               CHAPTER 1200  EX PARTE APPEALS


1201  Propriety of Appeal

1202  Filing an Appeal

1203  Appeal Briefs

1204  Effect of Request for Reconsideration of Final Action

1205  Amendment of Application During Appeal

1206  Amendment to Allege Use; Statement of Use

1207  Submission of Evidence During Appeal

1208  Treatment of Evidence

1209  Remand for New Refusal or New Requirement

1210  Approval for Publication During Appeal

1211  Abandonment During Appeal

1212  Cancellation or Assignment of Cited Registration

1213  Suspension of Appeal

1214  Consolidation

1215  Alternative Positions

1216  Oral Hearing

1217  Final Decision

1218  Reopening (Amendment, etc., After Final Decision)

1219  Review of Final Decision

1201  Propriety of Appeal



1201.01  Readiness of Case for Appeal

15 U.S.C. 1070.  An appeal may be taken to the Trademark
Trial and Appeal Board from any final decision of the
examiner in charge of the registration of marks upon the
payment of the prescribed fee.

37 CFR 2.63(b) After reexamination the applicant may
respond by filing a timely petition to the Commissioner for
relief from a formal requirement if: (1) The requirement is
repeated, but the examiner's action is not made final, and
the subject matter of the requirement is appropriate for
petition to the Commissioner (see 2.146(b)); or (2) the
examiner's action is made final and such action is limited
to subject matter appropriate for petition to the
Commissioner.  If the petition is denied, the applicant
shall have until six months from the date of the Office
action which repeated the requirement or made it final or
thirty days from the date of the decision on the petition,
whichever date is later, to comply with the requirement.  A
formal requirement which is the subject of a petition
decided by the Commissioner may not subsequently be the
subject of an appeal to the Trademark Trial and Appeal
Board.

37 CFR 2.64(a) On the first or any subsequent reexamination
or reconsideration the refusal of the registration or the
insistence upon a requirement may be stated to be final,
whereupon applicant's response is limited to an appeal, or
to a compliance with any requirement, or to a petition to
the Commissioner if permitted by 2.63(b).

37 CFR 2.141 Ex parte appeals from the Examiner of
Trademarks.
Every applicant for the registration of a mark may, upon
final refusal by the Examiner of Trademarks, appeal to the
Trademark Trial and Appeal Board upon payment of the
prescribed fee for each class in the application for which
an appeal is taken.  An appeal which includes insufficient
fees to cover all classes in the application should specify
the particular class or classes in which an appeal is taken.
A second refusal on the same grounds may be considered as
final by the applicant for purpose of appeal.

37 CFR 2.146(b) Questions of substance arising during the
ex parte prosecution of applications, including, but not
limited to, questions arising under sections 2, 3, 4, 5, 6
and 23 of the Act of 1946, are not considered to be
appropriate subject matter for petitions to the
Commissioner.

On the first or any subsequent reexamination or
reconsideration of an application for registration of a
trademark, the Examining Attorney may state that the refusal
of the registration or the insistence upon a requirement is
final.  See Section 12(b) of the Act; 37 CFR 2.64(a); and
TMEP 1105.03.  When the Examining Attorney states that his
or her action is final, the applicant's response is limited
to an appeal to the Board, or to a compliance with any
requirement, or to a petition to the Commissioner if a
petition is permitted by 37 CFR 2.63(b).  See 37 CFR
2.64(a), and TMEP 1105.04(g).  See also Section 20 of the
Act, 15 U.S.C. 1070, and TMEP 1501.  An applicant may
consider a second refusal on the same ground(s), or a
repeated requirement, as final for purposes of appeal.  See
37 CFR 2.141; TMEP 1502; In re Hechinger Investment Co. of
Delaware Inc., 24 USPQ2d 1053 (TTAB 1991); and In re
Citibank, N.A., 225 USPQ 612 (TTAB 1985).

Thus, an application is ripe for appeal when the Examining
Attorney issues a final action, and an appeal may also be
taken from a second refusal on the same ground(s) or from a
repeated requirement.  See Section 20 of the Act; 37 CFR
2.64(a) and 2.141; TMEP 1501; In re Hechinger Investment
Co. of Delaware Inc., 24 USPQ2d 1053 (TTAB 1991); and In re
Citibank, N.A., 225 USPQ 612 (TTAB 1985).  But see TBMP
1201.02 and 1201.03.



1201.02  Premature Final

15 U.S.C. 1062(b) If the applicant is found not entitled to
registration, the examiner shall advise the applicant
thereof and of the reason therefor.  The applicant shall
have a period of six months in which to reply or amend his
application, which shall then be reexamined.  This procedure
may be repeated until (1) the examiner finally refuses
registration of the mark or (2) the applicant fails for a
period of six months to reply or amend or appeal, whereupon
the application shall be deemed to have been abandoned,
unless it can be shown to the satisfaction of the
Commissioner that the delay in responding was unavoidable,
whereupon such time may be extended.

A refusal of registration or an insistence upon a
requirement may be made final by the Trademark Examining
Attorney only on the first or any subsequent reexamination
or reconsideration of an application; a refusal or
requirement may not be made final in a first action.  See
Section 12(b) of the Act, 15 U.S.C. 1062(b); 37 CFR
2.64(a); and TMEP 1105.04(a).

An action should not be stated to be final until the
applicant has had at least one opportunity to reply to each
ground of refusal, and each requirement, asserted by the
Examining Attorney.  See TMEP 1105.04(a).  See also In re
Abolio y Rubio S.A.C.I. y G., 24 USPQ2d 1152 (TTAB 1992),
and In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986).
Moreover, a final action should not be issued until all
matters but for those which are to be the subject of the
final action have been resolved, and a clear issue has been
developed between the Examining Attorney and the applicant
with respect to each remaining ground of refusal or
requirement.  See In re Variable Speech Control Co., 209
USPQ 431 (TTAB 1980), and TMEP 1105.04(c).  See also In re
Moore Business Forms Inc., 24 USPQ2d 1638 (TTAB 1992)
(ground for refusal first raised in Examining Attorney's
appeal brief given no consideration).  As stated in TMEP
1105.04(c),

     No requirement may be made final, even if it is a
repeated
     requirement, unless the entire action is made final.
Thus, if
     the examining attorney makes a new refusal or
requirement
     in a subsequent action, a repeated refusal or
requirement may
     not be made final.

If an applicant believes that a refusal to register, or the
insistence upon a requirement, has been made final
prematurely, applicant may raise the matter by request to
the Examining Attorney for reconsideration and by petition
to the Commissioner.  See TMEP 1105.04(e).

The prematureness of a final action is not a ground for
appeal to the Board.  See TMEP 1105.04(e).  However, if it
comes to the attention of the Board, when an appeal has been
filed from a final refusal to register or a final
requirement, that the final action was issued prematurely,
the Board normally will suspend action with respect to the
appeal and remand the case to the Examining Attorney with
appropriate instructions.  The instructions in the remand
letter generally are to the effect that the finality of the
Examining Attorney's action should be withdrawn; that a new
nonfinal action should be issued; that if the Examining
Attorney finds, upon consideration of applicant's response
to the new nonfinal action, that the application is in
condition for publication (or for registration, if the
application seeks registration on the Supplemental
Register), the appeal will be moot; and that if the
Examining Attorney ultimately issues a new final action, no
six-month response clause should be included therein, and
the case should be returned to the Board for resumption of
action with respect to the appeal.  See In re Pierce Foods
Corp., 230 USPQ 307 (TTAB 1986), and In re Variable Speech
Control Co., 209 USPQ 431 (TTAB 1980) (NOTE:  a possible
alternative approach, suggested in the latter case for use
in situations where informalities which are not the subject
of the appeal have not been resolved, of including in the
Board's decision on the appealed issues a recommendation
that no registration be granted to applicant until the
informalities have been resolved, is no longer appropriate
because (1) present 37 CFR 2.142(c), adopted thereafter,
provides that all requirements made by the examiner and not
the subject of appeal shall be complied with prior to the
filing of an appeal, and (2) it is now settled that once the
Board decides an appeal, the Examining Attorney is without
jurisdiction to take further action in the case, nor may the
Board, in its decision on the appealed issues, remand the
case for further action on a matter not before it in the
appeal--see In re Hamilton Bank, 222 USPQ 174 (TTAB 1984);
In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982); and
TBMP 1217).



1201.03  Premature Appeal

An application is ripe for appeal when the Trademark
Examining Attorney issues a final action, and an appeal may
also be taken from a second refusal on the same ground(s) or
a repeated requirement; an appeal from a first refusal or
requirement is premature.  See TBMP 1201.01, and
authorities cited therein.

The Board has no jurisdiction to entertain a premature
appeal.  Thus, if an appeal is filed prematurely, the Board,
in a written action, will notify applicant that the appeal
was filed prematurely, and remand the application to the
Trademark Examining Attorney for further appropriate action.
In the event that a final action, or a second refusal on the
same ground(s) or a repeated requirement, is ultimately
issued by the Examining Attorney, and applicant wishes to
appeal, applicant should file a new notice of appeal, and
request that the appeal fee previously submitted be applied
to the new appeal.  If, on the other hand, no new appeal is
ever filed in the case, applicant may request that the
appeal fee submitted with the premature appeal be refunded.



1201.04  Compliance With Requirements Not Subject of Appeal

37 CFR 2.142(c) All requirements made by the examiner and
not the subject of appeal shall be complied with prior to
the filing of an appeal.

Prior to the filing of an appeal, the applicant should
comply with all requirements which have been made by the
Trademark Examining Attorney, but which are not the subject
of appeal.  If an applicant which files an appeal to the
Board fails to comply with a requirement not the subject of
appeal, the refusal to register may be affirmed by the Board
as to that requirement, regardless of the disposition made
by the Board of the issue or issues which are the subject of
appeal.  See 37 CFR 2.142(c); In re Babies Beat Inc., 13
USPQ2d 1729 (TTAB 1990); In re Cord Crafts Inc., 11 USPQ2d
1157 (TTAB 1989); In re Riddle, 225 USPQ 630 (TTAB 1985); In
re Big Daddy's Lounges, Inc., 200 USPQ 371 (TTAB 1978); and
Gary D. Krugman, TIPS FROM THE TTAB:  The Amended Trademark
Rules of Practice and Their Effect on Ex Parte Appeals, 74
Trademark Rep. 341 (1984).  Cf. In re Walker-Home Petroleum,
Inc., 229 USPQ 773 (TTAB 1985), and In re Citibank, N.A.,
225 USPQ 612 (TTAB 1985).



1201.05  Appeal Versus Petition

37 CFR 2.63(b) After reexamination the applicant may
respond by filing a timely petition to the Commissioner for
relief from a formal requirement if: (1) The requirement is
repeated, but the examiner's action is not made final, and
the subject matter of the requirement is appropriate for
petition to the Commissioner (see 2.146(b)); or (2) the
examiner's action is made final and such action is limited
to subject matter appropriate for petition to the
Commissioner.  If the petition is denied, the applicant
shall have until six months from the date of the Office
action which repeated the requirement or made it final or
thirty days from the date of the decision on the petition,
whichever date is later, to comply with the requirement.  A
formal requirement which is the subject of a petition
decided by the Commissioner may not subsequently be the
subject of an appeal to the Trademark Trial and Appeal
Board.

37 CFR 2.64(a) On the first or any subsequent reexamination
or reconsideration the refusal of the registration or the
insistence upon a requirement may be stated to be final,
whereupon applicant's response is limited to an appeal, or
to a compliance with any requirement, or to a petition to
the Commissioner if permitted by 2.63(b).

37 CFR 2.146(a) Petition may be taken to the Commissioner:
(1) From any repeated or final formal requirement of the
examiner in the ex parte prosecution of an application if
permitted by 2.63(b); (2) in any case for which the Act of
1946, or Title 35 of the United States Code, or this Part of
Title 37 of the Code of Federal Regulations specifies that
the matter is to be determined directly or reviewed by the
Commissioner; (3) to invoke the supervisory authority of the
Commissioner in appropriate circumstances; (4) in any case
not specifically defined and provided for by this Part of
Title 37 of the Code of Federal Regulations; (5) in an
extraordinary situation, when justice requires and no other
party is injured thereby, to request a suspension or waiver
of any requirement of the rules not being a requirement of
the Act of 1946.

(b) Questions of substance arising during the ex parte
prosecution of applications, including, but not limited to,
questions arising under sections 2, 3, 4, 5, 6 and 23 of the
Act of 1946, are not considered to be appropriate subject
matter for petitions to the Commissioner.

An action taken on a matter arising during the ex parte
prosecution of an application for registration may,
depending on the nature of the matter and the posture of the
case, be reviewable only by appeal to the Board, or only by
petition to the Commissioner, or by either appeal or
petition.  The following discussion contains general
guidelines for determining whether a matter is appealable or
petitionable.

