807 Status of Application After Proceeding
37 CFR §2.136 Status of application or registration on termination of proceeding. After the Board has issued its decision in an opposition, cancellation or concurrent use proceeding, and after the time for filing any appeal of the decision has expired, or any appeal that was filed has been decided and the Board’s decision affirmed, the proceeding will be terminated by the Board. On termination of an opposition, cancellation or concurrent use proceeding, if the judgment is not adverse to the applicant or registrant, the subject application returns to the status it had before the institution of the proceeding and the otherwise appropriate status of the subject registration is unaffected by the proceeding. If the judgment is adverse to the applicant or registrant, the application stands refused or the registration will be cancelled in whole or in part without further action and all proceedings thereon are considered terminated.
Once the Board has issued its decision in an opposition, cancellation or concurrent use proceeding, the Board will terminate the proceeding after the time for filing any appeal of the decision has expired, or any appeal that was filed has been decided and the decision has been affirmed. [ Note 1.]
When an opposition or concurrent use proceeding ends with a judgment which is not adverse to an involved applicant and the Board terminates the proceeding, the application returns to the status it had before the proceeding commenced, unless the Board indicates in its decision that the application must be republished for some reason, or includes in its decision a 37 CFR § 2.131 remand to the examining attorney. [ Note 2.] See TBMP § 805 .
If the proceeding ends with a judgment that is adverse to the applicant, the application stands refused, the status of the application is updated with an "ABANDONED" status and all proceedings are considered terminated. [ Note 3.]
On termination of a cancellation or concurrent use proceeding which ends with a judgment which is not adverse to an involved registrant, the otherwise appropriate status of the subject registration is unaffected by the proceeding. [ Note 4.]
If the judgment is adverse to the registrant, the registration will be cancelled in whole or in part with no further action, the status of the registration is updated with a "CANCELLED" status, and all proceedings are considered terminated. [ Note 5.]
If the application, or registration, was the subject of multiple proceedings brought by unrelated plaintiffs, and the Board finds in favor of one of the plaintiffs, either on summary judgment or at final hearing, the Board usually issues an order to the remaining plaintiffs allowing them time to inform the Board if they wish to go forward to obtain a judgment on the merits, failing which, the proceeding will be dismissed as moot. [ Note 6.]
NOTES:
1. 37 CFR § 2.136. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69968 (October 7, 2016) ("The Office is amending § 2.136 to specify when a proceeding will be terminated by the Board and the status of an application or registration on termination of an opposition, cancellation, or concurrent use proceeding.").
3. 37 CFR § 2.136. See Forest Laboratories Inc. v. G.D. Searle & Co., 52 USPQ2d 1058, 1060 n.3 (TTAB 1999) (if opposition is sustained, application is deemed abandoned); and In re Vesper Corp., 8 USPQ2d 1788, 1789 (Comm’r 1988) (there is no authority for the Commissioner to reopen an application for entry of an amendment after a successful opposition). See also National Patent Development Corp. v. Hercules Inc., 192 USPQ 491, 492 (Comm’r 1976) (Commissioner refused to reopen application for motion to amend after adverse final judgment in opposition).
6. See New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1551 n.3 (TTAB 2011).