1217 Final Decision
For general information concerning final decisions in proceedings before the Board, see TBMP § 803. What follows below is information pertaining specifically to final decisions in ex parte appeals to the Board.
In determining an ex parte appeal, the Board reviews the appealed decision of the examining attorney to determine if it was correctly made. The Board need not find that the examining attorney’s rationale was correct in order to affirm the refusal to register, but rather may rely on a different rationale. [ Note 1.] Further, while the examining attorney may not raise a new ground for refusal of registration during appeal, except upon remand by the Board for the purpose, see TBMP § 1209, the examining attorney is not precluded from raising, during appeal, new arguments and/or additional case citations in support of a ground for refusal which was timely raised and is a subject of the appeal. [ Note 2.]
If there is more than one refusal or requirement that is the subject of an appeal, the Board will normally consider all issues in the appeal, even if the decision on one issue would make a decision on a second issue moot or inconsistent. [ Note 3.] However, in certain circumstances after the Board has affirmed one requirement or refusal it will not reach any further requirement or refusal. [ Note 4.]
Because each class in a multi-class application is considered to be a separate application, the Board may affirm a refusal as to one class and reverse a refusal as to a different class. [ Note 5.]
When the Board has issued its final decision in an ex parte appeal, the examining attorney is without jurisdiction to take any further action therein. [ Note 6.] Similarly, the Board has no authority, either in its final decision on appeal or thereafter, to remand the case to the examining attorney for further examination. A case that has been considered and decided on appeal to the Board may be reopened only as provided in 37 CFR § 2.142(g), as discussed below. [ Note 7.] That is, while the Board, in its final decision in an opposition, concurrent use, or interference proceeding, may include a remand of the application (except a Trademark Act § 66(a), 15 U.S.C. § 1141f (a) application) [ Note 8.] to the examining attorney for further examination with respect to a matter which appears to render the mark of an applicant unregistrable but which was not tried under the pleadings in the case, see TBMP § 515 [ Note 9.], the Board cannot include such a remand in its final decision in an ex parte appeal.
However, if, at final decision in an ex parte appeal, it appears to the Board that an issue not previously raised may render the mark of the applicant unregistrable, the Board may, without deciding the issue(s) on appeal, suspend the appeal and remand the application to the examining attorney for further examination. [ Note 10.] See TBMP § 1209.01. Alternatively, if the issue not previously raised is an application defect that can easily be corrected by the applicant, the Board may elect to decide the issue(s) on appeal, and include in its decision a recommendation that applicant voluntarily correct the defect if it prevails on the appealed issue(s). [ Note 11.] Further, when the Board issues a final decision in an appeal involving an intent-to-use application, it does not preclude the examining attorney from issuing a new refusal or requirement arising in the examination of the statement of use. [ Note 12.]
NOTES:
1. See In re AFG Industries Inc., 17 USPQ2d 1162, 1163 (TTAB 1990); In re Avocet, Inc., 227 USPQ 566, 567 (TTAB 1985); In re D.B. Kaplan Delicatessen, 225 USPQ 342, 343 n.2 (TTAB 1985). Cf. Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1009 (Fed. Cir. 1988); Ilco Corp. v. Ideal Security Hardware Corp., 527 F.2d 1221, 188 USPQ 485, 488 (CCPA 1976); Hunt v. Treppschuh and Hentrich, 523 F.2d 1386, 187 USPQ 426, 428 (CCPA 1975).
2. See In re D.B. Kaplan Delicatessen, 225 USPQ 342, 342 n.2 (TTAB 1985).
3. In re Tires, Tires, Tires, Inc., 94 USPQ2d 1153, 1157 (TTAB 2009) (Board found applied-for phrase generic, but also found that if not generic, the phrase has not acquired distinctiveness); In re Udor U.S.A. Inc., 89 USPQ2d 1978, 1984 (TTAB 2009) (functionality refusal affirmed and in the alternative Board affirmed that configuration fails to function as a source-indicator and has not acquired distinctiveness); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (affirmance of refusal that mark is merely descriptive made the question of whether disclaimer applicant sought to enter moot; for purposes of deciding that issue, applicant’s mark was assumed, arguendo, to be not merely descriptive); In re Cheezwhse.com Inc., 85 USPQ2d 1917, 1921-22 (TTAB 2008) (requirement for product information affirmed; goods assumed, for purposes of determining refusals on grounds of geographic descriptiveness and deceptive geographic misdescriptiveness, to come from place named in mark and not to come from place named in mark, respectively); In re MGA Entertainment Inc., 84 USPQ2d 1743, 1747 (TTAB 2007) (although Board found no trademark rights in the identified goods had been created, it also considered the refusal that the mark was not inherently distinctive and found that acquired distinctiveness was not shown, assuming arguendo that the identified goods were goods in trade); In re Howard Leight Industries LLC, 80 USPQ2d 1507, 1508 (TTAB 2006) (functionality refusal affirmed and in the alternative Board affirmed refusal on the ground that configuration is non-distinctive and has not acquired distinctiveness).
4. In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010) (Board determined likelihood of confusion with respect to only one of the two cited registrations); In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1201-02 (TTAB 2009) (Board determined likelihood of confusion with respect to only one of the two cited registrations); In re DTI Partnership LLP, 67 USPQ2d 1699, 1702 (TTAB 2003) (affirmance of requirement for product information was sufficient basis to refuse registration; Board declined to reach merits of refusal based on mere descriptiveness because applicant’s failure to submit required information hindered Board’s ability to assess the latter refusal).
5. In re Wielinski, 49 USPQ2d 1754, 1760 (TTAB 1998) (affirming refusal to register only as to class 16 and reversing refusal to register as to all other classes); In re Harry N. Abrams, Inc., 223 USPQ 832, 836 (TTAB 1984) (affirming refusal to register as to class 14 and reversing refusal to register as to all remaining classes).
6. See, e.g., In re Hamilton Bank, 222 USPQ 174, 179 (TTAB 1984); In re Mercedes Slacks, Ltd., 213 USPQ 397 n.2 (TTAB 1982); TMEP § 1501.06.
7. See In re Johanna Farms, Inc., 223 USPQ 459, 460 (TTAB 1984) In re Mercedes Slacks, Ltd., 213 USPQ 397, 397 n.2 (TTAB 1982).
8. An application under Trademark Act § 66(a), 15 U.S.C. § 1141f (a) may not be remanded under 37 CFR § 2.131.
11. See In re W.W. Henry Co., 82 USPQ2d 1213, 1213-14 (TTAB 2007) (because claimed date of first use and use in commerce were subsequent to application filing date, final decision allowed applicant to file either an amendment to the dates of use or an amendment to the basis for the application); In re Sandberg & Sikorski Diamond Corp., 42 USPQ2d 1544, 1545 n.1 (TTAB 1996) (in final decision, Board recommended that applicant, if it ultimately prevailed, amend description of mark to clearly set forth claim); In re EBSCO Industries Inc., 41 USPQ2d 1913, 1915 n.3 (TTAB 1996) (if applicant ultimately prevailed, it should file an amended drawing); In re Lativ Systems, Inc., 223 USPQ 1037 n.1 (TTAB 1984); In re Wallyball, Inc., 222 USPQ 87, 88 n.2 (TTAB 1984).
12. See TMEP § 1109.07 et seq.; In re Husqvarna Aktiebolag, 91 USPQ2d 1436, 1439 (TTAB 2009) (when examining attorney examines statement of use, if the specimens fail to show that the mark is used for services as described by applicant, the examining attorney may refuse registration on this basis).