602.01 Withdrawal by Applicant
37 CFR § 2.68 Express abandonment (withdrawal) of application.
- (a) Written document required . An applicant may expressly abandon an application by filing a written request for abandonment or withdrawal of the application, signed by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with the requirements of § 2.193(e)(2). A request for abandonment or withdrawal may not subsequently be withdrawn.
- (b) Rights in the mark not affected . Except as provided in § 2.135, the fact that an application has been expressly abandoned shall not, in any proceeding in the Office, affect any rights that the applicant may have in the mark in the abandoned application.
37 CFR § 2.135 Abandonment of application or mark. After the commencement of an opposition, concurrent use, or interference proceeding, if the applicant files a written abandonment of the application or of the mark without the written consent of every adverse party to the proceeding, judgment shall be entered against the applicant. The written consent of an adverse party may be signed by the adverse party or by the adverse party’s attorney or other authorized representative.
37 CFR § 7.30 Effect of cancellation or expiration of international registration. When the International Bureau notifies the Office of the cancellation or expiration of an international registration, in whole or in part, the Office shall cancel, in whole or in part, the corresponding pending or registered extension of protection to the United States. The date of cancellation of an extension of protection or relevant part shall be the date of cancellation or expiration of the corresponding international registration or relevant part.
There are five filing bases for an application: (1) use of a mark in commerce under Trademark Act § 1(a), 15 USC § 1051(a); (2) bona fide intention to use a mark in commerce under Trademark Act § 1(b), 15 U.S.C. § 1051(b); (3) a claim of priority, based on an earlier-filed foreign application under Trademark Act § 44(d), 15 U.S.C. § 1126(d); (4) ownership of a registration of the mark in the applicant’s country of origin under Trademark Act § 44(e), 15 U.S.C. § 1126(e); and (5) extension of protection of an international registration to the United States under Trademark Act § 66(a), 15 U.S.C. § 1141f(a).
An application for an extension of protection of an international registration to the United States is referred to as a "§ 66(a) application." Unlike applications under Trademark Act §§ 1 and 44, the basis for a § 66(a) application cannot be changed and there cannot be more than one basis. [ Note 1.]
An applicant may expressly abandon its application by filing in the Office a written statement of abandonment or withdrawal of the application, signed by the applicant or the applicant’s attorney or other authorized representative. A request for abandonment or withdrawal may not subsequently be withdrawn. [ Note 2.]
However, after the commencement of an opposition proceeding, if the applicant files a written abandonment of its subject application or mark without the written consent of every adverse party to the proceeding, judgment will be entered against the applicant. [ Note 3.] The written consent of an adverse party may be signed by the adverse party itself, or by the adverse party’s attorney or other authorized representative. [ Note 4.] The written consent of the adverse party must be signed with an original, handwritten signature, a copy of an original, handwritten signature, or a complying electronic signature. [ Note 5.]
For information concerning the effect of a 37 CFR § 2.135 (abandonment of application or mark) judgment against applicant, see cases cited in the note below. [ Note 6.]
In an opposition to an application having multiple classes, if the applicant files a request to amend the application to delete an opposed class in its entirety, the request for amendment is, in effect, an abandonment of the application with respect to that class, and is governed by 37 CFR § 2.135.
Occasionally, an application may be the subject of more than one opposition brought by unrelated opposers. If an applicant files an abandonment in one opposition, with or without the written consent of the opposer to that opposition, the applicant is usually allowed time to inform the Board whether the abandonment is with or without the consent of the remaining opposers. If the abandonment is with consent in any of the remaining oppositions, the applicant must submit the written consent of any of the remaining opposers who have consented so that judgment is not entered against applicant. Judgment will be entered against the applicant in the remaining oppositions for which the written consent of the opposer is not submitted. [ Note 7.]
An abandonment of an opposed application should be filed with the Board, and should bear at the top of its first page both the application serial number, and the opposition number and title. The Board encourages the use of ESTTA (Electronic System for Trademark Trials and Appeals), the Board’s electronic filing system, for filing an abandonment of an opposed application. Use of the TEAS system is not appropriate for filing an abandonment of an opposed application.
