Requesting Remand from the TTAB


Prepare a Motion to Remand to Examining Attorney outside of FAST:

To ask the TTAB for a remand, prepare the Motion to Remand to Examining Attorney outside of FAST in Microsoft Word. Then send an e-mail message to TTAB_EFiling & attach the Motion (as a doc file) to the e-mail. If the motion is granted by the TTAB, they will send a copy to the applicant & they will upload it to TTABview. You will receive a letter from them granting the remand in your TTAB web-docket. When you receive the letter ganting the remand you will then prepare an Office Action in FAST for the applicant.

Use of the TTAB e-mail addresses in the USPTO e-mail address book:

Do not use any of the e-mail addresses beginning with "TTAB" for routine communications with the Board. These addresses are group addresses primarily used by the TTAB for internal communications, and they copy many people including Judge Sams and all the judges and attorneys. Please direct any questions about a particular case to the paralegal assigned to the case. If you do not know the name of the assigned paralegal, please feel free to call 308-9300 and ask the TTAB Contact Representatives to connect you to the correct paralegal. You can also e-mail the Contact Reps., Iris Snowden or Traci Alexander, and they will forward your message as appropriate. The paralegal or contact representatives will resolve your question or refer you to the appropriate person.

Use of the TTAB E-filing address:

This address is not for general e-mail communication. Use this address ONLY when submitting a filing which will become part of the TTAB record, most often a request for jurisdiction involving a case on appeal. Appeal briefs are automatically sent to this address when you send the brief to mailing. The address is integrated with the TTABIS workflow system and the submitted documents are routed to the work queue and entered into the record. E-mails such as "I have approved an amendment in this case" or "please remand" should not be submitted to this address. In the first instance, the TTAB does not need notification of a processed amendment. In the latter case, any such e-mail should include an attached motion for remand, not merely an informal e-mail. Please discuss the proper procedure for remand requests with your managing attorney.

When you withdraw an appeal:

As a reminder, do not contact the TTAB when you withdraw a refusal and approve a case for publication. The Board has not required notice since early 2003. Our system automatically terminates the appeal if the case registers or abandons. Also, do not abandon a case when you note that the TTAB has affirmed your refusal. TTAB cases must be held until the time for filing an appeal to federal court has expired. The TTAB will inform you when you should abandon the file. Abandoning the case early will only result in the abandonment being withdrawn until the appeal period expires and the case is properly ready for abandonment.

Amendments and Abandonments during the extension of time process:

The TTAB does not have jurisdiction of the file at any time prior to the filing of a Notice of Opposition. Prior to the filing of an opposition, jurisdiction rests with the Commissioner for Trademarks. This means that if an amendment or an abandonment is filed during the extension period, it must be approved and processed in the TM operation as a post publication amendment. If you receive such an amendment, follow the TMEO process for handling an amendment after publication. Don't inform the TTAB regarding your action on the case - our system is designed to deal with such cases automatically.

In addition, please be aware that the Madrid Protocol rule changes limit the period for filing extensions of time to oppose to 150 days, including the 30 day opposition period, allowing a maximum of 180 days from the date of publication in which a notice of opposition may be filed. Many amendments filed in published cases are pivotal to settlement of the potential opposition. If the amendment is not considered and acted upon within the 180-day period, the potential opposer may have to file the opposition and pay the fee to preserve its rights. it is important that post-publication amendments be processed quickly to aid in settling conflicts and to prevent parties from having to pay unnecessary fees.

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Created on ... March 26, 2007