TMEP 715.04(b): Examining Attorney's Action When New Issue or New Evidence is Presented and Notice of Appeal Has Been Filed
October 2017 Edition of the TMEP
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715.04(b) Examining Attorney's Action When New Issue or New Evidence is Presented and Notice of Appeal Has Been Filed
If the request for reconsideration includes an amendment that presents a new issue, the examining attorney must issue a new nonfinal Office action with a six-month response clause that addresses the new issue and maintains the refusals or requirements previously made final. For example, if the applicant’s request for reconsideration contains a §2(f) claim of acquired distinctiveness in response to a final §2(e)(1) refusal, and the claim fails to place the application in condition for approval, a nonfinal action may be appropriate. See TMEP §714.05(a)(i).
Whenever the examining attorney issues a new nonfinal action after remand of an application by the Board, the Office action should explain that the applicant must respond to all refusals and/or requirements within six months of the issuance date of the action, but should not file another appeal to the Board. If the applicant’s response to the new nonfinal action does not resolve all outstanding refusals and/or requirements and put the application in condition for publication or registration on the Supplemental Register, the examining attorney must issue an "Examiner’s Subsequent Final Refusal," with the six-month response clause omitted from the action. The subsequent final action should also notify the applicant that the appeal will be resumed. When proceedings with respect to the appeal are resumed, the Board will take further appropriate action with regard to any additional ground of refusal. See Trademark Trial and Appeal Board Manual of Procedure(TBMP) §1209.01.
If the request for reconsideration does not raise a new issue, but presents new evidence that is significantly different from evidence previously submitted by the applicant, the examining attorney must issue an "Examiner’s Subsequent Final Refusal," that omits the six‑month response clause, specifies which issues are withdrawn and/or which amendments are accepted, and addresses the new evidence. The examining attorney may also introduce additional evidence directed to the new evidence submitted by the applicant. TBMP §1207.04; TMEP §715.03. For example, if an applicant files a consent agreement in response to a final refusal under §2(d) of the Trademark Act, and the examining attorney finds the consent agreement insufficient to overcome the refusal, the examining attorney must issue an "Examiner’s Subsequent Final Refusal" that discusses applicant’s consent agreement. However, the examining attorney should not issue a subsequent final refusal if the applicant merely states that it is negotiating a consent agreement. See TMEP §714.05(d). Further, because a subsequent final action issued after the filing of an appeal does not give the applicant an automatic six-month response period, the subsequent final action must also inform the applicant that the Board will be notified to resume the appeal. When proceedings with respect to the appeal are resumed, any further request for reconsideration of the application must be made via a request for remand, for which good cause must be shown. See TBMP §§1204, 1207.02.
Evidence or amendments that are merely cumulative and are not significantly different from material previously submitted do not raise a new issue that requires the examining attorney to issue a new nonfinal or subsequent final action. In re GTE Educ. Servs., 34 USPQ2d 1478, 1480 (Comm'r Pats. 1994) (finding examining attorney properly determined that no new issue had been raised in request for reconsideration of final refusal based on inadequate specimens, because the substitute specimens submitted with the request were deficient for the same reason as the original specimens).
Submission of new arguments in response to the final refusal or requirement does not raise a new issue that requires the examining attorney to issue a new nonfinal or subsequent final action.
See TMEP §§714.05–714.05(f) for further information about delineating new issues that require issuance of a nonfinal action.
In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date the IB forwards the request for extension of protection to the USPTO. See TMEP §1904.03(a).