TMEP 715.04: Request for Reconsideration Filed in Conjunction with Notice of Appeal

This is the October 2015 Edition of the TMEP

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715.04    Request for Reconsideration Filed in Conjunction with Notice of Appeal

The Board has jurisdiction over an application upon the filing of a notice of appeal. In response to a request from an applicant, the Board may remand an application to the examining attorney for consideration of specific facts or issues. 37 C.F.R. §2.142(d). See TBMP §1209 regarding remand during an ex parte appeal, TBMP §515 regarding remand to the examining attorney during an inter partes proceeding, and TMEP §1504.05 regarding requests for remand.

If an applicant files a notice of appeal with a request for reconsideration, the Trademark Trial and Appeal Board will acknowledge the appeal, suspend further proceedings with respect to the appeal, including the applicant’s time to file an appeal brief, and remand the application to the examining attorney for review of the request for reconsideration. TBMP §1204. See TBMP Chapter 1200 and TMEP §§1501–1501.07 for further information about ex parte appeals.

If, upon remand, the examining attorney determines that the outstanding refusal or requirement should be withdrawn, the examining attorney may approve the application for publication or registration. The examining attorney may issue an examiner’s amendment if he/she determines that an examiner's amendment (see TMEP §§707–707.03) will immediately put the application in condition for publication or registration. In these situations, the appeal is moot and no further action is needed after approving the application for publication or registration. If there are remaining unresolved refusals or requirements, the request for reconsideration must be denied. See TMEP §715.04(a). In some circumstances, the examining attorney may also issue an examiner’s amendment to reduce the issues on appeal. See TMEP §715.02 regarding action after issuance of a final action.