Amendment After Decision on Appeal

An examining attorney may not take action in an

application after the Board has rendered a decision on appeal, because the examining

attorney does not have jurisdiction over the application.

See

In re U.S. Catheter & Instrument Corp.

, 158 USPQ 54, 55 n.3 (TTAB

1968). After a decision on appeal, the applicant may file a Petition to Director under

37 C.F.R. §2.142(g)

in the trademark electronic filing system to

reopen prosecution of the application. If the petition is granted, jurisdiction will be

restored to the examining attorney to take the specified action.

A petition to reopen prosecution of the application could

be granted if the appeal involved the applicant’s compliance with a requirement rather

than a refusal based on the nature of the mark.

See

In re Hickory Mfg. Co.

, 183 USPQ 789 (Comm’r Pats. 1974).  However,

the Director will deny a petition to reopen prosecution if granting the petition would

require further examination (e.g., to consider a claim of acquired distinctiveness under

15 U.S.C. §1052(f)

or an amendment to the Supplemental

Register).

See

In re Petite Suites Inc.

, 21 USPQ2d 1708 (Comm’r Pats. 1991);

In re Vycom Elecs. Ltd.

, 21 USPQ2d 1799 (Comm’r Pats. 1986);

In re Mack Trucks, Inc.

, 189 USPQ 642 (Comm’r Pats. 1976);

see also

TBMP §1218

(and cases

cited therein).