Friday, August 07, 2020

Precedential No. 28: TTAB Rejects Amendment to Goods First Made in Applicant's Appeal Brief

This rather mundane Section 2(d) appeal was apparently deemed precedential because of the applicant's attempt, in its appeal brief, to amend the identification of goods in its application, without seeking leave or requesting remand. The Board explained the proper procedure, rejected the amendment, and affirmed the refusal to register the mark shown below, for "paper tubes and cores; paperboards used for protective packaging; and recycled paperboard," not surprisingly finding a likelihood of confusion with the registered mark OX BOX for "corrugated containers" [BOX disclaimed]. In re Ox Paperboard, LLC, 2020 USPQ2d 10878 (TTAB 2020) [precedential] (Opinion by Judge Angela Lykos).

Applicant Ox Paperboard purported to amend the application to expand the listing of goods in class 16 and to add two classes. Examining Attorney Douglas M. Mondell objected on two bases: applicant did not seek to amend at any time during prosecution of this application, and the amendment is unacceptable because it exceeds the scope of the original identification. The Board addressed the first objection.

As a best practice, an applicant should seek an amendment as early as possible during prosecution. If not during prosecution, applicant should file a request for reconsideration after final refusal but before the deadline for appeal  Rule 2.63(b)(3). The next preferred alternative is to file with the Board a separate request for remand and suspension of the appeal, ideally before the filing of an appeal brief.

Embedded amendments in an appeal brief are not prohibited but are discouraged because they may be overlooked by the Board before the examining attorney files his or her brief and may needlessly delay the appeal. See TBMP Section 1205.01. If the examining attorney objects to the amendment, the Board typically treats the attempted amendment as a request for remand for further examination and it considers whether good cause has been shown for the remand.

Good cause will generally be found, for example, when the amendment is an attempt to comply with a requirement, such as an amendment to the identification of goods or services in response to a requirement for an acceptable identification, when the amendment will obviate a ground for refusal, such as an amendment to the Supplemental Register or an amendment to assert a Trademark Act §2(f) claim (15 U.S.C. §1052(f) ) in order to avoid or overcome a refusal under Trademark Act § 2(e)(1), Trademark Act §2(e)(2) or Trademark Act § 2(e)(4), 15 U.S.C. §1052(e)(1), 15 U.S.C. § 1052(e)(2)or 15 U.S.C. §1052(e)(4), or when the examining attorney consents to remand for consideration of the amendment. However, whether good cause will be found will depend, in part, on the stage of the appeal at the time the amendment is filed, including the reason given for the delay. TBMP Section 1205.01

Applicant Ox failed to demonstrate the required good cause as to why the application should be remanded to the Office for consideration of its amendment. It did not even "request" amendment, but presumed it was entitled to amend, and it offered no explanation as to why it waited so long to "propose" the amendment. Moreover, the Board noted, even if accepted the amendment would not obviate the Section 2(d) refusal because the amended goods and services would still be related to registrant's goods.

The Board concluded that applicant failed to establish good cause for suspension of the appeal and remand of the application. Had applicant proceeded in accordance with best practice, the Board noted, the issue could have been resolved prior to issuance of this final decision. "Applicants are strongly encouraged to follow preferred practice in order to ensure the orderly administration of ex parte appeals."

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TTABlogger comment: I'm at a loss for words. Somewhere there's a pun here about being stubborn as an ox, but it's not worth finding.

Text Copyright John L. Welch 2020.


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