1504    Jurisdiction over Application

1504.01    Jurisdiction of Examining Attorney

As a general rule, until publication of the mark in the Official Gazette, the examining attorney has jurisdiction over the application and can issue a refusal or a requirement without the approval of the Director.  See TMEP §1504.03 regarding action by the examining attorney after publication.

In addition, for applications under §1(b) of the Act, 15 U.S.C. §1051(b), the examining attorney has jurisdiction after issuance of the notice of allowance under §13(b) of the Trademark Act, 15 U.S.C. §1063(b).  37 C.F.R. §2.84(a).  See TMEP §1107 regarding amendment of a §1(b) application during the period between issuance of a notice of allowance and filing of a statement of use.

There is a time period during which an examining attorney cannot issue an action in an application because the USPTO is unable to withdraw the mark from its scheduled publication in the Official Gazette.  The USPTO is generally unable to withdraw a mark within the twenty-day period before the scheduled publication date.  See TMEP §§1505 et seq. regarding the processing of amendments filed during this period.

1504.02    Jurisdiction of Trademark Trial and Appeal Board

The Board has jurisdiction over an application upon the filing of the notice of appeal.  The Board may, in response to an examining attorney’s request, on its own initiative, or upon request from the applicant, suspend the appeal and remand the application to the examining attorney.  If an examining attorney wants to issue a new refusal or requirement during an appeal, the examining attorney must file a request for remand with the Board.  37 C.F.R. §2.142(f)(6).   See TBMP §§1209.01,  1209.02; TMEP §1504.05.  See TMEP §715.04(a) and (b) regarding the examining attorney’s action when an application is remanded after the filing of an appeal.

The Board also has jurisdiction over any application in which a notice of opposition has been filed or a concurrent use proceeding has commenced.  The Board will approve or disapprove any amendments proposed during an inter partes proceeding.   See37 C.F.R. §2.133; TBMP §§514 et seq.; TMEP §1505.01(f).

In an application under §1 or §44 of the Act, if an examining attorney wants to issue a new refusal or requirement during an inter partes proceeding, the examining attorney must request that the Board suspend the proceedings and remand the application for further examination.  37 C.F.R. §2.130; TBMP §515.   In a §66(a) application, the examining attorney may not request a remand during an opposition.   TBMP §515; TMEP §1504.05.

A request for an extension of time to file an opposition does not vest jurisdiction in the Board.  In this situation, any request by the examining attorney for jurisdiction should be addressed to the Director.   See TMEP §§1504.03, 1504.04(a).

The Board has no jurisdiction over a pending application that has been suspended pending disposition of the applicant’s petition to cancel a registration cited under §2(d) of the Trademark Act ( see TMEP §716.02(a)), or disposition of the applicant’s opposition to an earlier-filed application cited as a potential bar to registration under §2(d) ( see TMEP §§716.02(c), 1208.02(c)).  In either situation, if the applicant wants to amend its pending application, or submit a consent agreement, the applicant must file the amendment or the consent agreement with the examining attorney, not with the Board.  See TBMP §605.03(c)  regarding filing an amendment or consent agreement in a pending application owned by the plaintiff pursuant to a settlement agreement between the parties in a Board proceeding.

1504.03    Action by Examining Attorney After Publication

If it is found necessary (e.g., through internal quality review), for an examining attorney to refuse registration or to make a requirement after a mark has been published for opposition, jurisdiction over the application must be restored to the examining attorney.

With the exception of applications that are the subject of inter partes proceedings before the Board ( see TMEP §1504.05), the examining attorney can telephone an applicant and issue an examiner’s amendment without restoration of jurisdiction.  However, if the examining attorney issues an Office action, even if merely asking for additional information, the examining attorney must request jurisdiction, because the request for additional information is a "requirement."

If it is necessary to issue an Office action after publication, the examining attorney must check the status of the application to determine whether the Board has received a notice of opposition.  If a request for an extension of time to file an opposition has been filed, the examining attorney should prepare a request to restore jurisdiction, directed to the Director.   See TMEP §1504.04(a).  If a notice of opposition has been filed, jurisdiction is with the Board, and the examining attorney should file a request for remand, directed to the Board.   See TMEP §1504.05.

When it is necessary to issue an Office action after publication in a §1(a) application, but it is too late to withdraw the application from issuance of a registration, the examining attorney should bring the matter to the attention of the Administrator for Trademark Policy and Procedure. After registration, the Deputy Commissioner for Trademark Examination Policy may restore the application to pendency and refer it to the examining attorney for appropriate action.

See TMEP §§1505 et seq. regarding amendments proposed by applicants after publication.

1504.04    Restoration of Jurisdiction to Examining Attorney by Director

If it is necessary to refuse registration or to make a requirement after publication and prior to the filing of a notice of opposition or issuance of a notice of allowance, the examining attorney must request that the Director restore jurisdiction so that the examining attorney may take the specified action on the application.  See TMEP §1106.02 regarding action by the examining attorney after issuance of a notice of allowance.

