601 Withdrawal by Opposition or Cancellation Plaintiff
601.01 Withdrawal by Opposer
37 CFR § 2.106(c) The opposition may be withdrawn without prejudice before the answer is filed. After the answer is filed, the opposition may not be withdrawn without prejudice except with the written consent of the applicant or the applicant’s attorney or other authorized representative.
An opposer may withdraw its opposition without prejudice at any time before the applicant’s answer is filed. After the answer is filed, however, the opposition may not be withdrawn without prejudice except with the written consent of the applicant or the applicant’s attorney or other authorized representative. [ Note 1.]
For information concerning the effect of a judgment entered against plaintiff for withdrawal after answer without consent, see note below. [ Note 2.]
An opposer may withdraw its opposition by electronically filing with the Board a written withdrawal signed by the opposer or the opposer’s attorney. Written consent must be signed with and submitted as a copy of an original, handwritten signature, or a complying electronic signature. [ Note 3.] The withdrawal should include proof of service upon every other party to the proceeding. [ Note 4.] For more information regarding service of papers, see TBMP § 113.
NOTES:
1. 37 CFR § 2.106(c). See Estee Lauder Inc. v. Aloe Creme Laboratories, Inc., 178 USPQ 254, 256 (TTAB 1973) (opposition dismissed with prejudice where applicant’s statement that favorable decision in civil action renders issues in opposition moot cannot be construed as consent to opposer’s withdrawal). Cf. 37 CFR § 2.114(c) (withdrawal of petition for cancellation); Johnson & Johnson v. Bio-Medical Sciences, Inc., 179 USPQ 765, 766 (TTAB 1973) (although there was no indication that the dismissal of the counterclaims in a previous opposition was "with prejudice," because the record showed that the counterclaims were withdrawn after answer and without consent, it was clear that dismissal was with prejudice and that therefore plaintiff was estopped from attempting to assert same counterclaim in subsequent petition to cancel).
2. See Orouba Agrifoods Processing Co. v. United Food Import, 97 USPQ2d 1310, 1313-15 (TTAB 2010) (dismissal of opposition for failure to file brief and take testimony operates as res judicata in cancellation against the now-registered mark where the cancellation claims are based on the same transactional facts as those asserted in the opposition); Johnson & Johnson v. Bio-Medical Sciences, Inc., 179 USPQ 765, 766 (TTAB 1973) (dismissal of previous counterclaims with prejudice operated as estoppel barring same counterclaims in subsequent proceeding). Cf. Miller Brewing Co. v. Coy International Corp., 230 USPQ 675, 678 (TTAB 1986) (judgment in first opposition, as 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 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 estoppel in subsequent application for a distinctly different mark).
601.02 Withdrawal by Petitioner or Counterclaimant
37 CFR § 2.114(c) The petition for cancellation or counterclaim petition for cancellation may be withdrawn without prejudice before the answer is filed. After the answer is filed, such petition or counterclaim petition may not be withdrawn without prejudice except with the written consent of the registrant or the registrant’s attorney or other authorized representative.
A petitioner or counterclaimant may withdraw its petition for cancellation or counterclaim without prejudice at any time before the registrant’s answer is filed. After the answer is filed, however, the petition for cancellation or counterclaim may not be withdrawn without prejudice except with the written consent of the registrant or the registrant’s attorney or other authorized representative. [ Note 1.]
For information concerning the effect of a judgment entered against plaintiff for withdrawal after answer without consent, see note below. [ Note 2.]
A petitioner or counterclaimant may withdraw its petition for cancellation by electronically filing with the Board a written withdrawal signed by the petitioner or counterclaimant or the petitioner’s or counterclaimant's attorney. Written consent must be in the form of a copy of an original, handwritten signature, or a complying electronic signature. [ Note 3.] The withdrawal should include proof of service upon every other party to the proceeding. [ Note 4.] For more information regarding service of papers, see TBMP § 113.
NOTES:
1. 37 CFR § 2.114(c); Johnson & Johnson v. Bio-Medical Sciences, Inc., 179 USPQ 765, 766 (TTAB 1973). Cf. 37 CFR § 2.106(c) (Withdrawal of Notice of Opposition); Estee Lauder Inc. v. Aloe Creme Laboratories, Inc., 178 USPQ 254, 256 (TTAB 1973).
2. See Orouba Agrifoods Processing Co. v. United Food Import, 97 USPQ2d 1310, 1313-15 (TTAB 2010) (dismissal of opposition for failure to file brief and take testimony operates as res judicata in cancellation against the now-registered mark where the cancellation claims are based on the same transactional facts as those asserted in the opposition); Johnson & Johnson v. Bio-Medical Sciences, Inc., 179 USPQ 765, 766 (TTAB 1973) (dismissal of previous counterclaims with prejudice operated as estoppel barring same counterclaims in subsequent proceeding).
Cf. Sunrise Jewelry Manufacturing Corp. v. Fred S.A., 175 F.3d 1322, 50 USPQ2d 1532, 1536 (Fed. Cir. 1999) (filing of withdrawal of petition sufficient to consider that no proceeding is "pending" and that proceeding was "disposed of" for purposes of filing Section 15 declaration of incontestability); Miller Brewing Co. v. Coy International Corp., 230 USPQ 675, 678 (TTAB 1986) (judgment in first opposition, as 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 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 estoppel in subsequent application for a distinctly different mark).
4. See 37 CFR § 2.119(a).
601.03 Effect of Motion for Judgment
A plaintiff in an opposition or cancellation proceeding or counterclaimant may unilaterally withdraw its complaint without prejudice, even in the face of a defendant’s adverse motion such as a motion to dismiss, motion for summary judgment, or motion for a more definite statement, provided that the withdrawal is filed prior to defendant’s answer to the complaint. When a plaintiff or counterclaimant unilaterally withdraws its complaint prior to answer, in the face of a defendant’s pending motion for judgment, the proceeding will be dismissed without prejudice (unless plaintiff or counterclaimant specifies that it is withdrawing with prejudice), and the pending motion will be declared moot.