An appeal to the Board may be taken from any final action,
second refusal to register on the same ground(s), or
repeated requirement issued by the Trademark Examining
Attorney during the ex parte prosecution of an application
for registration, whether the matter involved in the
Examining Attorney's action is substantive or procedural in
nature, except that a formal requirement which was the
subject of a petition decided by the Commissioner may not
thereafter be the subject of an appeal to the Board.  See
Section 20 of the Act, 15 U.S.C. 1070; 37 CFR 2.63(b),
2.64(a), and 2.141; In re Pony International Inc., 1 USPQ2d
1076 (Comm'r 1986); and TBMP 1201.01.

Substantive questions arising during the ex parte
prosecution of an application, including, but not limited
to, issues arising under Sections 2, 3, 4, 5, 6, and 23 of
the Act, 15 U.S.C. 1052, 1053, 1054, 1055, 1056, and 1091,
are considered to be appropriate subject matter for appeal
to the Board (after issuance of a final action, or a second
refusal on the same ground(s)--see TBMP 1201.01), but not
for petition to the Commissioner.  See 37 CFR 2.146(b); In
re Mission Pharmacal Co., Inc., 33 USPQ2d 1060 (Comm'r
1993); In re Direct Access Communications (M.C.G.) Inc., 30
USPQ2d 1393 (Comm'r 1993); In re Tetrafluor Inc., 17 USPQ2d
1160 (Comm'r 1990); In re Hart, 199 USPQ 585 (Comm'r 1978);
and In re Stenographic Machines, Inc., 199 USPQ 313 (Comm'r
1978).

Nevertheless, a wide variety of matters are petitionable.
Petition may be taken to the Commissioner in the following
situations:
     (1) From any repeated or final formal requirement made
by the Trademark Examining Attorney, during the ex parte
prosecution of an application, if (i) the requirement is
repeated, but the Examining Attorney's action is not made
final, and the subject matter of the requirement is
appropriate for petition to the Commissioner (see, in this
regard, 37 CFR 2.146(b), and the preceding paragraph), or
(ii) the Examining Attorney's action is made final and is
limited to subject matter appropriate for petition to the
Commissioner.  See 37 CFR 2.63(b) and 2.146(a)(1).  If the
petition is denied, the applicant will have six months from
the date of the Office action which repeated the requirement
or made it final, or 30 days from the date of the
Commissioner's decision on the petition, whichever is later,
to comply with the requirement.  A formal requirement which
was the subject of a petition to the Commissioner may not
thereafter be the subject of an appeal to the Board.  See 37
CFR 2.63(b).  See also In re Pony International Inc., 1
USPQ2d 1076 (Comm'r 1986).
     (2) In any case for which the Act of 1946, or Title 35
of the United States Code, or Part 2 of 37 CFR (i.e., the
rules of practice in trademark cases) specifies that the
matter is to be determined directly or reviewed by the
Commissioner.  See 37 CFR 2.146(a)(2).  Insofar as
applications for registration are concerned, this includes
petitions to make special (i.e., to advance an application
out of its normal order of examination), petitions to revive
an abandoned application, petitions to record a document in
the Assignment Branch of the PTO, and petitions requesting
that an interference be declared.  See TMEP 1702 and 1703.
     (3) To invoke the supervisory authority of the
Commissioner in appropriate circumstances.  See 37 CFR
2.146(a)(3).  Under this provision, an applicant generally
may petition to the Commissioner for relief from, inter
alia, a nonfinal refusal to register based on a procedural
matter, i.e., an alleged failure of the applicant to comply
with a technical requirement of the rules of practice
governing trademark cases, or an alleged failure of the
Examining Attorney to act in accordance with those rules
and/or proper practice thereunder.  See, for example, In re
Mission Pharmacal Co., Inc., 33 USPQ2d 1060 (Comm'r 1993);
In re Direct Access Communications (M.C.G.) Inc., 30 USPQ2d
1393 (Comm'r 1993); In re Tetrafluor Inc., 17 USPQ2d 1160
(Comm'r 1990); In re Hart, 199 USPQ 585 (Comm'r 1978); and
In re Stenographic Machines, Inc., 199 USPQ 313 (Comm'r
1978); and TMEP 1702 and 1703.  For further information
concerning the matters which are petitionable under this
provision, see TMEP 1702 and 1703.
     (4) In any case not specifically defined and provided
for by Part 2 of 37 CFR (i.e., the rules of practice in
trademark cases).  See 37 CFR 2.146(a)(4).  Under this
provision, an applicant may petition the Commissioner with
respect to any situation, not covered by the rules, from
which applicant seeks relief.  See TMEP 1702.
     (5) In an extraordinary situation, when justice
requires and no other party is injured thereby, to request a
suspension or waiver of any requirement of the rules which
is not also a requirement of the Act of 1946.  See 37 CFR
2.146(a)(5).  For information concerning the meaning of the
words "extraordinary situation," see TMEP 1702.

However, petition may not be taken to the Commissioner on a
question of substance arising during the ex parte
prosecution of an application; nor may petition be taken
from a final action of the Examining Attorney, except that
an applicant may petition for relief from an action making a
formal requirement final if the action is limited to subject
matter appropriate for petition to the Commissioner (i.e.,
involves questions such as the applicant's alleged failure
to comply with one or more of the technical requirements of
the rules of practice in trademark cases, rather than a
question of substance).  See 37 CFR 2.63(b), 2.64(a),
2.146(a), and 2.146(b); In re Tetrafluor Inc., 17 USPQ2d
1160 (Comm'r 1990); In re Hart, 199 USPQ 585 (Comm'r 1978);
In re Stenographic Machines, Inc., 199 USPQ 313 (Comm'r
1978); and TMEP 1702.

For examples of matters which are appealable and those which
are petitionable, see TMEP 1501.01.



1202  Filing an Appeal

1202.01  In General

15 U.S.C. 1070.  An appeal may be taken to the Trademark
Trial and Appeal Board from any final decision of the
examiner in charge of the registration of marks upon the
payment of the prescribed fee.

37 CFR 2.141 Ex parte appeals from the Examiner of
Trademarks.
Every applicant for the registration of a mark may, upon
final refusal by the Examiner of Trademarks, appeal to the
Trademark Trial and Appeal Board upon payment of the
prescribed fee for each class in the application for which
an appeal is taken.  An appeal which includes insufficient
fees to cover all classes in the application should specify
the particular class or classes in which an appeal is taken.
A second refusal on the same grounds may be considered as
final by the applicant for purpose of appeal.

37 CFR 2.142(a) Any appeal filed under the provisions of
2.141 must be filed within six months from the date of
final refusal or the date of the action from which the
appeal is taken.  An appeal is taken by filing a notice of
appeal and paying the appeal fee.

An appeal to the Board from a Trademark Examining Attorney's
final action, second refusal on the same ground(s), or
repeated requirement, is taken by timely (see TBMP 1202.02)
filing in the PTO both a notice of appeal and the prescribed
appeal fee (see 37 CFR 2.6(a)(18) and TBMP 1202.04).  See
Section 20 of the Act, 15 U.S.C. 1070; 37 CFR 2.141 and
2.142(a); and TMEP 1501.  If the notice of appeal and fee
are not timely filed, the application will be deemed to have
been abandoned, and the appeal cannot be entertained by the
Board unless applicant successfully petitions the
Commissioner to revive the application.  See Section 12(b)
of the Act, 15 U.S.C. 1062; 37 CFR 2.64(a), 2.65(a), and
2.66; and TMEP 1112.02, 1112.05(a), and 1112.05(b) et seq.

All requirements which have been made by the Trademark
Examining Attorney, but which are not to be the subject of
appeal, should be complied with prior to the filing of an
appeal.  See 37 CFR 2.142(c).  If an applicant which files
an appeal to the Board  fails to comply with such a
requirement, the refusal to register may be affirmed by the
Board for failure to comply with that requirement,
regardless of the disposition made by the Board of the issue
or issues which are the subject of appeal.  See TBMP
1201.04, and authorities cited therein.



1202.02  Time for Appeal

An appeal to the Board may be taken from any final action,
second refusal on the same ground(s), or repeated
requirement issued by the Trademark Examining Attorney
during the ex parte prosecution of an application for
registration, except that a formal requirement which was the
subject of a petition decided by the Commissioner may not
thereafter be the subject of an appeal to the Board.  See
TBMP 1201.01 and 1201.05, and authorities cited therein.

An appeal to the Board must be filed within six months from
the date of the action from which the appeal is taken.  See
Section 12(b) of the Act, 15 U.S.C. 1062, and 37 CFR
2.142(a).  If a notice of appeal is timely filed, but the
appeal fee is not, the appeal will be untimely, and the
application will be deemed to have been abandoned.  See TBMP
1202.01, and authorities cited therein.

The notice of appeal to the Board (unlike other
correspondence to be filed with the Board) may be filed by
facsimile transmission, as well as by any of the ordinary
methods for filing correspondence intended for the Board.
See 37 CFR 1.6(d)(8), and TBMP 107.  The certificate of
mailing and certificate of transmission procedures described
in 37 CFR 1.8, and the certificate of "Express Mail"
procedure described in 37 CFR 1.10, are available for the
filing of an appeal to the Board.  See 37 CFR 1.8(a) and
1.10(a), and TBMP 110 and 111.

During the period between issuance of a final action and
expiration of the time for filing an appeal therefrom, an
applicant may file a request for reconsideration, with or
without an amendment and/or new evidence.  See 37 CFR
2.64(b).  See also TMEP 1105.04(f) and 1110, and Gary D.
Krugman, TIPS FROM THE TTAB:  The Amended Trademark Rules of
Practice and Their Effect on Ex Parte Appeals, 74 Trademark
Rep. 341 (1984).  However, the filing of a request for
reconsideration will not serve to stay the time for filing
an appeal (or for petitioning the Commissioner, if
appropriate--see 37 CFR 2.63(b) and 2.64(a), and TBMP
1201.05).  See 37 CFR 2.64(b), and TMEP 1110.  If, upon
the Examining Attorney's consideration of the request, all
refusals and requirements are not withdrawn, and no appeal
or other proper response (see 37 CFR 2.64(a), and TMEP
1105.04(g)) to the final refusal has been filed during the
six months following issuance of the final action, the
application will be abandoned.  See 37 CFR 2.64 and
2.142(a), and TMEP 1105.04(f).  Thus, if an applicant which
has filed a request for reconsideration of a final action
wishes to preserve its right to appeal in the event that the
request is unsuccessful, the applicant must file an appeal
prior to the expiration of the six-month period following
issuance of the final action.

If an appeal is late filed, but applicant timely filed some
other response to the appealed action, such as an amendment
or request for reconsideration, the Board will issue a
written action informing applicant of the lateness of its
appeal; stating that the late appeal cannot be entertained
by the Board; and forwarding the application to the
Examining Attorney for appropriate action with respect to
the paper that was timely filed.



1202.03  Notice of Appeal

A notice of appeal is a simple statement indicating that
applicant appeals from the decision of the Trademark
Examining Attorney refusing registration; reasons for appeal
need not be given.  The notice of appeal should bear at its
top the wording "IN THE UNITED STATES PATENT AND TRADEMARK
OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD,"
followed by information identifying the application in which
the appeal is being filed, namely, applicant's name, the
serial number and filing date of the application, and the
involved mark.

A notice of appeal need not be verified, and it may be
signed by the applicant or its attorney or other authorized
representative.

Although the notice of appeal must be signed, an unsigned
notice of appeal will not be refused consideration if a
signed copy is submitted to the Board within the time limit
set in the notification of this defect by the Board.  Cf. 37
CFR 2.119(e), and TBMP 106.02.  The same is true of other
unsigned papers filed in an application during an ex parte
appeal to the Board.

For further information concerning signature of papers, see
TBMP 106.02.

The Board prefers that a notice of appeal be submitted in
typewritten or printed form, double spaced.  A notice of
appeal may be submitted on either legal or letter-size
paper.  However, letter-size paper (the size preferred by
many Federal district courts) is recommended.  See TBMP
106.03.  Cf. 37 CFR 2.31.

The PTO has no printed form for use in filing a notice of
appeal.  However, as an aid to applicants, the PTO has
prepared a suggested format for a notice of appeal.  A
notice of appeal need not follow the suggested format, as
long as it includes the necessary information.  The
suggested format for a notice of appeal is shown below:

      IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
         BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

................................
     (Name of applicant)
................................
 (Serial Number of application)
................................
  (Filing date of application)
................................
            (Mark)

                      NOTICE OF APPEAL

     Applicant hereby appeals to the Trademark Trial and
Appeal Board from the decision of the Trademark Examining
Attorney refusing registration.(1)

By.....................................
            (Signature)(2)
.......................................
 (Identification of person signing)(3)


                          FOOTNOTES
(1)  The required fee must be submitted for each class for
which an appeal is taken.  If an appeal is taken for fewer
than the total number of classes in the application, the
classes in which the appeal is taken should be specified.
(2)  The notice of appeal may be signed by the applicant or
by the applicant's attorney or other authorized
representative.  If an applicant signing for itself is a
partnership, the signature must be made by a partner; if an
applicant signing for itself is a corporation or similar
juristic entity, the signature must be made by an officer of
the corporation or other juristic entity who has authority
to sign for the entity and whose title is given.
(3)  State the capacity in which the signing individual
signs, e.g., attorney for applicant, applicant (if applicant
is an individual), partner of applicant (if applicant is a
partnership), officer of applicant identified by title (if
applicant is a corporation), etc.



