901.02    What May Be Appealed

901.02(a)    Final Decision Versus Interlocutory Decision

The only type of Board decision that may be appealed, whether to the United States Court of Appeals for the Federal Circuit ("Federal Circuit") or by way of civil action, is a final decision, i.e., a final dispositive ruling that ends litigation on the merits before the Board. [ Note 1.]

Interlocutory decisions or orders, i.e., decisions or orders that do not put an end to the litigation before the Board, are not appealable. [ Note 2.]

Appealability is not limited to decisions issued by the Board after final hearing. Other types of Board decisions are also appealable, in those cases where they put an end to the litigation before the Board. [ Note 3.]

On the other hand, if the Board resolves a merits issue prior to final hearing, but other merits issues remain, that is, the litigation is still before the Board as a whole, the Board’s decision on the merits issue is interlocutory, rather than final, for purposes of judicial review. For example, in a case in which there is a counterclaim, if the Board grants summary judgment only as to the counterclaim, the case is not ripe for appeal until there has been a final decision with respect to the original claim; similarly, if the Board grants summary judgment only as to the original claim, the case is not ripe for appeal until there has been a final decision with respect to the counterclaim. [ Note 4.] When the Board, prior to final hearing, issues a decision resolving one or more, but not all, of the merits issues in a case before it, the Board may include in its decision the following statement: "This decision is interlocutory in nature. Appeal may be taken within two months after the entry of a final decision in the case." [ Note 5.]

When an appeal is taken from a decision of the Board, it is the court to which an appeal is taken, not the Board, that determines whether the involved decision is appealable, that is, whether the court has jurisdiction to entertain the appeal. [ Note 6.]

When a final decision of the Board is reviewed on appeal, interlocutory orders or decisions issued during the course of the proceeding before the Board may also be reviewed if they are "logically related" to the basic substantive issues in the case. [ Note 7.]

A party may obtain review of an order or decision of the Board which concerns matters of procedure (rather than the central issue or issues before the Board), and does not put an end to the litigation before the Board, by timely filing a petition to the Director. [ Note 8.] See TBMP § 905. A party may also file a request with the Board for reconsideration of such an order or decision. See TBMP § 518.

The mandamus procedure may not be used as a substitute for the appeal procedure specified in Trademark Act § 21, 15 U.S.C. § 1071. [ Note 9.]

NOTES:

 1.   See R.G. Barry Corp. v. Mushroom Makers, Inc., 609 F.2d 1002, 1005, 204 USPQ 195, 197 (CCPA 1979) (the word "decision" in the statutemeans"final decision"); Gal v. Israel Military Industries of the Ministry of Defense of the State of Israel, 1 USPQ2d 1424, 1427 (Comm’r 1986).

 2.   See Copelands’ Enterprises Inc. v. CNV Inc., 887 F.2d 1065, 12 USPQ2d 1562, 1565 (Fed. Cir. 1989) (where Board granted partial summary judgment dismissing allegation of misuse of registration symbol but denied summary judgment on other potentially dispositive ownership and consent issues, appeal was premature since appealed issues did not result in disposition of case); Zoba International Corp. v. DVD Format/LOGO Licensing Corp., 98 USQP2d 1106, 1115 n.12 (TTAB 2011) (order denying motion for summary judgment as to one of three cancellation proceedings is interlocutory in nature and not yet appealable); Hewlett Packard v. Vudu, Inc., 92 USPQ2d 1630, 1633 n.5 (TTAB 2009) (Board granted partial summary judgment on only one class of goods and pointed out that order was interlocutory, citing Copeland’s Enterprises). See also Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 853 F.2d 888, 7 USPQ2d 1628, 1630 n.2 (Fed. Cir. 1988) (ordinarily denial of summary judgment is interlocutory and not appealable except where, as in this case, decision was a final decision of dismissal [i.e., the Board, in effect, entered judgment in favor of nonmoving party]); Parker Brothers v. Tuxedo Monopoly, Inc., 225 USPQ 1222 (TTAB 1984), appeal dismissed, 757 F.2d 254, 226 USPQ 11, 11 (Fed. Cir. 1985) (order denying summary judgment was interlocutory and thus non-final and non-appealable); Gal v. Israel Military Industries of the Ministry of Defense of the State of Israel, 1 USPQ2d 1424, 1427 (Comm’r 1986) (Director is without jurisdiction to certify an order to the Federal Circuit and Court is without jurisdiction to hear it).

 3.   See, e.g., Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710, 1711 (Fed. Cir. 1991) (decision denying reconsideration of Board’s order dismissing opposition for failure to prosecute was reviewable); Person’s Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1477 (Fed. Cir. 1990) (decision granting summary judgment was reviewable); Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628, 1630 n.2 (Fed. Cir. 1988) (denial of motion for summary judgment where it resulted in judgment against moving party was reviewable); Stanspec Co. v. American Chain & Cable Company, Inc., 531 F.2d 563, 189 USPQ 420, 422 (CCPA 1976) (decision granting motion to dismiss for failure to state a claim is reviewable); Zoba International Corp. v. DVD Format/LOGO Licensing Corp., 98 USQP2d 1106, 1115 n.11 (TTAB 2011) (order granting summary judgment as to two of three cancellation proceedings is a final decision of the Board which may be appealed); Williams v. Five Platters, Inc., 181 USPQ 409 (TTAB 1970), aff’d, 510 F.2d 963, 184 USPQ 744, 745 (CCPA 1975) (reviewing decision denying petitioner’s Fed. R. Civ. P. 60(b) motion to vacate earlier decision granting respondent’s motion for summary judgment).

