TMEP 1104.07: Amendments to Allege Use and Ex Parte Appeals

October 2017 Edition of the TMEP

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1104.07    Amendments to Allege Use and Ex Parte Appeals

An amendment to allege use may be filed together with a notice of appeal to the Trademark Trial and Appeal Board, or it may be filed while an appeal is pending.

Once the appeal is filed, the Board has jurisdiction over the application.  If the applicant files the amendment to allege use with the notice of appeal, the Board will institute the appeal, suspend action on the appeal, and remand the case to the examining attorney to examine the amendment to allege use.  When the applicant files the amendment to allege use after commencement of the appeal, the Board may, in its discretion, suspend action on the appeal and remand the application to the examining attorney for consideration of the amendment to allege use, or it may continue action on the appeal, thus deferring examination of the amendment to allege use until after disposition of the appeal.

If the Board remands the application, the examining attorney should continue examination according to standard examining procedures until final resolution of any new issues that arise in the examination of the amendment to allege use.  If all issues are resolved or made the subject of a final action, the examining attorney should refer the application back to the Board for resumption of the appeal. TBMP §1206.01.

If the examining attorney withdraws the refusal or requirement that is the subject of the appeal, he or she should advise the applicant or the applicant’s attorney by telephone or e-mail, and enter an appropriate Note to the File in the record.