605.03(d) Breach of Settlement Agreement
If an agreement settling an inter partes proceeding before the Board is breached by one of the parties, an adverse party’s remedy is by way of civil action. The Board has no jurisdiction to enforce such an agreement. However, while the Board does not have jurisdiction to enforce the contract, agreements to cease use of a mark or not to use a mark in a certain format are routinely upheld and enforced to the extent a party may not obtain a registration for exclusive use that may be precluded by the terms of a settlement agreement. [ Note 1.]
NOTES:
1. See Bausch & Lomb, Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1528 (TTAB 2008) (registration refused where agreement recited the parties’ rights to the marks containing a common term and applicant’s use was not expressly authorized); Vaughn Russell Candy Co. and Toymax Inc. v. Cookies in Bloom Inc., 47 USPQ2d 1635, 1638 n.6 (TTAB 1998) (registration refused where settlement agreement precluded use of a portion of applicant’s mark); In re Sun Refining and Marketing Co., 23 USPQ2d 1072, 1074 (TTAB 1991) (refusal affirmed since settlement agreement containing geographic restrictions clearly showed that applicant was not entitled to unrestricted registration).