TMEP 1504.02: Jurisdiction of Trademark Trial and Appeal Board

October 2017 Edition of the TMEP

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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. 37 C.F.R §2.133.  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.