1202.04  Appeal Fee

37 CFR 2.85(e) Where the amount of the fee received on
filing an appeal in connection with an application or on an
application for renewal or in connection with a petition for
cancellation is sufficient for at least one class of goods
or services but is less than the required amount because
multiple classes in an application or registration are
involved, the appeal or renewal application or petition for
cancellation will not be refused on the ground that the
amount of the fee was insufficient if the required
additional amount of the fee is received in the Patent and
Trademark Office within the time limit set forth in the
notification of this defect by the Office, or if action is
sought only for the number of classes equal to the number of
fees submitted.

37 CFR 2.141 Ex parte appeals from the Examiner of
Trademarks.
Every applicant for the registration of a mark may, upon
final refusal by the Examiner of Trademarks, appeal to the
Trademark Trial and Appeal Board upon payment of the
prescribed fee for each class in the application for which
an appeal is taken.  An appeal which includes insufficient
fees to cover all classes in the application should specify
the particular class or classes in which an appeal is taken.
A second refusal on the same grounds may be considered as
final by the applicant for purpose of appeal.

An ex parte appeal to the Board is taken by timely filing in
the PTO both a notice of appeal and the prescribed appeal
fee.  If a notice of appeal is timely filed, but the appeal
fee is not, the appeal will be untimely, and the application
will be deemed to have been abandoned.  See TBMP 1202.01,
and authorities cited therein.

The amount of the fee required for an ex parte appeal to the
Board is specified in 37 CFR 2.6(a)(18).  If an application
in which an appeal is filed has more than one class of goods
and/or services (see 37 CFR 2.86(b)), the required fee must
be paid for each class in which appeal is taken.  See 37 CFR
2.6(a)(18).  If an appeal is taken in, and an appeal fee is
submitted for, fewer than all of the classes in the
application, the class or classes in which the appeal is
taken should be specified.  See 37 CFR 2.141, and TMEP
1113.05(a).

If an applicant timely submits a fee sufficient to pay for
an appeal in at least one class, but the fee submitted is
less than the required amount because multiple classes in an
application are involved, and applicant has not specified
the class or classes to which the submitted fee applies, the
Board will issue a written notice allowing applicant until a
set time in which to submit the required fee or to specify
the class or classes appealed.  If the required fee is not
submitted, or the specification made, within the time set in
the notice, the fee submitted will be applied to the classes
in ascending order, beginning with the lowest numbered class
and including the number of classes in the application for
which sufficient fees have been submitted.  See 37 CFR
2.85(e) and 2.141, and TMEP 1113.05(a) and 1501.04.



1203  Appeal Briefs

1203.01  Form of Brief

37 CFR 2.142(b)(2) Briefs shall be submitted in typewritten
or printed form, double spaced, in at least pica or eleven-
point type, on letter-size paper.  Without prior leave of
the Trademark Trial and Appeal Board, a brief shall not
exceed twenty-five pages in length in its entirety.

A brief filed in an ex parte appeal to the Board should
conform to the requirements of 37 CFR 2.142(b)(2).  Only
one copy of the brief need be submitted.

The brief should bear a title indicating that it is an
appeal brief, as well as information identifying the
application in which it is filed, namely, the applicant's
name, the serial number and filing date of the application,
and the mark sought to be registered.  Cf. TMEP 702.

For further information concerning the form and contents of
the Trademark Examining Attorney's appeal brief, in
particular, see TMEP 1501.02.



1203.02  Time for Filing Brief

1203.02(a)  Applicant's Main Brief

37 CFR 2.142(b)(1) The brief of appellant shall be filed
within sixty days from the date of appeal.  If the brief is
not filed within the time allowed, the appeal may be
dismissed.  The examiner shall, within sixty days after the
brief of appellant is sent to the examiner, file with the
Trademark Trial and Appeal Board a written brief answering
the brief of appellant and shall mail a copy of the brief to
the appellant.  The appellant may file a reply brief within
twenty days from the date of mailing of the brief of the
examiner.

An applicant's main brief in an ex parte appeal to the Board
must be filed within 60 days from the date of appeal, or
within an extension of time for that purpose.  If no brief
is filed, the appeal will be dismissed.  See 37 CFR
2.142(b)(1).  If the brief is filed late, applicant will be
allowed an opportunity to submit an explanation for the late
filing; in the absence of an adequate explanation, the
appeal will be dismissed.

If a notice of appeal (accompanied by the required fee) is
filed with a certificate of mailing by first-class mail
pursuant to 37 CFR 1.8, the date of mailing specified in
the certificate will be used for determining the timeliness
of the notice of appeal.  However, the actual date of
receipt of the notice of appeal in the PTO will be used for
all other purposes, including the running of the time for
filing applicant's main brief.  See 37 CFR 1.8(a).

If an applicant which has filed a timely request for
reconsideration of a final action, second refusal on the
same ground(s), or repeated requirement, also files a timely
appeal, and the Examining Attorney has not yet considered
the request for reconsideration when the appeal is filed,
the file of the application, with the appeal and the request
for reconsideration, will be forwarded to the Board.  The
Board will acknowledge receipt of the appeal and request,
suspend further proceedings (including applicant's time for
filing its appeal brief) with respect to the appeal, and
remand the application to the Examining Attorney for
consideration of the request.  If, upon the Examining
Attorney's consideration of the request, all refusals and
requirements are not withdrawn, and a new final refusal to
register is issued (either in the Examining Attorney's
action on the request for reconsideration, or in a
subsequent action), the six-month response clause should be
omitted from the paper in which such action is taken; the
file of the case should be returned to the Board;
proceedings with respect to the appeal will be resumed; and
applicant will be allowed time in which to file its appeal
brief.  If the Examining Attorney approves the application
for publication (or for registration, in the case of a
Supplemental Register application), the appeal will be moot.
However, the Examining Attorney should notify the Board (by
telephoning the Board's administrator) that the application
is being approved for publication (or for registration), so
that the Board's records may be amended to reflect the
disposition of the application.  The Examining Attorney
should also notify the applicant.


1203.02(b)  Trademark Examining Attorney's Brief

When the applicant's main appeal brief has been received by
the Board and entered in the application file, the Board
sends the file to the Trademark Examining Attorney.  Within
60 days after the date of the Board's written action
forwarding the file to the Examining Attorney, or within an
extension of time for the purpose, the Examining Attorney
must file an appeal brief answering the applicant's main
brief.  See 37 CFR 2.142(b)(1); In re Wells Fargo & Co.,
231 USPQ 106 (TTAB 1986); In re Tennessee Walking Horse
Breeders' and Exhibitors' Ass'n, 223 USPQ 188 (TTAB 1984);
TMEP 1501.02; and Gary D. Krugman, TIPS FROM THE TTAB:  The
Amended Trademark Rules of Practice and Their Effect on Ex
Parte Appeals, 74 Trademark Rep. 341 (1984).  See also In re
Miller Brewing Co., 226 USPQ 666 (TTAB 1985).  The Examining
Attorney must also mail a copy of his or her brief to the
applicant.  See 37 CFR 2.142(b)(1).  See also In re De Luxe
N.V., 990 F.2d 607, 26 USPQ2d 1475 (Fed. Cir. 1993).  If the
Examining Attorney's brief is late filed, it may be excluded
by the Board in the absence of an adequate explanation for
the late filing.  See In re Tennessee Walking Horse
Breeders' and Exhibitors' Ass'n, supra.

If the Examining Attorney, having received the application
for preparation of his or her appeal brief, is persuaded, by
applicant's appeal brief, that applicant is entitled to the
registration sought, the Examining Attorney may approve the
application for publication (or for registration, in the
case of a Supplemental Register application), and the appeal
will be moot.  However, the Examining Attorney should notify
the Board (by telephoning the Board's administrator) that
the application is being approved for publication (or
registration), so that the Board's records may be amended to
reflect the disposition of the application.  The Examining
Attorney must also notify the applicant, in writing.  See
TMEP 1501.03.

On the other hand, the Examining Attorney, having received
the application for preparation of his or her appeal brief,
may decide that registration should be refused on an
additional ground, or that a new requirement should be made,
or that the application should be suspended.  In that event,
the Examining Attorney, during the time for and instead of
preparing an appeal brief, should send to the Board a
written request that the application be remanded to him or
her for further examination.  See TMEP 1501.02.  See also
In re Moore Business Forms Inc., 24 USPQ2d 1638 (TTAB 1992)
(ground for refusal first raised in Examining Attorney's
appeal brief given no consideration).  For information
concerning requests for remand, see TBMP 1209 and TMEP
1504.05(a).  If the request is denied, the Board will reset
the Examining Attorney's time in which to file an appeal
brief.  See In re Miller Brewing Co., 226 USPQ 666 (TTAB
1985).  If the request is granted, the Board will suspend
proceedings with respect to the appeal, and remand the
application to the Examining Attorney for further
examination in accordance with the request for remand.  If,
during the course of the further examination, the
application is ultimately approved for publication (or for
registration, in the case of a Supplemental Register
application), the appeal will be moot.  If the Examining
Attorney refuses registration on a new ground, or makes a
new requirement, and the new refusal or requirement is
ultimately made final, the new final action should not
include a six-month response clause; the application should
be returned to the Board; and the Board will resume
proceedings with respect to the appeal and allow applicant
60 days in which to submit a supplemental appeal brief
directed to the new issue or issues, following which the
application will be returned to the Examining Attorney for
preparation of his or her appeal brief.



1203.02(c)  Applicant's Reply Brief

Within 20 days from the mailing date of the Trademark
Examining Attorney's appeal brief, or within an extension of
time for the purpose, the applicant may, if it so desires,
file a reply brief.  See 37 CFR 2.142(b)(1); In re Gena
Laboratories, Inc., 230 USPQ 382 (TTAB 1985); and In re
Randall & Hustedt, 226 USPQ 1031 (TTAB 1985).  Cf. In re
Gale Hayman Inc., 15 USPQ2d 1478 (TTAB 1990).  However, the
filing of a reply brief is not mandatory.

If the applicant files a reply brief, a copy thereof will be
forwarded by the Board to the Trademark Examining Attorney.
If the Examining Attorney, having read the applicant's reply
brief, is persuaded thereby that applicant is entitled to
the registration sought, the Examining Attorney may approve
the application for publication (or for registration, in the
case of a Supplemental Register application), and the appeal
will be moot.  However, the Examining Attorney should notify
the Board (by telephoning the Board's administrator) that
the application is being approved for publication (or
registration), so that the Board's records may be amended to
reflect the disposition of the application.  The Examining
Attorney must also notify the applicant, in writing.  See
TMEP 1501.03.

There is no provision in the rules for the filing by the
Examining Attorney of a written response to the applicant's
reply brief.  However, if the applicant requests an oral
hearing, the Examining Attorney may respond orally, at the
oral hearing, to arguments raised in applicant's reply
brief.  See TMEP 1501.02(a).



1203.02(d)  Extension of Time for Filing Brief

An extension of time for filing an appeal brief in an ex
parte appeal to the Board may be granted by the Board upon
written request showing good cause for the requested
extension.  See In re Miller Brewing Co., 226 USPQ 666 (TTAB
1985).  See also In re Tennessee Walking Horse Breeders' and
Exhibitors' Ass'n, 223 USPQ 188 (TTAB 1984).



1204  Effect of Request for Reconsideration of Final Action

During the period between issuance of a final action and
expiration of the time for filing an appeal therefrom, an
applicant may file a request for reconsideration, with or
without an amendment and/or new evidence.  See 37 CFR
2.64(b).  See also TMEP 1105.04(f) and 1110, and Gary D.
Krugman, TIPS FROM THE TTAB:  The Amended Trademark Rules of
Practice and Their Effect on Ex Parte Appeals, 74 Trademark
Rep. 341 (1984).  However, the filing of a request for
reconsideration will not serve to stay the time for filing
an appeal (or for petitioning the Commissioner, if
appropriate--see 37 CFR 2.63(b) and 2.64(a), and TBMP
1201.05).  See 37 CFR 2.64(b), and TMEP 1110.  If, upon
the Examining Attorney's consideration of the request, all
refusals and requirements are not withdrawn, and no appeal
or other proper response (see 37 CFR 2.64(a), and TMEP
1105.04(g)) to the final refusal has been filed during the
six months following issuance of the final action, the
application will be abandoned.  See 37 CFR 2.64 and
2.142(a), and TMEP 1105.04(f).  Thus, if an applicant which
has filed a request for reconsideration of a final action
wishes to preserve its right to appeal in the event that the
request is unsuccessful, the applicant must file an appeal
prior to the expiration of the six-month period following
issuance of the final action.

