TMEP 1501.02(b): Examining Attorney’s Appeal Brief

October 2017 Edition of the TMEP

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1501.02(b)    Examining Attorney’s Appeal Brief

After the applicant’s brief has been filed, the Board will send a notice to the examining attorney.  The examining attorney has sixty days from the date of the Board’s notice to file a responsive brief with the Board and send a copy to the applicant. 37 C.F.R. §2.142(b)(1); see TBMP §1203.02(b).

The examining attorney’s appeal brief should be concise and contain a complete statement of reasons for the refusal(s) or requirement(s) and supporting facts.

Examining attorneys should use the format shown in Appendix A as a model when preparing an appeal brief.  The purpose of this format is to promote consistency and to provide content guidelines.  The substance of the appeal brief is a matter of individual discretion.

The brief may not exceed twenty-five double-spaced pages in length. 37 C.F.R. §2.142(b)(2); TBMP §1203.01; see In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (Board refused to consider applicant’s 29-page brief). When referring to the record, the examining attorney is encouraged to include a citation to the Trademark Status and Document Retrieval database (TSDR). The citation format may be by date, description of filing, and page number, for example: November 4, 2013 Office Action, TSDR p. 2. See TBMP §1203.01.

The record in the application should be complete prior to appeal. 37 C.F.R. §2.142(d). It is not necessary to attach as exhibits to a brief evidence that is already in the application. Exhibits attached to a brief that were not made of record during examination are untimely, and generally will not be considered. However, if the applicant does submit such evidence, the examining attorney should specifically object to such evidence if he or she does not want it to be considered.  If the examining attorney does not object to the evidence, and discusses it in his or her brief or elsewhere in the record, the Board may treat it as of record. TBMP §1207.03; TMEP §710.01(c); see In re Broyhill Furniture Indus., Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001).

If, during the preparation of the appeal brief, the examining attorney determines that jurisdiction should be restored for further examination (e.g., to make a new refusal, to correct informalities, to suspend, or good cause exists to introduce additional evidence), the examining attorney should submit a request for remand instead of an appeal brief. See TMEP §1504.05.  If the Board grants the examining attorney’s request, the Board will stay further proceedings in connection with the appeal.  If the Board denies the request, it will reset the time for submission of the examining attorney’s appeal brief.