material previously submitted do not raise a new issue that requires the examining attorney to issue a new nonfinal or subsequent final action. In re GTE Educ. Servs., 34 USPQ2d 1478, 1480 (Comm'r Pats. 1994) (finding examining attorney properly determined that no new issue had been raised in request for reconsideration of final refusal based on inadequate specimens, because the substitute specimens submitted with the request were deficient for the same reason as the original specimens).
Submission of new arguments in response to the final refusal or requirement does not raise a new issue that requires the examining attorney to issue a new nonfinal or subsequent final action.
See TMEP §§714.05–714.05(f) for further information about delineating new issues that require issuance of a nonfinal action.
In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date the IB forwards the request for extension of protection to the USPTO. See TMEP §1904.03(a).