When an applicant files, in response to a final action, or a
second refusal on the same ground(s), or a repeated
requirement, both a request for reconsideration and an
appeal, the request for reconsideration should be made by
separate paper and should specify the reasons why applicant
believes reconsideration is warranted.  The request for
reconsideration should not be combined with the applicant's
appeal brief.  See In re Best Western Family Steak House,
Inc., 222 USPQ 827 (TTAB 1984).

If an applicant which has filed a timely request for
reconsideration of a final action, second refusal on the
same ground(s), or repeated requirement, also files a timely
appeal, and the Examining Attorney has not yet considered
the request for reconsideration when the appeal is filed,
the file of the application, with the appeal and the request
for reconsideration, will be forwarded to the Board.  The
Board will acknowledge receipt of the appeal and request,
suspend further proceedings (including applicant's time for
filing its appeal brief) with respect to the appeal, and
remand the application to the Examining Attorney for
consideration of the request.  For information concerning
the actions which an Examining Attorney may take in response
to a request for reconsideration of a final action, see TMEP
1110.  See also In re Juleigh Jeans Sportswear Inc., 24
USPQ2d 1694 (TTAB 1992).  Further, if the Examining Attorney
believes that the outstanding issue(s) can be resolved, the
Examining Attorney may contact applicant and attempt to work
out a resolution.

If, after suspension and remand for consideration by the
Examining Attorney of a timely request for reconsideration,
the Examining Attorney approves the application for
publication (or for registration, in the case of a
Supplemental Register application), the appeal will be moot.
However, the Examining Attorney should notify the Board (by
telephoning the Board's administrator) that the application
is being approved for publication (or registration), so that
the Board's records may be amended to reflect the
disposition of the application.  The Examining Attorney
should also notify the applicant.  If, upon the Examining
Attorney's consideration of the request, all refusals and
requirements are not withdrawn, and a new final refusal to
register is issued (either in the Examining Attorney's
action on the request for reconsideration, or in a
subsequent action), the six-month response clause should be
omitted from the paper in which such action is taken; the
file of the case should be returned to the Board;
proceedings with respect to the appeal will be resumed; and
applicant will be allowed time in which to file its appeal
brief.

If an appeal is late filed, but applicant timely filed a
request for reconsideration, the Board will issue a written
action informing applicant of the lateness of its appeal;
stating that the late appeal cannot be entertained by the
Board; and forwarding the application to the Examining
Attorney for consideration of the request for
reconsideration.

A timely request for reconsideration of an appealed action
may be accompanied by an amendment and/or by additional
evidence.  The evidentiary record in an application should
be complete prior to the filing of an appeal, and additional
evidence filed after appeal normally will be given no
consideration by the Board.  See 37 CFR 2.142(d).  See also
TBMP 1207.  However, evidence submitted with a timely
request for reconsideration of an appealed action, that is,
a request filed during the six-month response period
following issuance of the appealed action, is considered by
the Board to have been filed prior to appeal, even if the
notice of appeal was, in fact, filed earlier in the six-
month response period than the request for reconsideration.
See Gary D. Krugman, TIPS FROM THE TTAB:  The Amended
Trademark Rules of Practice and Their Effect on Ex Parte
Appeals, 74 Trademark Rep. 341 (1984), and Daniel L. Skoler,
TIPS FROM THE TTAB:  Evidence in Ex Parte Appeals--Problems
and Lost Opportunities, 73 Trademark Rep. 310 (1983).  See
also In re Corning Glass Works, 229 USPQ 65 (TTAB 1985), and
In re Best Western Family Steak House, Inc., 222 USPQ 827
(TTAB 1984).

If the Examining Attorney, upon consideration of a request
for reconsideration (made with or without new evidence),
does not find the request persuasive, and issues a new final
or nonfinal action, the Examining Attorney may submit
therewith new evidence directed to the issue(s) for which
reconsideration is sought.



1205  Amendment of Application During Appeal

If, within six months following the issuance of a final
action, or a second refusal on the same ground(s), or a
repeated requirement, applicant files both an amendment to
its application and an ex parte appeal to the Board, and the
Examining Attorney has not yet acted on the amendment when
the appeal is filed, the file of the application, with the
amendment and the appeal, will be forwarded to the Board.
The Board will acknowledge receipt of the amendment and
appeal, suspend further proceedings (including applicant's
time for filing its appeal brief) with respect to the
appeal, and remand the application to the Trademark
Examining Attorney for consideration of the amendment.  The
Board's remand letter will also include instructions to the
Examining Attorney with respect to the further actions which
may and/or should be taken by the Examining Attorney in
conjunction with the Examining Attorney's consideration of
the amendment.  For information concerning the actions which
may be taken by the Examining Attorney upon consideration of
the amendment, see TMEP 1110.  See also In re Juleigh Jeans
Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992); In re Abolio y
Rubio S.A.C.I. y G., 24 USPQ2d 1152 (TTAB 1992); and In re
Pierce Foods Corp., 230 USPQ 307 (TTAB 1986).  Further, if
the Examining Attorney believes that the outstanding
issue(s) can be resolved, the Examining Attorney may contact
applicant and attempt to work out a resolution.  The
Examining Attorney may not, however, assert a new refusal or
requirement unrelated to the amendment or material submitted
therewith, unless the Examining Attorney files with the
Board a request under 37 CFR 2.142(f)(6) for remand to
assert the new refusal or requirement, and the request is
granted.

If the Examining Attorney is persuaded, on the basis of the
amendment, that applicant is entitled to the registration
sought, the Examining Attorney may approve the application
for publication (or for registration, in the case of a
Supplemental Register application), and the appeal will be
moot.  However, the Examining Attorney should notify the
Board (by telephoning the Board's administrator) that the
application is being approved for publication (or
registration), so that the Board's records may be amended to
reflect the disposition of the application.  The Examining
Attorney should also notify the applicant.

If the Examining Attorney, after consideration of the
amendment filed after appeal, adheres to the final refusal
to register, or ultimately issues a new final refusal to
register, the six-month response clause should be omitted
from the paper in which such action is taken; the file of
the case should be returned to the Board; proceedings with
respect to the appeal will be resumed; and applicant will be
allowed time in which to file its appeal brief.

If an applicant which has filed a timely appeal to the Board
files an amendment to its application more than six months
after the issuance of the final action, or the second
refusal on the same ground(s), or the repeated requirement,
from which the appeal was taken, the Board normally will
suspend proceedings with respect to the appeal, and remand
the application to the Examining Attorney for consideration
of the amendment.  The Board's remand letter will also
include instructions to the Examining Attorney with respect
to the further actions which may and/or should be taken by
the Examining Attorney in conjunction with the Examining
Attorney's consideration of the amendment.  However, remand
in an ex parte appeal is a matter of discretion with the
Board, and the Board may refuse to remand for consideration
of an amendment filed more than six months after the date of
the action from which the appeal was taken, if, for example,
the amendment was filed in bad faith, or would serve no
useful purpose.  Further, if remand is made, the Board's
instructions to the Examining Attorney concerning the
handling of the amendment, and further action in connection
therewith, may differ, for an amendment filed more than six
months after the date of the action from which the appeal
was taken, from those given by the Board for an amendment
filed within six months after that date.

If an appeal is late filed, but applicant timely filed an
amendment to its involved application, the Board will issue
a written action informing applicant of the lateness of its
appeal; stating that the late appeal cannot be entertained
by the Board; and forwarding the application to the
Examining Attorney for appropriate action with respect to
the amendment.

An application which has been considered and decided on
appeal may be amended, if at all, only in accordance with 37
CFR 2.142(g).  For further information concerning amendment
after decision on appeal, see TBMP 1218, and TMEP 1501.05.



1206  Amendment to Allege Use; Statement of Use

1206.01  Amendment to Allege Use

An amendment to allege use under Section 1(c) of the Act, 15
U.S.C. 1051(c), may be filed in an intent-to-use
application, i.e., an application under Section 1(b) of the
Act, 15 U.S.C. 1051(b), at any time between the filing of
the application and the date the Trademark Examining
Attorney approves the mark for publication.  Thereafter, an
allegation of use may be submitted only as a statement of
use under Section 1(d) of the Act, 15 U.S.C. 1051(d), after
the issuance of a notice of allowance under Section 13(b)(2)
of the Act, 15 U.S.C. 1063(b)(2).  See 37 CFR 2.76(a), and
"Wavier [sic] of Trademark Rule 2.76(a)," 1156 TMOG 12
(November 2, 1993).  See also In re Sovran Financial Corp.,
25 USPQ2d 1537 (Comm'r 1991).

Thus, an amendment to allege use filed during the pendency
of an ex parte appeal to the Board is timely, even if the
amendment to allege use was filed after the expiration of
the six-month response period following issuance of the
appealed final action.  See "Wavier [sic] of Trademark Rule
2.76(a)," 1156 TMOG 12 (November 2, 1993).

If an applicant which has filed an amendment to allege use
during the six-month response period following issuance of a
final action also files a timely appeal, and the Examining
Attorney has not yet acted on the amendment to allege use
when the appeal is filed, the file of the application, with
the appeal and the amendment to allege use, will be
forwarded to the Board.  The Board will acknowledge receipt
of the appeal and amendment to allege use, suspend further
proceedings (including applicant's time for filing its
appeal brief) with respect to the appeal, and remand the
application to the Examining Attorney for consideration of
the amendment to allege use.  That is, the amendment to
allege use will be handled by the Board in the same manner
as any other amendment filed during the six-month response
period following issuance of a final action.  See, in this
regard, TBMP 1205.  For information concerning examination
by the Examining Attorney of an amendment to allege use
filed in conjunction with a notice of appeal, see TMEP
1105.05(a)(i).  If, in the course of examination of the
amendment to allege use, the application is approved for
publication (or for registration, in the case of an
application amended to seek registration on the Supplemental
Register), or becomes abandoned, the appeal will be moot.
However, the Examining Attorney should notify the Board (by
telephoning the Board's administrator) that the application
is being approved for publication (or registration), or has
become abandoned, so that the Board's records may be amended
to reflect the disposition of the application.  The
Examining Attorney should also notify the applicant, by
telephone.  If the Examining Attorney, after consideration
of the amendment to allege use, adheres to the final refusal
to register, or ultimately issues a new final refusal to
register, the six-month response clause should be omitted
from the paper in which such action is taken; the file of
the case should be returned to the Board; proceedings with
respect to the appeal will be resumed; and further
appropriate action will be taken therein.  See TMEP
1105.05(a)(i).

If an applicant which has filed a timely appeal to the Board
files an amendment to allege use, in the application which
is the subject of the appeal, more than six months after
issuance of the appealed action, the Board may, in its
discretion, suspend proceedings with respect to the appeal
and remand the application to the Examining Attorney for
consideration of the amendment to allege use.
Alternatively, the Board may continue proceedings with
respect to the appeal, thus deferring examination of the
amendment to allege use until after final determination of
the appeal.  See "Wavier [sic] of Trademark Rule 2.76(a),"
1156 TMOG 12 (November 2, 1993).  If the final determination
of the appeal is adverse to applicant, the amendment to
allege use will be moot.



1206.02  Statement of Use

A statement of use under Section 1(d) of the Act, 15 U.S.C.
51051(d), is premature if it is filed in an intent-to-use
application, i.e., an application under Section 1(b) of the
Act, 15 U.S.C. 1051(b), prior to the issuance of a notice
of allowance under Section 13(b)(2) of the Act, 15 U.S.C.
1063(b)(2).  See 37 CFR 2.88(a).

A notice of allowance is not issued in an intent-to-use
application (for which no amendment to allege use under
Section 1(c) of the Act, 15 U.S.C. 1051(c) has been timely
filed and accepted) unless and until the application is
approved for publication, and then published in the Official
Gazette for opposition; no timely opposition is filed or all
oppositions filed are dismissed; and no interference is
declared.  See Section 13(b)(2) of the Act, and 37 CFR
2.81(b).  See also TMEP 1105.05(e)(i) and TBMP 219.

Therefore, a statement of use filed during an ex parte
appeal to the Board is premature.  A premature statement of
use will not be considered.  See 37 CFR 2.88(a).  See also
TMEP 1105.05(e)(i).  Instead, the premature statement of
use will be returned to applicant after action has been
taken to refund the fee submitted with the paper.



1207  Submission of Evidence During Appeal

1207.01  General Rule--Evidence Submitted After Appeal
Untimely

37 CFR 2.142(d) The record in the application should be
complete prior to the filing of an appeal.  The Trademark
Trial and Appeal Board will ordinarily not consider
additional evidence filed with the Board by the appellant or
by the examiner after the appeal is filed.  After an appeal
is filed, if the appellant or the examiner desires to
introduce additional evidence, the appellant or the examiner
may request the Board to suspend the appeal and to remand
the application for further examination.

