# TMEP § 715.03(b): Examining Attorney’s Action When New Issue or New Evidence Is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed > Federal · Agency guidance · In force URL: https://www.frixlaw.com/law-library/statutes/TMEP_S715.03(b) ## Section - **Citation:** TMEP § 715.03(b) - **Heading:** Examining Attorney’s Action When New Issue or New Evidence Is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed - **Jurisdiction:** Federal - **Kind:** Agency guidance - **Status:** In force - **Text as of:** August 14, 2026 - **Source:** Compiled text - **Location:** USPTO TMEP / Chapter 0700 - Procedure for Examining Applications / TMEP § 715.03(b) ## Text 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) . ## Nearby sections - [TMEP § 701 Statutory Authority for Examination](https://www.frixlaw.com/law-library/statutes/TMEP_S701.md) - [TMEP § 702.01 Order of Examination](https://www.frixlaw.com/law-library/statutes/TMEP_S702.01.md) - [TMEP § 702.02 “Special” Applications](https://www.frixlaw.com/law-library/statutes/TMEP_S702.02.md) - [TMEP § 702.03(a) Companion Applications](https://www.frixlaw.com/law-library/statutes/TMEP_S702.03(a).md) - [TMEP § 702.03(a)(i) Companion Applications Not Previously Assigned for the Same or Similar Marks](https://www.frixlaw.com/law-library/statutes/TMEP_S702.03(a)(i).md) - [TMEP § 702.03(a)(ii) Companion Applications Previously Assigned](https://www.frixlaw.com/law-library/statutes/TMEP_S702.03(a)(ii).md) - [TMEP § 702.03(a)(iii) Companion Registrations](https://www.frixlaw.com/law-library/statutes/TMEP_S702.03(a)(iii).md) - [TMEP § 702.03(a)(iv) Classification and Identification in Companion Applications that Have Registered or Been Published for Opposition](https://www.frixlaw.com/law-library/statutes/TMEP_S702.03(a)(iv).md) - [TMEP § 702.03(b) Conflicting Applications](https://www.frixlaw.com/law-library/statutes/TMEP_S702.03(b).md) - [TMEP § 703 USPTO Does Not Issue Duplicate Registrations](https://www.frixlaw.com/law-library/statutes/TMEP_S703.md) - [TMEP § 704.01 Initial Examination Must Be Complete](https://www.frixlaw.com/law-library/statutes/TMEP_S704.01.md) - [TMEP § 704.02 Examining Attorney’s Search](https://www.frixlaw.com/law-library/statutes/TMEP_S704.02.md) - [TMEP § 704.03 Supervisory Examining Attorney May Indicate Action for Non-Signatory Examining Attorney](https://www.frixlaw.com/law-library/statutes/TMEP_S704.03.md) - [TMEP § 705 The Examining Attorney’s Letter or Action](https://www.frixlaw.com/law-library/statutes/TMEP_S705.md) --- Source: Frix Law Library, https://www.frixlaw.com/law-library/statutes/TMEP_S715.03(b). Check the current official text before relying on it. Not legal advice.