 4.   See Procter & Gamble Co. v. Sentry Chemical Co., 22 USPQ2d 1589, 1594 n.4 (TTAB 1992) (decision granting opposer’s motion for summary judgment on counterclaim and denying opposer’s motion for partial summary judgment in the opposition was not appealable). See also Copelands’ Enterprises Inc. v. CNV Inc., 887 F.2d 1065, 12 USPQ2d 1562, 1565 (Fed. Cir. 1989) (appeal of order granting partial summary judgment was premature).

 5.   See, e.g., Institut National des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1896 n.17 (TTAB 1998); Procter & Gamble Co. v. Sentry Chemical Co., 22 USPQ2d 1589, 1594 n.4 (TTAB 1992).

 6.   See R.G. Barry Corp. v. Mushroom Makers, Inc., 609 F.2d 1002, 204 USPQ 195, 197 n.3 (CCPA 1979) (following Board’s denial of motion for summary judgment on issue of res judicata, Board’s attempt to "certify" an interlocutory decision as appealable given no effect in court’s determination of whether it had jurisdiction over the appeal); Gal v. Israel Military Industries of the Ministry of Defense of the State of Israel, 1 USPQ2d 1424, 1427 (Comm’r 1986) (Director has no statutory authority to "certify" interlocutory orders of the Board for appeal). See also, with respect to jurisdiction to entertain an appeal, Alltrade Inc. v. Uniweld Products Inc., 946 F.2d 622, 20 USPQ2d 1698, 1701 (9th Cir. 1991).

 7.   See Questor Corp. v. Dan Robbins & Associates, Inc., 599 F.2d 1009, 202 USPQ 100, 104 (CCPA 1979) (denial of motion to strike deposition as untimely filed was a purely procedural issue, not a decision sufficiently related to the merits of the appealable issues); Palisades Pageants, Inc. v. Miss America Pageant, 442 F.2d 1385, 169 USPQ 790, 792 (CCPA 1971), cert. denied, 404 U.S. 938, 171 USPQ 641 (1971) (Board’s decision to deny applicant's motion to amend description of services not logically related to the "jurisdiction-giving issues" in the case, i.e., the issues of likelihood of confusion and laches, and not reviewable).

 8.   See Palisades Pageants, Inc. v. Miss America Pageant, 442 F.2d 1385, 169 USPQ 790, 792 (CCPA 1971), cert. denied, 404 U.S. 938, 171 USPQ 641 (1971).

 9.   See Formica Corp. v. Lefkowitz, 590 F.2d 915, 200 USPQ 641, 646 (CCPA 1979) (stating that this is particularly true where the issue involves jurisdictional questions that Board is competent to decide and that are reviewable in the regular course of appeal).

901.02(b)    Judgment Subject To Establishment Of Constructive Use

In an inter partes proceeding before the Board, no final judgment will be entered in favor of an applicant under Trademark Act § 1(b), 15 U.S.C. § 1051(b), before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to Trademark Act § 7(c), 15 U.S.C. § 1057 (c). [ Note 1.] Rather, in those cases where the Board finds that a § 1(b) applicant is entitled to prevail only if it establishes constructive use, the Board will enter judgment in favor of that applicant, subject to the applicant’s establishment of constructive use. [ Note 2.] If, after entry of that judgment, the § 1(b) applicant files an acceptable statement of use, and obtains a registration, thus establishing its constructive use, final judgment will be entered in behalf of the § 1(b) applicant. If, on the other hand, the § 1(b) applicant fails to establish constructive use, that is, fails to file an acceptable statement of use and obtain a registration, judgment will instead be entered in favor of the adverse party.

When the Board enters judgment in favor of a § 1(b) applicant subject to that party’s establishment of constructive use, the time for filing an appeal or commencing a civil action for review of the Board’s decision runs from the date of the entry of judgment subject to establishment of constructive use. [ Note 3.]

NOTES:

 1.   Trademark Act § 21(a)(4) and Trademark Act § 21(b)(1), 15 U.S.C. § 1071 (a) (4)  and 15 U.S.C. § 1071(b)(1).

 2.   37 CFR § 2.129(d). See also Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840, 1844 (TTAB 1995) (constructive use provision of § 7(c) interpreted differently in Board cases involving right to register and civil actions, such as infringement action, involving a party’s right to use a mark); Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544-45 (TTAB 1991) (judgment entered in favor of applicant subject to applicant’s establishment of constructive use).

 3.   See 37 CFR § 2.129(d). Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544-45 (TTAB 1991).