TMEP 1504.05: Remand to Examining Attorney by Trademark Trial and Appeal Board

This is the October 2015 Edition of the TMEP

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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requests a remand to issue a new requirement or new ground for refusal of registration, or to reinstate a previously withdrawn requirement or refusal. 37 C.F.R. §2.142(f)(6).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.