T.M.E.P. § 1504.05
Remand to Examining Attorney by Trademark Trial and Appeal Board

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

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1504.05 Remand to Examining Attorney by Trademark Trial and Appeal Board

The Trademark Trial and Appeal Board, on its own initiative or in response to a request, may remand an application to the examining attorney for consideration of specific facts. See TBMP §1209 regarding remand during an appeal, and TBMP §515 regarding remand during an inter partes proceeding. 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 request for remand for additional evidence with a showing of good cause, no evidence should be submitted to the Board following a notice of appeal. See TBMP §1207.01.

On remand, the examining attorney may address only those issues for which the application was remanded. Issues other than those for which the application was remanded may be considered only if the examining attorney requests and is granted an expanded remand. 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's attorney 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; or

(3) When the applicant and the examining attorney agree to a remand.

See TBMP §1207.02.

The examining attorney should take action on the application within thirty days of the Board's remand order.

1504.05(a) Request for Remand

If it is found necessary to issue a new requirement or new ground for refusal of registration during an ex parte appeal, the examining attorney must request the Board to remand the application so that the examining attorney may take the specified action. 37 C.F.R. 2.142(f)(6); TBMP §1209.02.

In an application under §1 or §44 of the Trademark Act, if it is found necessary to refuse registration or to make a requirement during an inter partes proceeding before the Trademark Trial and Appeal Board, the examining attorney must request the Board to remand the application so that the examining attorney may take the specified action. In a §66(a) application, the examining attorney may not request a remand during an inter partes proceeding. 37 C.F.R. 2.130.

A request for remand 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.