The abandonment should include proof of service upon every other party to the proceeding. [ Note 8.] See TBMP § 113. If an applicant files an unconsented abandonment after the commencement of an opposition, but before applicant has been notified of the opposition by the Board, applicant will be allowed an opportunity to obtain and submit the written consent of every adverse party, or to withdraw the abandonment and defend against the opposition, failing which judgment will be entered against applicant. [ Note 9.] Cf. TBMP § 218. If an opposition and an unconsented abandonment of the opposed application are filed on the same day, the abandonment (unless specifically made with prejudice) is without prejudice to applicant; no proceeding will be instituted; and any submitted opposition fee will be refunded. [ Note 10.] Cf. TBMP § 218.
Abandonment prior to publication. If, after an opposition is filed, it comes to the attention of the Board that the opposed application was abandoned prior to its publication for opposition, the Board will advise the parties that the application is not subject to opposition unless applicant files a petition to the Director under 37 CFR § 2.66 or 37 CFR § 2.146, as appropriate, and the petition is granted. If a prior abandonment comes to the attention of the Board at a time reasonably contemporaneous with the filing of the opposition, and the application is not revived, the opposition will not be instituted, and any submitted opposition fee will be refunded. If the prior abandonment comes to the attention of the Board at a later stage in the opposition, and the application is not revived, the opposition will be dismissed without prejudice. [ Note 11.]
Abandonment for failure to respond to office action after remand. If, during the pendency of an opposition, the Board grants a request by the examining attorney for remand of a § 1 or § 44 application under 37 CFR § 2.130, and the application thereafter becomes abandoned by operation of law for failure of the applicant to respond to an Office action issued by the examining attorney, or because a final refusal to register is affirmed on appeal, judgment under 37 CFR § 2.135 will not be entered against applicant in the opposition. See TBMP § 515 (Motion to Remand Application to Examining Attorney). However, opposer will be given time to decide whether it wishes to go forward to obtain a determination of the opposition on its merits, or to have the opposition dismissed without prejudice as moot. [ Note 12.] Cf. TBMP § 602.02(b). 37 CFR § 2.135 comes into play only when there is a written abandonment by the applicant. If, after remand under 37 CFR § 2.130, applicant files a written abandonment of its application without the written consent of every adverse party to the proceeding, judgment will be entered against the applicant pursuant to 37 CFR § 2.135. A Trademark Act § 66(a) application may not be remanded under 37 CFR § 2.130. [ Note 13.]
Abandonment of Trademark Act § 66(a) application as the result of cancellation of the underlying international registration by the International Bureau. If an international registration is cancelled, in whole or in part, by the International Bureau (IB) for any reason, the IB will notify the USPTO and the USPTO will abandon the corresponding § 66(a) application, in whole or in part, as appropriate. [ Note 14.] When a partial cancellation of the international registration occurs, the IB notifies the USPTO of a "restriction of the request for extension of protection." When a total cancellation occurs, the IB notifies the USPTO of "the death of the international registration." In the case of a § 66(a) application that is the subject of an opposition, if the USPTO is notified of a partial cancellation of the international registration, and such partial cancellation affects the opposed classes, if judgment under 37 CFR § 2.135 is not entered against applicant, opposer will be given time to decide whether it wishes to go forward to obtain a determination of the opposition on its merits, or to have the opposition dismissed without prejudice as moot. If a § 66(a) application that is the subject of an opposition is abandoned by the Office as the result of total cancellation of the underlying international registration or renunciation of the protection sought in the United States, and if judgment under 37 CFR § 2.135 is not entered against applicant, opposer will be given time to decide whether it wishes to go forward to obtain a determination of the opposition on its merits, or to have the opposition dismissed without prejudice as moot. [ Note 15.]
Other exemplary situations involving applicant’s abandonment of its application. If an applicant whose application is the subject of an opposition files an abandonment of the application with the written consent of the opposer, the opposition will be dismissed without prejudice, and the application will stand abandoned.
If the applicant files an abandonment of the application with the written consent of the opposer, and the opposer files a withdrawal of the opposition, the opposition will be dismissed without prejudice, and the application will stand abandoned.