The evidentiary record in an application should be complete
prior to the filing of an ex parte appeal to the Board.
Additional evidence filed after appeal normally will be
given no consideration by the Board.  See 37 CFR 2.142(d).
See also In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694
(TTAB 1992); In re Pennzoil Products Co., 20 USPQ2d 1753
(TTAB 1991); In re Nationwide Industries Inc., 6 USPQ2d 1882
(TTAB 1988); In re Bonni Keller Collections Ltd., 6 USPQ2d
1224 (TTAB 1987); In re Gold's Gym Enterprises Inc., 3
USPQ2d 1716 (TTAB 1987); In re International Environmental
Corp., 230 USPQ 688 (TTAB 1986); In re Mayer-Beaton Corp.,
223 USPQ 1347 (TTAB 1984); In re Compagnie Internationale
Pour L'Informatique-Cie Honeywell Bull, 223 USPQ 363 (TTAB
1984); In re Carvel Corp., 223 USPQ 65 (TTAB 1984); In re
Jos. Schlitz Brewing Co., 223 USPQ 45 (TTAB 1983); In re
Best Western Family Steak House, Inc., 222 USPQ 827 (TTAB
1984); In re Jeep Corp., 222 USPQ 333 (TTAB 1984); In re
Pierre Fabre S.A., 221 USPQ 1210 (TTAB 1984); In re
Development Dimensions International, Inc., 219 USPQ 161
(TTAB 1983); In re Gagliardi Bros., Inc., 218 USPQ 181 (TTAB
1983); and In re Royal Viking Line A/S, 216 USPQ 795 (TTAB
1982).  Cf. In re Bed & Breakfast Registry, 791 F.2d 157,
229 USPQ 818 (Fed. Cir. 1986), and In re Volvo White Truck
Corp., 16 USPQ2d 1417 (TTAB 1990).



1207.02  Request to Remand for Additional Evidence

If an applicant or Trademark Examining Attorney wishes to
introduce additional evidence after an appeal has been
filed, the applicant or Examining Attorney may file a
written request with the Board to suspend the appeal and
remand the application for further examination.  See 37 CFR
2.142(d).  See also In re Juleigh Jeans Sportswear Inc., 24
USPQ2d 1694 (TTAB 1992); In re Wells Fargo & Co., 231 USPQ
95 (TTAB 1986); In re Big Wrangler Steak House, Inc., 230
USPQ 634 (TTAB 1986); In re Bercut-Vandervoort & Co., 229
USPQ 763 (TTAB 1986); In re Chung, Jeanne & Kim Co., 226
USPQ 938 (TTAB 1985); In re Mayer-Beaton Corp., 223 USPQ
1347 (TTAB 1984); In re Compagnie Internationale Pour
L'Informatique-Cie Honeywell Bull, 223 USPQ 363 (TTAB 1984);
In re Carvel Corp., 223 USPQ 65 (TTAB 1984); In re Jos.
Schlitz Brewing Co., 223 USPQ 45 (TTAB 1983); In re Best
Western Family Steak House, Inc., 222 USPQ 827 (TTAB 1984);
In re Jeep Corp., 222 USPQ 333 (TTAB 1984); In re
Consolidated Foods Corp., 218 USPQ 184 (TTAB 1983); and In
re Royal Viking Line A/S, 216 USPQ 795 (TTAB 1982).

A request under 37 CFR 2.142(d) to suspend and remand for
additional evidence must be filed prior to the rendering of
the Board's final decision on the appeal.  See In re Johanna
Farms, Inc., 223 USPQ 459 (TTAB 1984), and In re Carvel
Corp., 223 USPQ 65 (TTAB 1984).  In addition, the request
must include a showing of good cause therefor (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 In
re Big Wrangler Steak House, Inc., 230 USPQ 634 (TTAB 1986);
In re Bercut-Vandervoort & Co., 229 USPQ 763 (TTAB 1986); In
re Chung, Jeanne & Kim Co., 226 USPQ 938 (TTAB 1985); In re
Mayer-Beaton Corp., 223 USPQ 1347 (TTAB 1984); In re
Compagnie Internationale Pour L'Informatique-Cie Honeywell
Bull, 223 USPQ 363 (TTAB 1984); In re Jeep Corp., 222 USPQ
333 (TTAB 1984); and In re Historic Wharf's Associates,
Inc., 222 USPQ 92 (TTAB 1984).  Examples of circumstances
which have been found to constitute good cause for a remand
for additional evidence include the following:
     (1) The evidence was not previously available.
     (2) A new attorney for the applicant, or a new
Examining Attorney, has taken over the case and wishes to
supplement the evidence of record.  (The transfer of a case
from one firm member to another is not considered by the
Board to constitute good cause for a remand under the "new
attorney" rationale.)
     (3) The applicant and Examining Attorney have agreed to
the remand.
See In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991);
Gary D. Krugman, TIPS FROM THE TTAB:  The Amended Trademark
Rules of Practice and Their Effect on Ex Parte Appeals, 74
Trademark Rep. 341 (1984); and Daniel L. Skoler, TIPS FROM
THE TTAB:  Evidence in Ex Parte Appeals--Problems and Lost
Opportunities, 73 Trademark Rep. 310 (1983).

In addition, because a consent agreement, offered in
response to a refusal to register under Section 2(d) of the
Act, 15 U.S.C. 1052(d) (see, for example, In re N.A.D.
Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985), and In re
E.I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); cf. In re Mastic Inc., 829 F.2d 1114, 4 USPQ2d
1292 (Fed. Cir. 1987)), is inherently difficult and time-
consuming to obtain, and may be highly persuasive of
registrability, the Board will grant a request to suspend
and remand for consideration of a consent agreement if the
request, accompanied by the consent agreement, is filed at
any time prior to the rendering of the Board's final
decision on the appeal.

If a request to remand for additional evidence is granted,
the nonrequesting party may submit additional evidence in
response to the evidence submitted with the request.  See In
re Northland Aluminum Products, Inc., 221 USPQ 1110 (TTAB
1984), aff'd, 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985).
Cf. In re Development Dimensions International, Inc., 219
USPQ 161 (TTAB 1983).

When an applicant's request to suspend and remand for
additional evidence is granted, and the application is
remanded to the Examining Attorney for further examination,
the Examining Attorney may approve the application for
publication (or for registration, in the case of a
Supplemental Register application), or adhere to the action
from which the appeal was taken.  The Examining Attorney may
also issue a new nonfinal action asserting any new refusal
or requirement necessitated by the new evidence.  The
Examining Attorney may not, however, assert a new refusal or
requirement unrelated to the new evidence, unless the
Examining Attorney files with the Board a request under 37
CFR 2.142(f)(6) for remand to assert the new refusal or
requirement, and the request is granted.  If the Examining
Attorney is persuaded, on the basis of the new evidence,
that applicant is entitled to the registration sought, and
approves the application for publication (or for
registration, in the case of a Supplemental Register
application), the appeal will be moot.  However, the
Examining Attorney should notify the Board (by telephoning
the Board's administrator) that the application is being
approved for publication (or registration), so that the
Board's records may be amended to reflect the disposition of
the application.  The Examining Attorney should also notify
the applicant.  If the Examining Attorney, after
consideration of the new evidence, adheres to the final
refusal to register, or ultimately issues a new final
refusal to register, the six-month response clause should be
omitted from the paper in which such action is taken; the
file of the case should be returned to the Board;
proceedings with respect to the appeal will be resumed; and
further appropriate action will be taken therein.

When an Examining Attorney's request to suspend and remand
for additional evidence is granted, the Board, in its action
granting the request, will allow the Examining Attorney
until a specified time in which to issue an Office action
(with no six-month response clause) relating to the new
evidence to be submitted therewith.  After the Examining
Attorney's new action has been issued, the application
should be returned to the Board; proceedings with respect to
the appeal will be resumed; applicant will be allowed an
opportunity to submit, if it so desires, responsive
evidence; and further appropriate action with respect to the
appeal will be taken.  If applicant's appeal brief has
already been filed, applicant will be allowed an
opportunity, if it so desires, to file a supplemental brief
directed to the new evidence submitted by the Examining
Attorney.



1207.03  Evidence Considered Due to Actions of Nonoffering
Party

Evidence submitted after appeal, without a granted request
to suspend and remand for additional evidence (see TBMP
1207.02), may be considered by the Board, despite its
untimeliness, if the nonoffering party (1) does not object
to the new evidence, and (2) discusses the new evidence or
otherwise affirmatively treats it as being of record.  See,
for example, In re Pennzoil Products Co., 20 USPQ2d 1753
(TTAB 1991); In re Nuclear Research Corp., 16 USPQ2d 1316
(TTAB 1990); In re Dana Corp., 12 USPQ2d 1748 (TTAB 1989);
In re Pencils Inc., 9 USPQ2d 1410 (TTAB 1988); In re Wells
Fargo & Co., 231 USPQ 95 (TTAB 1986); In re Weather Channel,
Inc., 229 USPQ 854 (TTAB 1985); In re Bercut-Vandervoort &
Co., 229 USPQ 763 (TTAB 1986); In re Cotter & Co., 228 USPQ
202 (TTAB 1985); In re Chung, Jeanne & Kim Co., 226 USPQ 938
(TTAB 1985); In re Bee Pollen From England Ltd., 219 USPQ
163 (TTAB 1983); In re Development Dimensions International,
Inc., 219 USPQ 161 (TTAB 1983); Gary D. Krugman, TIPS FROM
THE TTAB:  The Amended Trademark Rules of Practice and Their
Effect on Ex Parte Appeals, 74 Trademark Rep. 341 (1984);
and Daniel L. Skoler, TIPS FROM THE TTAB:  Evidence in Ex
Parte Appeals--Problems and Lost Opportunities, 73 Trademark
Rep. 310 (1983).  In such a situation, evidence submitted by
the nonoffering party to rebut the untimely evidence may be
considered by the Board.  See In re Development Dimensions
International, Inc., supra.  Cf. In re Northland Aluminum
Products, Inc., 221 USPQ 1110 (TTAB 1984), aff'd, 777 F.2d
1556, 227 USPQ 961 (Fed. Cir. 1985).



1207.04  Evidence Filed With Timely Request for
Reconsideration

A timely request for reconsideration of an appealed action
may be accompanied by additional evidence, which will
thereby be made part of the evidentiary record in the
application.  There is no need, in such a situation, for a
37 CFR 2.142(d) request to suspend and remand for
additional evidence.  Evidence submitted with a timely
request for reconsideration of an appealed action, that is,
a request filed during the six-month response period
following issuance of the appealed action, is considered by
the Board to have been filed prior to appeal, even if the
notice of appeal was, in fact, filed earlier in the six-
month response period than the request for reconsideration.
See TBMP 1204, and authorities cited therein.

When a timely request for reconsideration of an appealed
action is filed (with or without new evidence), the
Examining Attorney may submit, with his or her response to
the request, new evidence directed to the issue(s) for which
reconsideration is sought.



1207.05  Submission of Evidence Upon Remand for New Refusal

Additional evidence may be submitted, both by the Examining
Attorney and by the applicant, if (1) an appealed
application is remanded by the Board for further examination
under 37 CFR 2.142(f) (i.e., sua sponte remand by the Board
when it appears to the Board that an issue not previously
raised may render the mark of the applicant unregistrable)
or under 37 CFR 2.142(f)(6) (i.e., remand by the Board upon
written request by the Examining Attorney when it appears to
the Examining Attorney that an issue not involved in the
appeal may render the mark of the applicant unregistrable),
and (2) the Examining Attorney, upon remand, does, in fact,
issue a new refusal to register or requirement.  See In re
Bank America Corp., 229 USPQ 852 (TTAB 1986).  If no new
refusal or requirement is made, and the file is instead
returned by the Examining Attorney to the Board, no
additional evidence may be submitted.  See In re Diet Tabs,
Inc., 231 USPQ 587 (TTAB 1986).



1207.06  Letter of Protest Evidence

A third party which has knowledge of facts bearing upon the
registrability of a mark in a pending application may bring
such information to the attention of the PTO by filing, with
the Director of the Trademark Examining Groups, a "letter of
protest," that is, a letter which recites the facts and
which is accompanied by supporting evidence.  The Director
will determine whether the information should be given to
the Trademark Examining Attorney for consideration.  See
TBMP 215, and authorities cited therein.

Proceedings in an ex parte appeal will not be suspended
pending determination by the Director of a letter of
protest.  However, if a letter of protest is granted during
the pendency of an ex parte appeal, and the Examining
Attorney, having considered the supporting evidence
submitted with the letter of protest, wishes to make that
evidence of record in the application, that is, wishes to
rely on the evidence to support the appealed refusal of
registration, the Examining Attorney may file a written
request with the Board, pursuant to 37 CFR 2.142(d), to
suspend the appeal and remand the application for further
examination.  For information concerning a request for
remand for additional evidence, see TBMP 1207.02.

The request must be filed prior to the rendering of the
Board's final decision on the appeal, and must be
accompanied by the additional evidence sought to be
introduced.  See TBMP 1207.02.  In addition, the request
must include a showing of good cause therefor, in the same
manner as any other request to remand for additional
evidence.  For information concerning good cause for a
remand for additional evidence, see TBMP 1207.02.



