Examining Attorney’s Action When New Issue or New Evidence Is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed

If the request for reconsideration includes an amendment

that presents a new issue, whether related to the final refusal or not, the examining

attorney must issue a nonfinal action with a response clause that addresses the new

issue and maintains the final refusal.

See

TMEP §705.08

. For example, if the applicant’s request for

reconsideration contains a §2(f) claim of acquired distinctiveness in response to a

final §2(e)(1) refusal, and the claim fails to place the application in condition for

approval, the examining attorney must issue a nonfinal action.

See

TMEP

§714.05(a)(i)

.  However, if the applicant withdraws a prior

amendment submitted in response to a refusal or requirement made by the examining

attorney in an Office action (e.g., an amendment to the Supplemental Register or

§2(f) claim of acquired distinctiveness submitted in response to a §2(e)(1) refusal

or a disclaimer submitted in response to a requirement), this does not raise a new

issue.

See

TMEP

§§715.03(a)(ii)(A)

,

715.04(a)

.

Whenever the examining attorney issues a new

nonfinal

action after review of an applicant’s request for

reconsideration, the Office action must include a response clause

(

see

TMEP §705.08

) and should explain that the applicant must

respond to all requirements or refusals, but that the applicant should not file an

appeal to the Board because an appeal would be premature under

15 U.S.C.

§1070

and

37 C.F.R.

§2.141(a)

.  If the applicant’s response to the new nonfinal

action does not resolve all outstanding requirements or refusals and put the

application in condition for publication or registration, the examining attorney must

issue a "Subsequent Final Action" with a response clause.  This provides the

applicant the opportunity to file an appeal. See

TMEP

§715.04(b)

if a notice of appeal has been filed

.141(a)

.  If the applicant’s response to the new nonfinal

action does not resolve all outstanding requirements or refusals and put the

application in condition for publication or registration, the examining attorney must

issue a "Subsequent Final Action" with a response clause.  This provides the

applicant the opportunity to file an appeal. See

TMEP

§715.04(b)

if a notice of appeal has been filed.

Evidence or amendments that are merely cumulative and

are not significantly different from material previously submitted do

not

raise a new issue that requires the examining attorney to

issue a new final or nonfinal action.

In re GTE Educ. Servs.,

34

USPQ2d 1478, 1480 (Comm'r Pats. 1994) (finding examining attorney properly determined

that no new issue had been raised in request for reconsideration of final refusal

based on inadequate specimens, because the substitute specimens submitted with the

request were deficient for the same reason as original specimens).

If the request for reconsideration does not raise a new

issue, but presents new evidence that is significantly different from evidence

previously submitted, the examining attorney must issue a “Subsequent Final Action”

with a response clause.  This provides applicant with the opportunity to respond

before filing an appeal.  Any response to the subsequent final action will be treated

as a new request for reconsideration and processed according to the guidelines set

forth in

TMEP

§§715.03–715.03(b)

.

Example

:  If an applicant files an executed consent agreement

in response to a final refusal under §2(d) of the Trademark Act, and the examining

attorney finds the consent agreement insufficient to overcome the refusal, the

examining attorney must issue a “Subsequent Final Action.”  However, the examining

attorney should not issue a subsequent final action if the applicant merely states

that it is negotiating a consent agreement.

See

TMEP

§714.05(d)

reement

in response to a final refusal under §2(d) of the Trademark Act, and the examining

attorney finds the consent agreement insufficient to overcome the refusal, the

examining attorney must issue a “Subsequent Final Action.”  However, the examining

attorney should not issue a subsequent final action if the applicant merely states

that it is negotiating a consent agreement.

See

TMEP

§714.05(d)

.

Example

:  The examining attorney must issue a “Subsequent Final

Action” if the applicant asserts unity of control (

see

TMEP

§1201.07

) in response to a final refusal under §2(d),

and the examining attorney determines that unity of control has not been

established.

See

TMEP

§714.05(d)

.

Submission of new arguments in response to the same

refusal or requirement does not raise a new issue that requires the examining

attorney to issue a subsequent final or nonfinal action.  Generally, if the same

refusal or requirement was made before, the examining attorney does not have to issue

a subsequent final or nonfinal action.

See

TMEP

§§714.05–714.05(f)

for further information about

delineating new issues that require issuance of a nonfinal action.

Sometimes action on an application is suspended after a

final refusal has issued. If the grounds for refusal remain operative after the

application is removed from suspension and no new issues have been raised, the

examining attorney must issue a “Subsequent Final Action” with a response clause.

See

TMEP §716.06

.

In a §66(a) application, the examining attorney cannot

issue a new refusal more than 18 months after the date the IB forwards the request

for extension of protection to the USPTO.

See

TMEP

§1904.03(a)

.