If the applicant files an abandonment of the application with prejudice with the written consent of the opposer, the opposition will be dismissed without prejudice (and the application will stand abandoned with prejudice to applicant’s right to re-register the same mark for the same goods or services), unless the parties specify otherwise in writing. [ Note 16.]
If the applicant files an abandonment of the application with prejudice with the written consent of the opposer, and the opposer files a withdrawal of the opposition with prejudice with the written consent of the applicant, the opposition will be dismissed with prejudice, and the application will stand abandoned with prejudice to applicant’s right to reregister the same mark for the same goods or services. [ Note 17.]
NOTES:
1. See 37 CFR § 2.34(b)(3) and 37 CFR § 2.35; TMEP § 806.01(e) and TMEP § 1904.01(a). Cf. TMEP § 1904.09, which discusses the limited ability to transform a § 66(a) application to one under §§ 1 or 44.
2. 37 CFR § 2.68.
3. 37 CFR § 2.135. See Goodway Corp. v. International Marketing Group Inc., 15 USPQ2d 1749, 1750 (TTAB 1990) (applicant’s abandonment of certain applications without opposer’s written consent resulted in entry of judgment against application with respect to such applications); Grinnell Corp. v. Grinnell Concrete Pavingstones Inc., 14 USPQ2d 2065, 2067 (TTAB 1990) (consent required for abandonment without prejudice regardless of motivation for abandonment, i.e., a concession by applicant that it is not owner of mark and that judgment would be unfair to real owner, a non-party to the case); In re First National Bank of Boston, 199 USPQ 296, 301 (TTAB 1978) (where abandonment of application and notice of opposition were filed on same day, consent was not required because there was no application to oppose).
See also Rolex Watch USA Inc. v. AFP Imaging Corp., 107 USPQ2d 1626, 1628 (TTAB 2013) (judgment entered against applicant under 37 CFR § 2.135 where it filed an abandonment without opposer’s written consent while opposer’s appeal was pending even though appeal was rendered moot); Fleming Companies Inc. v. Thriftway Inc., 21 USPQ2d 1451, 1453 (TTAB 1991) (where excepted user abandoned application in concurrent use proceeding, judgment precluded such applicant from obtaining any registration at all, although it may remain in proceeding as defaulting user), aff’d, 809 F. Supp. 38, 26 USPQ2d 1551 (S.D. Ohio 1992). Cf. Kraft Foods, Inc. v. Desnoes & Geddes Ltd., 64 USPQ2d 1154, 1157 (TTAB 2002) (although not applicable to the facts of the case where the abandonment was filed after the Board’s decision and during the pendency of an appeal, the Board stated "Trademark Rule 2.135 provides that during the pendency of an opposition, if the applicant files an abandonment of the application without the consent of the adverse party, judgment shall be entered against the applicant").
4. See 37 CFR § 2.135.
6. Aromatique Inc. v. Lang, 25 USPQ2d 1359, 1361 (TTAB 1992) (applicant, by abandoning application with prejudice in prior opposition is estopped in subsequent opposition from attempting to register virtually identical mark for identical goods); Miller Brewing Co. v. Coy International Corp., 230 USPQ 675, 678 (TTAB 1986) (judgment in first opposition, as a result of abandonment of application without consent, operates as claim preclusion in subsequent opposition so as to bar applicant’s subsequent application for an insignificantly modified mark); United States Olympic Committee v. Bata Shoe Co., 225 USPQ 340, 342 (TTAB 1984) (abandonment of application without consent in previous opposition does not operate as collateral estoppel or claim preclusion in subsequent cancellation proceeding between same parties since the two cases involve two distinct marks, and does not operate as issue preclusion because no issues were actually litigated in the prior opposition); Bass Anglers Sportsman Society of America, Inc. v. Bass Pro Lures, Inc., 200 USPQ 819, 822 (TTAB 1978) (judgment against applicant in prior opposition due to abandonment of application without consent operated as collateral estoppel in subsequent opposition involving same marks and same parties in opposite positions); In re Communications Technology Corp., 182 USPQ 695, 696 (TTAB 1974) (judgment against applicant in prior opposition between applicant and owner of cited registration is not conclusive of likelihood of confusion and does not operate as a estoppel in subsequent application for a distinctly different mark).