1208  Treatment of Evidence

The Board generally takes a somewhat more permissive stance
with respect to the introduction and evaluation of evidence
in an ex parte proceeding than it does in an inter partes
proceeding.  That is, in an ex parte proceeding, the Board
tolerates some relaxation of technical requirements for the
introduction of evidence and focuses instead on the spirit
and essence of the rules of evidence.  The reason for this
more relaxed approach in ex parte cases is that in an ex
parte proceeding, there is no cross-examination of witnesses
or any compelling need for the strict safeguards required in
an inter partes proceeding.  See In re Murphy Door Bed Co.,
223 USPQ 1030 (TTAB 1984); In re Pillsbury Co., 174 USPQ 318
(TTAB 1972); and Daniel L. Skoler, TIPS FROM THE TTAB:
Evidence in Ex Parte Appeals--Problems and Lost
Opportunities, 73 Trademark Rep. 310, 315 (1983).  See also
In re Berman Bros. Harlem Furniture Inc., 26 USPQ2d 1514
(TTAB 1993).

For example, the affidavit or 37 CFR 2.20 declaration is an
established method for the introduction of evidence in an ex
parte proceeding.  See, for example, 37 CFR 2.41(b); In re
Manco Inc., 24 USPQ2d 1938 (TTAB 1992); In re Bauhaus
Designs Canada Ltd., 12 USPQ2d 2001 (TTAB 1989); In re
Motorola, Inc., 3 USPQ2d 1142 (TTAB 1986); In re Peterson
Manufacturing Co., 229 USPQ 466 (TTAB 1986); In re Melville
Corp., 228 USPQ 970 (TTAB 1986); In re Gammon Reel, Inc.,
227 USPQ 729 (TTAB 1985); and In re Original Red Plate Co.,
223 USPQ 836 (TTAB 1984).  In an inter partes proceeding,
however, evidence may not be offered in affidavit or 37 CFR
2.20 declaration form except by agreement of the parties.
See 37 CFR 2.123(b), and TBMP 713.02 and cases cited
therein.

For information as to how the Court of Appeals for the
Federal Circuit, in reviewing a decision of the Board on an
ex parte appeal, evaluates the sufficiency of the evidence
offered by the Trademark Examining Attorney, see In re Budge
Manufacturing Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir.
1988) (Court, being mindful that the PTO has limited
facilities for acquiring evidence--it cannot, for example,
be expected to conduct a survey of the marketplace or obtain
consumer affidavits--concludes evidence of record is
sufficient to establish a prima facie case of
deceptiveness), and In re Loew's Theatres, Inc., 769 F.2d
764, 768, 226 USPQ 865, 868 (Fed. Cir. 1985)
("...practicalities of the limited resources available to
the PTO are routinely taken into account in reviewing its
administrative action.").  But see In re Mavety Media Group
Ltd., 33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir. 1994) ("...the
PTO may discharge its burden of proving that Mavety's mark
BLACK TAIL is scandalous under 1052(a) through evidence
such as consumer surveys regarding the substantial composite
of the general public.").



1209  Remand for New Refusal or New Requirement

1209.01  Upon Board's Own Initiative

37 CFR 2.142(f)(1) If, during an appeal from a refusal of
registration, it appears to the Trademark Trial and Appeal
Board that an issue not previously raised may render the
mark of the appellant unregistrable, the Board may suspend
the appeal and remand the application to the examiner for
further examination to be completed within thirty days.

(2) If the further examination does not result in an
additional ground for refusal of registration, the examiner
shall promptly return the application to the Board, for
resumption of the appeal, with a written statement that
further examination did not result in an additional ground
for refusal of registration.

(3) If the further examination does result in an additional
ground for refusal of registration, the examiner and
appellant shall proceed as provided by 2.61, 2.62, 2.63
and 2.64.  If the ground for refusal is made final, the
examiner shall return the application to the Board, which
shall thereupon issue an order allowing the appellant sixty
days from the date of the order to file a supplemental brief
limited to the additional ground for the refusal of
registration.  If the supplemental brief is not filed by the
appellant within the time allowed, the appeal may be
dismissed.

(4) If the supplemental brief of the appellant is filed, the
examiner shall, within sixty days after the supplemental
brief of the appellant is sent to the examiner, file with
the Board a written brief answering the supplemental brief
of appellant and shall mail a copy of the brief to the
appellant.  The appellant may file a reply brief within
twenty days from the date of mailing of the brief of the
examiner.

(5) If an oral hearing on the appeal had been requested
prior to the remand of the application but not yet held, an
oral hearing will be set and heard as provided in paragraph
(e) of this section.  If an oral hearing had been held prior
to the remand or had not been previously requested by the
appellant, an oral hearing may be requested by the appellant
by a separate notice filed not later than ten days after the
due date for a reply brief on the additional ground for
refusal of registration.  If the appellant files a request
for an oral hearing, one will be set and heard as provided
in paragraph (e) of this section.

If, during an ex parte appeal to the Board, it appears to
the Board that an issue not previously raised may render the
mark of the applicant unregistrable, the Board may issue a
written action suspending the appeal and remanding the
application to the Trademark Examining Attorney for further
examination with respect to that issue.  See 37 CFR
2.142(f)(1).  See also In re United States Tobacco Co., 1
USPQ2d 1502, 1505 (TTAB 1986) (rule comes into play only
where a possible ground of refusal not previously raised is
discovered by the Board); In re Opryland USA Inc., 1 USPQ2d
1409, 1411 (TTAB 1986); In re Diet Tabs, Inc., 231 USPQ 587,
588 (TTAB 1986); In re Johanna Farms, Inc., 223 USPQ 459,
461 (TTAB 1984); and Gary D. Krugman, TIPS FROM THE TTAB:
The Amended Trademark Rules of Practice and Their Effect on
Ex Parte Appeals, 74 Trademark Rep. 341 (1984).  See also In
re Wella A.G., 230 USPQ 77 (TTAB 1986) (but see In re Wella
A.G., 858 F.2d 725, 8 USPQ2d 1365 (Fed. Cir. 1988)).  The
further examination must be completed within 30 days from
the date of remand, or within an extension of time for that
purpose.  See 37 CFR 2.142(f)(1).

If the Examining Attorney, upon consideration of the issue
specified in the Board's remand letter, does not believe
that the specified issue renders the mark of the applicant
unregistrable, the Examining Attorney must promptly return
the application to the Board with a written statement that
further examination did not result in an additional ground
for refusal of registration.  See 37 CFR 2.142(f)(2).  See
also In re Diet Tabs, Inc., 231 USPQ 587 (TTAB 1986).

If the Examining Attorney returns the remanded application
to the Board with a written statement that further
examination did not result in an additional ground for
refusal of registration, the Board will resume proceedings
with respect to the appeal, and take further appropriate
action therein.  The issues ultimately determined by the
Board will be those which were the subject of the appeal; no
consideration will be given to the issue which was the
subject of the remand.  See In re Diet Tabs, Inc., 231 USPQ
587 (TTAB 1986).

If, on the other hand, the further examination does result
in an additional ground for refusal of registration, the
Examining Attorney and applicant should proceed as specified
in 37 CFR 2.61 through 2.64.  See 37 CFR 2.142(f)(3).  If
the additional ground for refusal of registration is
ultimately made final, the six-month response clause should
be omitted from the paper in which such action is taken; the
file of the case should be returned to the Board;
proceedings with respect to the appeal will be resumed; and
further appropriate action will be taken therein.
Specifically, the Board will issue an order allowing
applicant 60 days from the date of the order in which to
file a supplemental brief directed (solely) to the
additional ground for refusal of registration.  See 37 CFR
2.142(f)(3).

If applicant fails to file a supplemental brief within the
specified 60-day period, or during an extension of time for
the purpose, the appeal may be dismissed.  See 37 CFR
2.142(f)(3).  If applicant files a supplemental brief, the
Board will send the application file, with applicant's
supplemental brief entered therein, to the Examining
Attorney.  Within 60 days after the date of the Board's
written action forwarding the file to the Examining
Attorney, or within an extension of time for the purpose,
the Examining Attorney must file a written brief answering
the supplemental brief of the applicant.  The Examining
Attorney must also mail a copy of his or her brief to the
applicant.  See 37 CFR 2.142(f)(4).  If the Examining
Attorney's brief is late filed, it may be excluded by the
Board in the absence of an adequate explanation for the late
filing.  Cf. In re Tennessee Walking Horse Breeders' and
Exhibitors' Ass'n, 223 USPQ 188 (TTAB 1984), and TBMP
1203.02(b).  Within 20 days from the mailing date of the
Examining Attorney's brief, or within an extension of time
for the purpose, the applicant may, if it so desires, file a
reply brief.  See 37 CFR 2.142(f)(4).  However, the filing
of a reply brief is not mandatory.  If the applicant files a
reply brief, a copy thereof will be forwarded by the Board
to the Examining Attorney.

If an oral hearing on the appeal had been requested by
applicant prior to the remand of the application, but had
not yet been held, the oral hearing will be set after the
expiration of applicant's time for filing a reply brief
directed to the additional ground for refusal of
registration.  See 37 CFR 2.142(f)(5).  If an oral hearing
had been held prior to the remand, or had not previously
been requested by applicant, an oral hearing may be
requested by applicant by separate paper filed not later
than 10 days after the due date for a reply brief on the
additional ground for refusal of registration; the oral
hearing will be set by the Board upon receipt of the
request.  See 37 CFR 2.142(f)(5).

If the Examining Attorney is persuaded by applicant's
supplemental brief and/or reply brief that the additional
ground for refusal of registration should be withdrawn, the
Examining Attorney should issue a written action withdrawing
the additional ground, and return the application to the
Board for resumption of proceedings with respect to the
appeal.

The Examining Attorney may not, upon remand under 37 CFR
2.142(f)(1), refuse registration on a new ground not
specified in the Board's remand letter.  If the Examining
Attorney, upon remand, wishes to refuse registration on a
new ground not specified in the Board's remand letter, the
Examining Attorney must file a request with the Board,
pursuant to 37 CFR 2.142(f)(6), for jurisdiction to refuse
registration on the new ground.

For information concerning the submission of new evidence
after remand for refusal of registration on an additional
ground, see TBMP 1207.05.



1209.02  Upon Request by Trademark Examining Attorney

37 CFR 2.142(f)(6) If, during an appeal from a refusal of
registration, it appears to the examiner that an issue not
involved in the appeal may render the mark of the appellant
unregistrable, the examiner may, by written request, ask the
Board to suspend the appeal and to remand the application to
the examiner for further examination.  If the request is
granted, the examiner and appellant shall proceed as
provided by 2.61, 2.62, 2.63 and 2.64.  After the
additional ground for refusal of registration has been
withdrawn or made final, the examiner shall return the
application to the Board, which shall resume proceedings in
the appeal and take further appropriate action with respect
thereto.

If, during an ex parte appeal to the Board, it appears to
the Trademark Examining Attorney that an issue not involved
in the appeal may render the mark of the applicant
unregistrable, the Examining Attorney may file a written
request with the Board to suspend the appeal and remand the
application for further examination.  See 37 CFR
2.142(f)(6).  See also In re Wells Fargo & Co., 231 USPQ
116, 119 (TTAB 1986); In re Wells Fargo & Co., 231 USPQ 95,
101 (TTAB 1986); and In re Texsun Tire and Battery Stores,
Inc., 229 USPQ 227, 228 (TTAB 1986) (NOTE:  the cited cases
were decided prior to the adoption of 37 CFR 2.142(f)(6)).

If the Examining Attorney's request for remand is granted,
the application will be forwarded by the Board to the
Examining Attorney for further examination in accordance
with the request.  In its action granting the request, the
Board will allow the Examining Attorney a specified time in
which to issue an Office action pursuant to the request.
Thereafter, the Examining Attorney and applicant should
proceed as provided in 37 CFR 2.61 through 2.64.  See 37
CFR 2.142(f)(6).  Cf. 37 CFR 2.142(f)(3).

When, upon remand, the Examining Attorney either determines
that registration should not be finally refused on the
additional ground for refusal of registration mentioned in
the request for remand, or issues a final refusal to
register on that ground, the six-month response clause
should be omitted from the paper in which such action is
taken; the file of the case should be returned to the Board;
proceedings with respect to the appeal will be resumed; and
further appropriate action will be taken therein.  See 37
CFR 2.142(f)(6).  See also, for information as to the
further action taken by the Board, i.e., for information
concerning the filing of supplemental briefs, and a request
for oral hearing, TBMP 1209.01.

The Examining Attorney may not, upon remand under 37 CFR
2.142(f)(6), refuse registration on a new ground not
mentioned in the Examining Attorney's request for remand.
If the Examining Attorney, upon remand, wishes to refuse
registration on a new ground not mentioned in the request
for remand, the Examining Attorney must file a new request
with the Board for jurisdiction to refuse registration on
the new ground.

For information concerning the submission of new evidence
after remand for refusal of registration on an additional
ground, see TBMP 1207.05.



1209.03  Upon Granted Letter of Protest

A third party which has knowledge of facts bearing upon the
registrability of a mark in a pending application may bring
such information to the attention of the PTO by filing, with
the Director of the Trademark Examining Groups, a "letter of
protest," that is, a letter which recites the facts and
which is accompanied by supporting evidence.  The Director
will determine whether the information should be given to
the Trademark Examining Attorney for consideration.  See
TBMP 215, and authorities cited therein.