Normally, the Director will restore jurisdiction to the examining attorney only if there has been a clear error ( see TMEP §706.01)  After publication of a mark, a restoration of jurisdiction to the examining attorney is possible only in the case of an application for registration on the Principal Register.  A mark found registrable on the Supplemental Register is not published for opposition but is published only when it has registered.

The examining attorney does not have to request jurisdiction to act in a §1(b) application after issuance of the notice of allowance.  If, after the notice of allowance issues, the examining attorney determines that he or she must issue a new refusal or requirement, the examining attorney must request cancellation of the notice of allowance.  However, the examining attorney should not make a refusal or requirement that could or should have been made during initial examination of the application unless the initial failure to make the refusal or requirement was a clear error, and must consult with the managing attorney or senior attorney before taking the action.  See TMEP §706.01 regarding "clear error" and TMEP §§1106.02 and 1106.03 regarding action by the examining attorney after issuance of the notice of allowance and cancellation of the notice of allowance.

The provisions with respect to requesting jurisdiction over published §66(a) applications are similar to those for applications under §§1(a) and 44 of the Trademark Act.  37 C.F.R. §2.84.  However, when deciding whether to grant requests for jurisdiction of §66(a) applications, the Director must consider the time limits for notifying the IB of a refusal of a §66(a) application, set forth in Article 5(2) of the Madrid Protocol and §68(c) of the Trademark Act, 15 U.S.C. §1141h(c).    See TMEP §1904.03(a) for further information.

1504.04(a)    Request for Jurisdiction

The examining attorney’s request for jurisdiction should be in the form of a memorandum to the Director, accompanied by the Office action that the examining attorney proposes to send to the applicant.  The request should be signed by the examining attorney, the managing attorney, and the Administrator for Trademark Policy and Procedure.

In the Office action, the examining attorney should apologize for the untimeliness of the action because, at this point, except for possible opposition issues, the applicant is expecting issuance of a registration or notice of allowance.  The action should provide a detailed explanation of the basis for the refusal or requirement, citing appropriate case law, even when addressing basic and well-established propositions.

1504.05    Remand to Examining Attorney by Trademark Trial and Appeal Board

The Board, on its own initiative or in response to a request, may remand an application to the examining attorney for consideration of specific facts or issues. Upon receipt of a remand from the Board, the examining attorney may not make a requirement or refuse registration on a ground not specified in the Board’s remand letter or submit evidence relating to a requirement or ground not specified in the Board’s remand letter. In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1136 (TTAB 2015) . When the Board initiates a remand, the examining attorney must take action upon the remanded issue within thirty days of the Board’s remand order. 37 C.F.R. §2.142(f)(1); TBMP §1209.01.

A request for remand made by the examining attorney should succinctly explain the specific reasons why remand is requested. That is, the request should be a brief statement of the reason for the request and an explanation of the action the examining attorney intends to take. On remand, the examining attorney may address only those issues for which the application was remanded. If the examining attorney identifies additional issues other than those for which the application was remanded, the examining attorney must request an expanded remand to consider the additional issues. TBMP §1209.02.

The following are examples of circumstances when the Board may remand an application to the examining attorney during an ex parte appeal:

  • (1) When evidence that the applicant or the examining attorney wants to include in the record was not previously available (e.g., a recent article, newly issued registration, or recent decision).
  • (2) When a new attorney for the applicant, or a new examining attorney, wants to supplement the record made by his or her predecessor.
  • (3) When the applicant and the examining attorney agree to a remand.
  • (4) When the examining attorney requests a remand to issue a new requirement or new ground for refusal of registration, or to reinstate a previously withdrawn requirement or refusal. 37 C.F.R. §2.142(f)(6). Prior to submission of such a request for remand, however, the examining attorney must bring the matter to the attention of the managing and senior attorneys, who must then bring it to the attention of the Administrator for Trademark Policy and Procedure in the Office of the Deputy Commissioner for Trademark Examination Policy ("Administrator").  See TBMP §1209.02  regarding an examining attorney’s request for remand.

See also TBMP §1207.02.

A request for remand by the examining attorney to submit additional evidence must include a showing of good cause (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. See TBMP §1207.02.  Absent a remand, no evidence should be submitted to the Board following a notice of appeal, except with or in response to an applicant’s timely filed request for reconsideration. 37 C.F.R. §2.142(d); TBMP §1207.01.  See TBMP §1207.04  and TMEP §715.03 regarding the submission of evidence with or in response to a request for reconsideration.

If the examining attorney finds it necessary to refuse registration or to make a requirement during an inter partes proceeding involving an application under §1 or §44 of the Trademark Act, the examining attorney must request the Board to remand the application. 37 C.F.R. §2.130. However, the examining attorney must bring the matter to the attention of the managing and senior attorneys, who must then bring it to the attention of the Administrator prior to submission of such a request for remand. In a §66(a) application, the examining attorney may not request a remand during an inter partes proceeding.

See TBMP §§1209  et seq. regarding remand during an appeal, and TBMP §515  regarding remand during an inter partes proceeding.