But cf. Sharp Kabushiki Kaisha v. ThinkSharp Inc., 448 F.3d 1368, 79 USPQ2d 1376 (Fed. Cir. 2006) (applicant with two similar marks under opposition did not defend one, accepting default judgment; default judgment did not preclude applicant’s defense of other mark in related opposition); Zachry Infrastructure LLC v. American Infrastructure Inc., 101 USPQ2d 1249, 1254-55 (TTAB 2011) (no estoppel where certain applications expressly abandoned after civil action because they were filed prior to commencement of oppositions on related applications and an applicant faced with oppositions against more than one application should be able to choose which opposition to defend). See also Johnson & Johnson v. Bio-Medical Sciences, Inc., 179 USPQ 765, 766 (TTAB 1973) (voluntary dismissal of previous counterclaims with prejudice operated as estoppel barring same counterclaims in subsequent proceeding).
7. 37 CFR § 2.135. See also New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1550-51 (TTAB 2011) (abandonment must be with written consent of all opposers or judgment will be entered for each opposer who has not consented).
8. See 37 CFR § 2.119(a).
9. Cf. In re First National Bank of Boston, 199 USPQ 296, 301 (TTAB 1978) (where opposition and abandonment were filed on same day).
10. In re First National Bank of Boston, 199 USPQ 296, 301 (TTAB 1978) (where opposition and abandonment were filed on same day, opposition was not considered to have been pending when abandonment was filed, and opposer’s consent was not at issue).
11. Societe des Produits Nestle S.A. v. Basso Fedele & Figli, 24 USPQ2d 1079, 1080 (TTAB 1992).
12. Cf. Bank of America National Trust & Savings Association v. First National Bank of Allentown, 220 USPQ 892, 894 n.6 (TTAB 1984) (opposer elected to adjudicate pleaded issues where applicant had conceded that use was not made until after filing date, and its application was held void ab initio); Daggett & Ramsdell, Inc. v. Procter & Gamble Co., 119 USPQ 350, 350 (TTAB 1958) (applicant in prior opposition consented to judgment and therefore not entitled to registration but in subsequent opposition against same applicant, opposer pressed for determination on merits), rev’d on other grounds, 275 F.2d 955, 125 USPQ 236 (CCPA 1960).
13. See 37 CFR § 7.25 (Sections of part 2 applicable to extension of protection); TMEP § 1504.05 ("In a § 66(a) application, the examining attorney may not request a remand during an inter partes proceeding.").
14. See 37 CFR § 7.30; TMEP § 1904.08.
15. A "cancellation" by the holder of an international registration is a removal of some or all of the goods and services as to all of the designated countries. A "renunciation" is the deletion of all the goods and services to some, but not all, of the designated countries. See also TMEP § 1906.01(e) (Limitation, Renunciation, or Cancellation of International Registration).
16. See Aromatique Inc. v. Lang, 25 USPQ2d 1359, 1361 (TTAB 1992). See also Wells Cargo, Inc. v. Wells Cargo, Inc., 606 F.2d 961, 203 USPQ 564, 567 (CCPA 1979) (applicant’s successor in interest is bound by act of withdrawal of application with prejudice and is barred from again seeking to register same mark for same goods).
17. Cf. Montana v. United States, 440 U.S. 147, 159 (1979) (changes in controlling facts essential to a judgment will render collateral estoppel inapplicable in a subsequent action raising the same issues); Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 424 F.3d 1229, 76 USPQ2d 1310, 1313 (Fed. Cir. 2005) ("A change in trademark usage can constitute a change in transactional facts that avoids preclusion based on the earlier noninfringement decision."); Bingaman v. Dept. of the Treasury, 127 F.3d 1431, 1437 (Fed. Cir. 1997) ("Collateral estoppel is subject to exceptions when the circumstances dictate.… Courts have crafted an exception to the collateral estoppel principle when there has been a change in the applicable law between the time of the original decision and the subsequent litigation in which collateral estoppel is invoked."). See generally J. Thomas McCarthy, 6 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 32:88 (2015).