Proceedings in an ex parte appeal will not be suspended
pending determination by the Director of a letter of
protest.  However, if a letter of protest is granted during
the pendency of an ex parte appeal, and the Examining
Attorney, having considered the supporting evidence
submitted with the letter of protest, believes that an issue
not involved in the appeal may render the mark of the
applicant unregistrable, the Examining Attorney may file a
written request with the Board, pursuant to 37 CFR
2.142(f)(6), to suspend the appeal and remand the
application for further examination.

For information concerning requests for remand for a new
refusal or new requirement, and the further proceedings in
the case if such a request is granted by the Board, see 37
CFR 2.142(f)(6), and TBMP 1209.02.



1210  Approval for Publication During Appeal

The Trademark Examining Attorney may withdraw an appealed
refusal to register, and approve the involved application
for publication (or for registration, in the case of a
Supplemental Register application), at any time prior to
issuance of the Board's decision in the case.  See TMEP
1501.03.  See also, for example, TBMP 1203.02(b),
1203.02(c), 1204, 1205, and 1207.02.  When the Examining
Attorney does so, the appeal becomes moot.

However, the Examining Attorney should notify the Board (by
telephoning the Board's administrator) that the application
is being approved for publication (or registration), so that
the Board's records may be amended to reflect the
disposition of the application.  The Examining Attorney
should also notify the applicant.  See TMEP 1501.03.



1211  Abandonment During Appeal

37 CFR 2.68 Express abandonment (withdrawal) of
application.
An application may be expressly abandoned by filing in the
Patent and Trademark Office a written statement of
abandonment or withdrawal of the application signed by the
applicant, or the attorney or other person representing the
applicant.  Except as provided in 2.135, the fact that an
application has been expressly abandoned shall not, in any
proceeding in the Patent and Trademark Office, affect any
rights that the applicant may have in the mark which is the
subject of the abandoned application.

During an ex parte appeal to the Board, the applicant may
expressly abandon its involved application by filing in the
PTO a written statement of abandonment or withdrawal of the
application.  The abandonment or withdrawal must be signed
by the applicant or its attorney or other authorized
representative.  See 37 CFR 2.68.

The express abandonment, during an ex parte appeal to the
Board, of the applicant's involved application will not, in
any proceeding in the PTO, affect any rights that the
applicant may have in the mark which is the subject of the
abandoned application.  See 37 CFR 2.68.  See also
Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812,
2 USPQ2d 1264 (1st Cir. 1987).  Cf. (re preclusive effect of
prior final judgment arising out of an ex parte case) In re
Honeywell Inc., 8 USPQ2d 1600 (TTAB 1988); Flowers
Industries Inc. v. Interstate Brands Corp., 5 USPQ2d 1580
(TTAB 1987); and Lukens Inc. v. Vesper Corp., 1 USPQ2d 1299
(TTAB 1986), aff'd, Vesper Corp. v. Lukens Inc., 831 F.2d
306 (Fed. Cir. 1987).

In contrast, after the commencement of an opposition,
concurrent use, or interference proceeding, if the applicant
files a written abandonment of its involved application or
mark without the written consent of every adverse party to
the proceeding, judgment will be entered against the
applicant.  See 37 CFR 2.135, and TBMP 602.01 and 603.



1212  Cancellation or Assignment of Cited Registration

Often, in an ex parte appeal to the Board, the asserted
ground (or one of the asserted grounds) for refusal of
registration is the Section 2(d), 15 U.S.C. 1052(d), ground
that applicant's mark so resembles a mark registered in the
PTO as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, or
to cause mistake, or to deceive.

If, during the pendency of an ex parte appeal involving a
refusal to register under Section 2(d) of the Act, the cited
registration is cancelled, or is assigned to the applicant,
the appeal will be moot insofar as that issue is concerned.
If the refusal to register on the basis of the cancelled or
assigned registration is the only issue involved in the
appeal, the Board will dismiss the appeal as moot, and the
application will be sent to the Trademark Examining Attorney
for approval for publication (or for registration, in the
case of a Supplemental Register application).  If the appeal
involves additional issues, it will go forward solely on the
additional issues.

When an application has been rejected under Section 2(d) of
the Act, and the refusal to register has been appealed to
the Board, it is recommended that the applicant periodically
check the status of the cited registration.  If the
applicant learns that the registration has expired or been
cancelled, the applicant should immediately notify the Board
thereof.  Similarly, if the registration is assigned to
applicant, the applicant should immediately notify the Board
thereof.



1213  Suspension of Appeal

Prior to the issuance of the Board's decision in an ex parte
appeal, proceedings with respect to the appeal may be
suspended by the Board upon written request by applicant
showing good cause for the requested suspension.  Cf. 37 CFR
2.117, and TBMP 510.  Examples of situations in which the
Board may suspend proceedings in an appeal, at the request
of the applicant, are listed below:
     (1) Applicant is involved in a civil action, or a Board
inter partes proceeding, which may be dispositive of the
issue(s) involved in the appeal--Board may suspend pending
final determination of the civil action or Board inter
partes proceeding.
     (2) Another application which involves the same issue
is also on appeal to the Board--Board may suspend pending
final determination of the appeal in the other application.
     (3) A registration cited as a reference, under Section
2(d) of the Act, 15 U.S.C. 1052(d), against applicant's
mark is due, or will soon be due, for an affidavit of
continued use (or excusable nonuse) under Section 8 of the
Act, 15 U.S.C. 1058, or for an application for renewal
under Section 9 of the Act, 15 U.S.C. 1059--Board may
suspend pending determination of whether registration will
continue in existence or will, instead, be cancelled under
Section 8 or expire under Section 9.

A request for suspension of proceedings before the Board in
an ex parte appeal must be filed prior to the issuance of
the Board's final decision in the case.  For example, an
applicant which has appealed a refusal to register under
Section 2(d) of the Act (i.e., a refusal to register on the
ground that applicant's mark so resembles a registered mark
as to be likely to cause confusion) may not wait until it
receives the Board's decision on appeal and then, if the
decision is adverse, file a petition to cancel the cited
registration and request suspension of proceedings in the
appeal pending the final determination of the cancellation
proceeding.  See In re Vycom Electronics Ltd., 21 USPQ2d
1799 (Comm'r 1986).

When proceedings have been suspended, at the request of the
applicant, in an ex parte appeal to the Board, and the event
for which proceedings have been suspended occurs, as, for
example, when a civil action for which proceedings have been
suspended has been finally determined, the applicant should
file a paper notifying the Board thereof and requesting that
further appropriate action be taken in the appeal.

Proceedings in an ex parte appeal may also be suspended by
the Board during remand to the Examining Attorney, as, for
example, during remand for (1) consideration of an amendment
to the application, or (2) consideration of a request for
reconsideration of a final action, or (3) assertion of a new
ground of refusal, or (4) submission of additional evidence.
See TBMP 1202.02; 1203.02(a); 1203.02(b); 1204; 1205;
1206.01; 1207.02; 1207.06; and 1209.



1214  Consolidation

When an applicant has filed an ex parte appeal to the Board
in two or more copending applications, and the cases involve
common issues of law or fact, the Board, upon request by the
applicant or Trademark Examining Attorney or upon its own
initiative, may order the consolidation of the cases for
purposes of briefing, oral hearing, and/or final decision.
See, for example, In re Pebble Beach Co., 19 USPQ2d 1687
(TTAB 1991); In re Del E. Webb Corp., 16 USPQ2d 1232 (TTAB
1990); In re Anton/Bauer Inc., 7 USPQ2d 1380 (TTAB 1988); In
re Weber-Stephen Products Co., 3 USPQ2d 1659 (TTAB 1987); In
re Petersen Manufacturing Co., 2 USPQ2d 2032 (TTAB 1987); In
re Le Sorbet, Inc., 228 USPQ 27 (TTAB 1985); In re San Diego
National League Baseball Club, Inc., 224 USPQ 1067 (TTAB
1983); In re 1776, Inc., 223 USPQ 186 (TTAB 1984); In re
Canadian Pacific Ltd., 222 USPQ 533 (TTAB 1984), aff'd, 754
F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Wallyball,
Inc., 222 USPQ 87 (TTAB 1984); and In re Armour & Co., 220
USPQ 76 (TTAB 1983).  Cf. FRCP 42(a), and TBMP 511.

Although cases consolidated prior to briefing may be
presented on the same brief, they do not have to be.  The
applicant (and/or the Examining Attorney) may file a
different brief in each case, if the applicant (and/or the
Examining Attorney) so desires.  When consolidated cases are
to be presented on the same brief, the brief should bear the
serial number of each consolidated application, and a copy
of the brief should be submitted for each application.



1215  Alternative Positions

Just as the Trademark Examining Attorney may refuse
registration on alternative grounds (such as, that
applicant's mark, as applied to its goods and/or services,
is either merely descriptive or deceptively misdescriptive
of them within the meaning of Section 2(e)(1) of the Act, 15
U.S.C. 1052(e)(1)), so, too, the applicant may, in
appropriate cases, take alternative positions with respect
to a refusal to register.  For example, where registration
has been refused on the ground that applicant's mark, as
applied to its goods and/or services, is merely descriptive
of them, applicant may take the position that its mark is
not merely descriptive, and, alternatively, assert a claim,
under the provisions of Section 2(f) of the Act, 15 U.S.C.
1052(f), that its mark has become distinctive of its goods
and/or services in commerce.  See, for example, In re E S
Robbins Corp., 30 USPQ2d 1540 (TTAB 1992); In re Analog
Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff'd, 871 F.2d
1097, 10 USPQ2d 1879 (Fed. Cir. 1989); In re Engineering
Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Seaman &
Associates Inc., 1 USPQ2d 1657 (TTAB 1986); In re
Professional Learning Centers, Inc., 230 USPQ 70 (TTAB
1986); In re American Home Products Corp., 226 USPQ 327
(TTAB 1985); In re Lillian Vernon Corp., 225 USPQ 213 (TTAB
1985); In re Narwood Productions, Inc., 223 USPQ 1034 (TTAB
1984); In re Anania Associates, Inc., 223 USPQ 740 (TTAB
1984); In re Perfect Fit Industries, Inc., 223 USPQ 92 (TTAB
1984); In re House of Windsor, Inc., 221 USPQ 53 (TTAB
1983); In re Capital Formation Counselors, Inc., 219 USPQ
916 (TTAB 1983); In re Harrington, 219 USPQ 854 (TTAB 1983),
and TMEP 1212.02(c).  Cf. FRCP 8(e)(2), and TBMP 312.03
and 318.02(b).

When an applicant asserts alternative positions, and is not
willing to accept registration on the basis of its
"fallback" position unless the Board determines, on appeal,
that applicant's primary position is not well taken, the
applicant should make its wishes clear both to the Examining
Attorney and to the Board.  For example, when applicant, in
response to a refusal on the ground of mere descriptiveness,
has asserted alternatively that its mark is not merely
descriptive and that the mark has become distinctive in
commerce, but applicant is not willing to accept a
registration issued under Section 2(f) on the basis of the
claim of distinctiveness unless the Board holds, on appeal
from the refusal to register, that the mark is merely
descriptive, applicant should clearly so state.  Otherwise,
if the Examining Attorney finds applicant's claim of
distinctiveness to be persuasive (and there is no other
outstanding ground for refusal to register), the Examining
Attorney will approve the application for publication on
that basis, and any registration issued to applicant will be
issued under the provisions of Section 2(f) of the Act.

If, in an application which is the subject of an ex parte
appeal to the Board, the applicant has asserted alternative
positions (such as, that its mark is not merely descriptive
of its goods and/or services, and that the mark has, in any
event, become distinctive of its goods and/or services in
commerce; or that its mark has become distinctive of its
goods and/or services in commerce, and that the mark is, in
any event, registrable on the Supplemental Register), the
Examining Attorney should clearly state his or her position
with respect to each of applicant's alternative claims.  See
TMEP 1212.02(c).



 1216  Oral Hearing

37 CFR 2.142(e)(1) If the appellant desires an oral
hearing, a request therefor should be made by a separate
notice filed not later than ten days after the due date for
a reply brief.  Oral argument will be heard by at least
three Members of the Trademark Trial and Appeal Board at the
time specified in the notice of hearing, which may be reset
if the Board is prevented from hearing the argument at the
specified time or, so far as is convenient and proper, to
meet the wish of the appellant or his attorney or other
authorized representative.

(2) If the appellant requests an oral argument, the examiner
who issued the refusal of registration or the requirement
from which the appeal is taken, or in lieu thereof another
examiner from the same examining division as designated by
the supervisory attorney thereof, shall present an oral
argument.  If no request for an oral hearing is made by the
appellant, the appeal will be decided on the record and
briefs.

(3) Oral argument will be limited to twenty minutes by the
appellant and ten minutes by the examiner.  The appellant
may reserve part of the time allowed for oral argument to
present a rebuttal argument.

