806    Termination of Proceeding

When an inter partes proceeding before the Board has been finally determined (that is, when the time for filing an appeal from a decision of the Board determining the case has expired, and no appeal has been filed, or when any appeals filed have been determined), the Board takes certain further steps, based on the judgment entered, to close out the proceeding file and give effect to the judgment. The same is true when a proceeding ends by stipulation of the parties, or by a voluntary withdrawal or consent to judgment by one party.

For example, when a decision of the Board dismissing an opposition becomes final (that is, the time for filing an appeal has expired, and no appeal has been filed), or the opposition is dismissed pursuant to a stipulation of the parties or as the result of a withdrawal by opposer, among other things, the Board normally takes the following steps:

  • (1) The electronic folder, containing all the submissions filed therein, including filings marked as Confidential pursuant to a protective order, is updated to "Terminated."
  • (2) Exhibits. After termination,, exhibits which were filed in the case which were not able to be scanned are disposed of by the Board in an appropriate manner unless the party who filed them makes arrangements to pick them up.
  • (3) The electronic folder for the opposition proceeding is updated by selecting the option to send the application to issuance of a notice of allowance under 37 CFR § 2.81(b), in an intent-to-use application for which no amendment to allege use under 37 CFR § 2.76  has been submitted and accepted; or for issuance of a registration pursuant to 37 CFR § 2.81(a).
  • (4) The termination of the opposition proceeding will cause an automatic update to the status of the application which is being allowed for issuance, which releases it back to the Trademark Operation for the issuance of a notice of allowance or issuance of a registration.
  • (5) When republication of the application at issue is necessary, the status of the application is updated which automatically queues the application to republish.
  • (6) When reexamination of the application by the examining attorney pursuant to a 37 CFR § 2.131  request for remand has been granted, the status of the application is updated accordingly and the application is sent to the examining attorney’s queue for further action. See TBMP § 805 .
  • (7) If the applicant has abandoned the subject application or if the Board orders the application to be abandoned, the status of the application is updated to "Abandoned."
  • (8) Physical application files, that is, those that are not electronic, are stored at the USPTO warehouse. If the application is a physical file, it will remain at the USPTO warehouse pending its destruction approximately three years after abandonment.
  • (9) When a decision of the Board granting a petition for cancellation becomes final, the subject registration is cancelled, in whole or in part, by separate order of the Director. Upon the cancellation order by the Director, the cancellation proceeding is terminated in the same manner as an opposition.
  • (10) When a decision of the Board dismissing the petition for cancellation becomes final, the termination of the cancellation proceeding occurs the same as an opposition proceeding.

If an opposition or cancellation proceeding is part paper file and part electronic file, the same procedures for the termination of the partially electronic file are followed as those involved in a fully electronic file. The involved application/registration is also processed in the same manner as one involved in a fully electronic file. In addition, the Board normally takes the following steps:

  • (1) The physical file, with the papers filed prior to the file becoming an electronic folder, will be sent to the USPTO warehouse where terminated inter partes proceeding files are stored.
  • (2) Confidential materials, filed under protective order prior to the creation of the electronic folder, will be disposed of by the Board in an appropriate manner , unless the party filing them makes arrangements to pick them up.
  • (3) Exhibits which were filed prior to the file becoming an electronic folder and/or which are not able to be scanned into the Board’s electronic system will be disposed of in an appropriate manner, unless the party filing them makes arrangements to pick them up.

Because the Board will take the termination steps described above when a Board decision appears to be final, a party that commences a civil action, seeking review of the Board's decision pursuant to Trademark Act § 21(b), 15 U.S.C. § 1071(b), must file written notice thereof with the Board. [ Note 1.] Board practice requires that the written notice be filed within one month after the expiration of the time for appeal or civil action. If a party files a civil action, but fails to notify the Board, the Board, believing that its decision has become final, will terminate the proceeding. As a result, a registration may be issued or cancelled prematurely, while the civil action seeking review of the Board's decision is still pending. For further information regarding appeal of a Board decision, see TBMP Chapter 900.

For further information regarding access to files, see TBMP § 120.

NOTES:

 1.   37 CFR § 2.145(c).