1501.02(b) Examining Attorney’s Appeal Brief
After the applicant’s brief has been filed, the Board will send a notice to the examining attorney. The examining attorney has sixty days from the date of the Board’s notice to file a responsive brief with the Board and issue a copy to the applicant. 37 C.F.R. §2.142(b)(1); see TBMP §1203.02(b).
The examining attorney’s appeal brief should be concise and contain a complete statement of reasons for the refusal(s) or requirement(s) and supporting facts.
Examining attorneys should use the format shown in Appendix A as a model when preparing an appeal brief. The purpose of this format is to promote consistency and to provide content guidelines. The substance of the appeal brief is a matter of individual discretion.
The brief may not exceed twenty-five double-spaced pages in length. 37 C.F.R. §2.142(b)(2); TBMP §1203.01; see In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (Board refused to consider applicant’s 29-page brief). When referring to the record, the examining attorney should cite to the electronic record for the application, currently the Trademark Status and Document Retrieval database (TSDR). The citation format should be by date, name of the paper under which the evidence was submitted, and the page number in the electronic record, for example, November 4, 2013 Office Action, TSDR p. 2. Where appropriate, reference to the TTABVUE entry and page number should also be used, for example, 1 TTABVUE 2. See TBMP §1203.01.
The record in the application should be complete prior to appeal. 37 C.F.R. §2.142(d); TMEP §710.01(c); see In re ADCO Indus.-Techs., L.P., 2020 USPQ2d 53786, at *2 (TTAB 2020). Examining attorneys should not resubmit with the brief any evidence that is already in the application record. In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *1 (TTAB 2019) ("multiple submissions of the same evidence can cause confusion in reviewing the record and unnecessary delay in issuing a final decision"). Any exhibits attached to a brief that were not made of record during examination are untimely, and generally will not be considered. See In re tapio GmbH, 2020 USPQ2d 11387, at *3-4 (TTAB 2020); In re Medline Indus., Inc., 2020 USPQ2d 10237, at *2 (TTAB 2020) (citing In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019)). However, if the applicant does submit such evidence, the examining attorney should specifically object to such evidence if he or she does not want it to be considered. If the examining attorney does not object to untimely evidence, and discusses it in his or her brief or elsewhere in the record, the Board may treat it as of record. TBMP §1207.03; TMEP §710.01(c); see In re City of Hous., 101 USPQ2d 1534, 1536 (TTAB 2012) (citing In re Broyhill Furniture Indus., Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001)), aff’d, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013).
If, during the preparation of the appeal brief, the examining attorney determines that jurisdiction should be restored for further examination (e.g., to make a new refusal, to correct informalities, to suspend, or good cause exists to introduce additional evidence), the examining attorney should submit a request for remand instead of an appeal brief. See TMEP §1504.05. If the Board grants the examining attorney’s request, the Board will stay further proceedings in connection with the appeal. If the Board denies the request, it will reset the time for submission of the examining attorney’s appeal brief.