For general information concerning oral hearings in
proceedings before the Board, see TBMP 802.  What follows
below is information pertaining specifically to oral
hearings in ex parte appeals to the Board.

An oral hearing is not mandatory in an ex parte appeal to
the Board, but will be scheduled if a timely request
therefor is filed by the applicant.  See 37 CFR
2.142(e)(1).  If the applicant does not request an oral
hearing, the appeal will be decided on the record and
briefs.  See 37 CFR 2.142(e)(2).  An oral hearing is
particularly useful in ex parte cases involving complex
issues, or where an issue on appeal is not clearly defined.
In addition, the oral hearing sometimes provides an
opportunity for the applicant and Trademark Examining
Attorney to work out an agreement that results in approval
of the application for publication (or for registration, in
the case of a Supplemental Register application).

If the applicant desires an oral hearing in an ex parte
appeal to the Board, the applicant should file a written
request therefor, by separate paper, not later than 10 days
after the due date for the applicant's reply brief.  When a
proper request for an oral hearing has been filed by the
applicant, the Board sets the date and time for the hearing,
and sends the applicant a notice of hearing specifying the
date, time, and location of the hearing.  The hearing will
be set for a time which is convenient for both the applicant
and the Examining Attorney, and will be held at the offices
of the Board, before at least three Board members (i.e.,
administrative trademark judges).  The time for oral hearing
may be reset if the Board is prevented from holding the
hearing at the specified time, or, so far as is convenient
and proper, to meet the wishes of the applicant (or the
applicant's attorney or other authorized representative) or
the Examining Attorney.  See 37 CFR 2.142(e)(1).

If the applicant requests an oral hearing, the Examining
Attorney who issued the Office action from which the appeal
was taken, or another Examining Attorney from the same PTO
law office who has been designated for the purpose by the
managing attorney of that law office, must appear at the
hearing and present an oral argument.  See 37 CFR
2.142(e)(2).

The applicant is allowed 20 minutes for its oral argument,
and the Examining Attorney is allowed 10 minutes.  If the
applicant so desires, it may reserve a portion of its 20
minutes to use for rebuttal argument.  See 37 CFR
2.142(e)(3).  There is no requirement that the applicant
and the Examining Attorney use all of their allotted time.
Often, an ex parte appeal to the Board is of such nature
that oral arguments thereon may be presented in considerably
less than the allotted time.  On the other hand, if, because
of the complexity or novelty of the issues, an applicant
feels that it needs more than 20 minutes for oral argument,
it should file a written request with the Board for
additional time.  Cf. 37 CFR 2.129(a), and TBMP 802.05.
If the request is granted, the Examining Attorney will also
be allowed additional time.

For information concerning audiotaping, visual aids, and the
nature of an oral hearing before the Board, see TBMP
802.06, 802.07, and 802.08, respectively.



1217  Final Decision

For general information concerning final decisions in
proceedings before the Board, see TBMP 803.  What follows
below is information pertaining specifically to final
decisions in ex parte appeals to the Board.

In determining an ex parte appeal, the Board reviews the
appealed decision of the Trademark Examining Attorney to
determine if it was correctly made.  The Board need not find
that the Examining Attorney's rationale was correct in order
to affirm the refusal to register, but rather may rely on a
different rationale.  See In re AFG Industries Inc., 17
USPQ2d 1162 (TTAB 1990); In re Avocet, Inc., 227 USPQ 566
(TTAB 1985); and In re D.B. Kaplan Delicatessen, 225 USPQ
342 (TTAB 1985).  Cf. Yamaha International Corp. v. Hoshino
Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988);
Ilco Corp. v. Ideal Security Hardware Corp., 527 F.2d 1221,
188 USPQ 485 (CCPA 1976); and Hunt v. Treppschuh and
Hentrich, 523 F.2d 1386, 187 USPQ 426 (CCPA 1975).  Thus,
while the Examining Attorney may not raise a new ground for
refusal of registration during appeal, except upon remand by
the Board for the purpose (see TBMP 1209), the Examining
Attorney is not precluded from raising, during appeal, new
arguments and/or additional case citations in support of a
ground for refusal which was timely raised and is a subject
of the appeal.  See In re D.B. Kaplan Delicatessen, supra.

When the Board has issued its final decision in an ex parte
appeal, the Examining Attorney is without jurisdiction to
take any further action therein.  See, for example, In re
Hamilton Bank, 222 USPQ 174 (TTAB 1984); In re Mercedes
Slacks, Ltd., 213 USPQ 397 (TTAB 1982); and TMEP 1501.05.
Similarly, the Board has no authority, either in its final
decision on appeal or thereafter, to remand the case to the
Examining Attorney for further examination.  A case which
has been considered and decided on appeal to the Board may
be reopened only as provided in 37 CFR 2.142(g).  See In re
Johanna Farms, Inc., 223 USPQ 459 (TTAB 1984), and In re
Mercedes Slacks, Ltd., supra.  That is, while the Board, in
its final decision in an opposition, concurrent use, or
interference proceeding, may include a remand to the
Examining Attorney for further examination with respect to a
matter which appears to render the mark of an applicant
unregistrable but which was not tried under the pleadings in
the case (see 37 CFR 2.131, and TBMP 515), the Board
cannot include such a remand in its final decision in an ex
parte appeal.

However, if, at final decision in an ex parte appeal, it
appears to the Board that an issue not previously raised may
render the mark of the applicant unregistrable, the Board
may, without deciding the issue(s) on appeal, suspend the
appeal and remand the application to the Examining Attorney
for further examination.  See 37 CFR 2.142(f)(1), and TBMP
1209.01.  Alternatively, if the issue not previously raised
is an application defect which can easily be corrected by
the applicant, the Board may elect to decide the issue(s) on
appeal, and include in its decision a recommendation that
applicant voluntarily correct the defect if it prevails on
the appealed issue(s).  See In re Lativ Systems, Inc., 223
USPQ 1037 (TTAB 1984), and In re Wallyball, Inc., 222 USPQ
87 (TTAB 1984).



1218  Reopening (Amendment, etc., After Final Decision)

37 CFR 2.142(g) An application which has been considered
and decided on appeal will not be reopened except for the
entry of a disclaimer under section 6 of the Act of 1946 or
upon order of the Commissioner, but a petition to the
Commissioner to reopen an application will be considered
only upon a showing of sufficient cause for consideration of
any matter not already adjudicated.

Once an application has been considered and decided by the
Board on appeal, applicant's course of action normally is
limited to a request for reconsideration of the Board's
decision, and/or the filing of an appeal therefrom (either
by way of an appeal to the Court of Appeals for the Federal
Circuit, or by way of a civil action seeking review of the
Board's decision).  See TBMP 1219.  An application may not
be "reopened," that is, an applicant may not amend its
application, or submit additional evidence, at this stage,
except in two very limited situations.  See 37 CFR
2.142(g); In re Hines, 32 USPQ2d 1376 (TTAB 1994); and In
re Bercut-Vandervoort & Co., 229 USPQ 763 (TTAB 1986).  They
are as follows:
     (1) The application may be reopened by the Board for
entry of a disclaimer under Section 6 of the Act, 15 U.S.C.
1056.  See 37 CFR 2.142(g); In re Petite Suites Inc., 21
USPQ2d 1708 (Comm'r 1991) (Board has authority to remand
application, after decision by Board on appeal, for entry of
a disclaimer); and In re S. D. Fabrics, Inc., 223 USPQ 56
(TTAB 1984) (Board accepts disclaimers after decision by
Board on appeal where the disclaimer puts the application in
condition for publication without the need for any further
examination); and
     (2) The application may be reopened upon order of the
Commissioner, but a petition to the Commissioner to reopen
an application will be considered only upon a showing of
sufficient cause for consideration of any matter not already
adjudicated.  See 37 CFR 2.142(g); In re Vycom Electronics
Ltd., 21 USPQ2d 1799 (Comm'r 1986) (petition to reopen to
allow applicant to file and litigate petition to cancel
cited registration denied); In re Vesper Corp., 8 USPQ2d
1788 (Comm'r 1988) (petitions to reopen are granted only
when proposed amendment would place application in condition
for publication, subject to updating search, and no other
examination by Trademark Examining Attorney would be
required); In re Taverniti, SARL, 228 USPQ 975 (TTAB 1985)
(since applicant's registration was not part of evidentiary
record before Board when it decided case, registration can
be given no consideration in the absence of a successful
petition to the Commissioner to reopen); In re Taverniti,
SARL, 225 USPQ 1263 (TTAB 1985) (it has been practice of the
Commissioner to refuse to reopen, after final decision, for
amendment to the Supplemental Register); In re Johanna
Farms, Inc., 223 USPQ 459 (TTAB 1984) (Board has no
jurisdiction to remand an application, after final decision,
for submission of new evidence; only Commissioner has
authority, after final decision, to remand for the purpose
of reopening the application); In re S. D. Fabrics, Inc.,
223 USPQ 56 (TTAB 1984) (Board cannot accept an amendment to
the Supplemental Register after a case has been decided on
appeal; such an amendment may be accepted only by the
Commissioner upon petition, and Commissioner has in past
denied petitions to reopen to amend to the Supplemental
Register); In re Dodd International, Inc., 222 USPQ 268
(TTAB 1983) (Board denies request to reopen application,
after final decision, for amendment to Supplemental
Register, quoting 37 CFR 2.142(g)); In re Mack Trucks,
Inc., 189 USPQ 642 (Comm'r 1976) (petition to reopen for
letter of consent and for amendment of identification of
goods denied; applicant, having elected to proceed, prior to
Board's decision, without letter of consent assumed the risk
of an adverse decision by Board and does not establish
sufficient cause to reopen; also, both the letter of consent
and amendment would require further examination beyond an
updating search); In re Hickory Manufacturing Co., 183 USPQ
789 (Comm'r 1974) (petition to reopen for disclaimer granted
because subject only to updating search, mark would be ready
for publication upon entry of disclaimer; no other
examination by the Examining Attorney would be required--
NOTE:  this petition was filed under an earlier version of
what is now 37 CFR 2.142(g); the earlier version did not
provide for reopening by the Board for a disclaimer); and Ex
parte Simoniz Co., 161 USPQ 365 (Comm'r 1969) (petition to
reopen for amendment to Supplemental Register denied;
applicant elected a course of action and had a hearing and
an adjudication thereon); and TMEP 1501.05.

When a decision of the Board affirming a refusal to register
in an ex parte case has been appealed to the United States
Court of Appeals for the Federal Circuit, the Court, during
the pendency of the appeal, may remand the application for
further examination and the submission of additional
evidence.  See In re Lowrance Electronics Inc., 14 USPQ2d
1251 (TTAB 1989).



1219  Review of Final Decision

1219.01  By Request for Reconsideration

37 CFR 2.144 Reconsideration of decision on ex parte
appeal.
Any request for rehearing or reconsideration, or
modification of the decision, must be filed within one month
from the date of the decision.  Such time may be extended by
the Trademark Trial and Appeal Board upon a showing of
sufficient cause.

For general information concerning requests for rehearing,
reconsideration, or modification of a final decision of the
Board, see TBMP 544.  What follows below is information
pertaining specifically to requests for rehearing,
reconsideration, or modification of a final decision of the
Board in an ex parte appeal.

An applicant which has filed an ex parte appeal to the
Board, received a final decision therein from the Board, and
is dissatisfied with that decision, may file a request for
rehearing, reconsideration, or modification of the decision.
The request must be filed by the applicant within one month
from the date of the decision.  The time for filing the
request may be extended by the Board upon a showing of
sufficient cause.  See 37 CFR 2.144.

The Board may also rehear, reconsider, or modify its final
decision, in an ex parte appeal, at the request of the
Trademark Examining Attorney.  See In re Ferrero S.p.A., 22
USPQ2d 1800 (TTAB 1992), recon. denied, 24 USPQ2d 1061 (TTAB
1992).  The request must be filed by the Examining Attorney
within one month of the date of the final decision, unless
the time is extended by the Board upon a showing of
sufficient cause.  See In re Ferrero S.p.A., 24 USPQ2d 1061
(TTAB 1992).

If a request for rehearing, reconsideration, or modification
of the Board's final decision in an ex parte appeal is
timely filed, applicant's time for filing an appeal, or for
commencing a civil action for review of the Board's
decision, will expire two months after action on the
request.  See 37 CFR 2.145(d)(1).



1219.02  By Appeal

An applicant which has filed an ex parte appeal to the
Board, received a final decision therein from the Board, and
is dissatisfied with that decision, may have remedy by way
of an appeal to the United States Court of Appeals for the
Federal Circuit, or by way of a civil action for review of
the decision of the Board.  Section 21 of the Act, 15 U.S.C.
1071, and 37 CFR 2.145.  For information concerning the
taking of an appeal from a final decision of the Board, see
TBMP 901-904.

When a decision of the Board affirming a refusal to register
in an ex parte case has been appealed to the United States
Court of Appeals for the Federal Circuit, the Court, during
the pendency of the appeal, may remand the application for
further examination and the submission of additional
evidence.  See TBMP 1218.

