Modern Woodmen of America

Trademark Trial and Appeal Board

Sep 12, 2012

No. 77203020re (T.T.A.B. Sep. 12, 2012)

Mailed:
September 12, 2012

United States Patent and Trademark Office
Trademark Trial and Appeal Board
________
In re Modern Woodmen of America
________
Serial No. 77203020
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Request for Reconsideration
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Thomas J. Moore of Bacon & Thomas, PLLC for Modern Woodmen of America.

Cory Boone, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______
Before Holtzman, Taylor and Kuczma, Administrative Trademark Judges.
Opinion by Kuczma, Administrative Trademark Judge:
On August 16, 2012, applicant filed a request for reconsideration of the
Board’s decision issued on July 16, 2012 (hereafter “Decision”), affirming the
refusal to register applicant’s mark “MaxCL” under § 2(d) of the Trademark
Act on the ground that applicant’s mark is likely to cause confusion with the
standard character mark “MAX” shown in Registration No. 2866938 and the
“MAX and Design” mark shown in Registration No. 3108696, both owned by
MutualAid eXchange Reciprocal Insurance Co.
This Opinion is NOT a
Precedent of the TTAB
Serial No. 77203020
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Applicant requests reconsideration of the Board’s Decision on the ground
that the Decision relies on evidence that allegedly was not part of the record.
Specifically, at footnotes 6 and 7 of its Decision, the Board relied on evidence
attached to the Request for Reconsideration Denied issued by the trademark
examining attorney on December 14, 2010 (hereafter referred to as “new evi-
dence”). Applicant contends that because the new evidence was submitted af-
ter the notice of appeal was filed, the Board improperly resumed the appeal
following the issuance of the Request for Reconsideration Denied thereby de-
priving applicant of the opportunity to reply to the new evidence.
On December 7, 2010, applicant filed its notice of appeal in conjunction
with a request for reconsideration of the final refusal. In its request for recon-
sideration, applicant amended the description of its services from “life insur-
ance underwriting” to “fraternal services, namely, life insurance underwrit-
ing,” arguing that in view of the amended services there is no likelihood of
confusion with the cited marks. In response to applicant’s request for recon-
sideration, the Board remanded the application to the trademark examining
attorney for review of the reconsideration request.1 See § TMEP 715.04 (7th
edition); TBMP § 1204 (2d ed., 1st rev. March 2004). After considering the re-
quest for reconsideration, the examining attorney issued an action on Decem-
ber 14, 2010 denying the request for reconsideration and maintaining the fi-
nal refusal, attaching evidence consisting of various third-party websites

1 See Board Order of December 7, 2010.
Serial No. 77203020
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showing the scope of services performed by insurance underwriters and the
types of insurance provided by insurance companies. The Board resumed the
appeal on January 7, 2011.
Applicant now seeks reconsideration of the Board’s final Decision on the
ground that the Decision relies on the new evidence submitted by the examin-
ing attorney with the December 14, 2010 Request for Reconsideration Denied
which evidence was not properly in the record.
Ordinarily, the record should be complete prior to the filing of an appeal.
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). Because applicant’s request
for reconsideration was filed in conjunction with its notice of appeal, the ap-
plication was remanded to the examining attorney for consideration of the re-
quest for reconsideration. Therefore, the examining attorney had jurisdiction
to consider the request for reconsideration and may submit new evidence di-
rected to the issues for which reconsideration was sought. See TBMP § 1204
(2d ed., 1st rev. March 2004).2
The new evidence submitted by the examining attorney addressed the is-
sue of the similarity of the services which was raised in the request for recon-
sideration and accordingly is properly in the record. See In re Davey Products
Pty Ltd., 92 USPQ2d 1198, 1201 (TTAB 2009) (evidence attached to a denial

2 This is the edition of the Trademark Trial and Appeal Board Manual that was in
effect at the time the examining attorney acted on applicant’s Request for Reconsid-
eration.
Serial No. 77203020
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of request for reconsideration is considered to have been filed prior to appeal
and is part of the record); TBMP § 1204 (2d ed., 1st rev. March 2004).
Despite the examining attorney’s submission of new evidence, applicant
was not entitled to submit rebuttal evidence in response to the December 14,
2010 Request for Reconsideration Denied. See In re HerbalScience Group
LLC, 96 USPQ2d 1321, 1323 (TTAB 2010) (“It appears that applicant is as-
serting that because the examining attorney submitted evidence as part of the
Office action denying applicant’s request for reconsideration, applicant is enti-
tled to submit evidence in response. That is not correct. See TBMP § 1204
(2d ed. Rev. 2004).”).3 After an appeal is filed, if the applicant or the examin-
ing attorney desires to introduce additional evidence, they may request the
Board to suspend the appeal and to remand the application for further exami-
nation. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). Accordingly, if appli-
cant desired to submit additional evidence, its recourse was to file a request
for remand. See TBMP §§ 1204, 1207.04, and 1209.04 (2d ed., 1st rev. March
2004).
Applicant’s objection to the new evidence submitted by the examining at-
torney and its complaint that it was deprived of an opportunity to respond to
such evidence are manifestly untimely. Applicant’s Appeal Brief contained no
objection to the examining attorney’s new evidence. Even though the examin-

3 Contrary to applicant’s contention in its pending Request for Reconsideration, the
HerbalScience and Davey Products cases involved the same edition of the TBMP that
was in effect at the time the examining attorney submitted the new evidence, name-
ly, Second Edition (June 2003), Revision 1, March 2004.
Serial No. 77203020
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ing attorney’s Appeal Brief specifically referenced the new evidence,4 appli-
cant did not seek the opportunity to submit rebuttal evidence when it subse-
quently filed a request for remand on May 13, 2011,5 nor did it raise any ob-
jection to the new evidence in its Reply Brief. Thus, applicant had several op-
portunities to object to the submission of the new evidence and to seek leave
to submit rebuttal evidence, but did not do so until after the Board issued its
Decision affirming the refusal of registration.
If applicant disagreed with the resumption of the appeal following the is-
suance of the Request for Reconsideration Denied on December 14, 2010, it
should have filed a request for remand. Instead, it proceeded to file its appeal
brief. Our review of the procedural history of the subject application reflects
that the submission of the new evidence was appropriate and that applicant
did not timely raise an objection or seek to submit rebuttal evidence.
In view of the foregoing, applicant’s Request for Reconsideration of the
Board’s Decision is DENIED, and the decision of July 16, 2012 stands.
Applicant is directed to Rule 2.145(d) of the Trademark Rules of
Practice, 37 C.F.R. § 2.145(d), regarding the time for filing an appeal
of the Board’s July 16, 2012, decision. Also see, §§ 902 and 903 TBMP.
It is further noted that Rule 2.145(e) and § 902.02 TBMP address
the requirements for requesting an extension of time for filing an ap-

4 See Examining Attorney’s Appeal Brief pp. 9-10 (unnumbered).
5 On May 13, 2011, applicant filed a request for remand or, in the alternative, exten-
sion to file reply brief, seeking suspension of the appeal to allow applicant to submit
copies of third-party registrations from USPTO records.
Serial No. 77203020
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peal or commencing a civil action, and any such request for extension
must be sought through the office of the USPTO Solicitor, not
through the Board.

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