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 electronic proceeding file and give effect to the judgment. [ Note 1.] The same is true when a proceeding ends by stipulation of the parties, 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" in TTABVUE.
- (2) After termination,, exhibits which were filed in the case and which were not able to be scanned are disposed of by the Board in an appropriate manner unless the party who filed them makes prior arrangements to pick them up.
- (3) The electronic folder for the opposition proceeding is updated by selecting an option to send the subject application for issuance of a notice of allowance under 37 CFR § 2.81(b) if the application 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 subject application which is being allowed for issuance, which releases it back to the Trademark Operation for the issuance of a notice of allowance or registration.
- (5) When republication of the subject application is necessary, the status of the application is so updated which automatically queues the application for republication.
- (6) When reexamination of the subject application by the examining attorney is ordered pursuant to 37 CFR § 2.131, 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 for further information on final decision remands.
- (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" in TTABVUE.
- (8) Physical application files– those very few that are not electronic – are transferred to the National Archives after 5 years for permanent retention.
[ Note 2.]
The Board normally follows steps one, two and eight set out above when a decision of the Board on a cancellation becomes final. In addition:
- (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 with no further action by the parties. Upon the cancellation order by the Director, the cancellation proceeding is terminated in TTABVUE.
- (10) When a decision of the Board dismissing the petition for cancellation becomes final, the cancellation proceeding is terminated in TTABVUE and the status reverts to the earlier and otherwise appropriate status of the subject registration.
For further information concerning the status of an application or registration after termination of an opposition, cancellation, or concurrent use proceeding see TBMP § 807.
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 via ESTTA no later than five business days after the party files the complaint in the district court. The notice must include the case name, case number, and court in which the civil action was filed. The party also may file a copy of the complaint with the notice. [ Note 3.] 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 concerning appeal of a Board decision, see TBMP Chapter 900.
For further information regarding access to files see TBMP § 120.
NOTES:
2. Some files older than 2009 exist partially in physical form and partially in electronic form.