1218    Reopening (Amendment, Etc. After Final Decision)

37 C.F.R. § 2.142(g)  An application which has been considered and decided on appeal will not be reopened except for the entry of a disclaimer under section 6 of the Act of 1946 or upon order of the Director, but a petition to the Director to reopen an application will be considered only upon a showing of sufficient cause for consideration of any matter not already adjudicated.

Once an application has been considered and decided by the Board on appeal, applicant’s course of action normally is limited to a request for reconsideration of the Board’s decision, and/or the filing of an appeal therefrom, either by way of an appeal to the Court of Appeals for the Federal Circuit, or by way of a civil action seeking review of the Board’s decision. See TBMP § 1219. An application may not be "reopened," that is, an applicant may not amend its application, or submit additional evidence, at this stage, except in two very limited situations. [ Note 1.] They are as follows:

  • (1) The application may be reopened by the Board for entry of a disclaimer under Trademark Act § 6, 15 U.S.C. § 1056; [ Note 2.] and
  • (2) The application may be reopened upon order of the Director, but a petition to the Director to reopen an application will be considered only upon a showing of sufficient cause for consideration of any matter not already adjudicated. [ Note 3.]

When a decision of the Board affirming a refusal to register in an ex parte case has been appealed to the United States Court of Appeals for the Federal Circuit, the Court may remand the application for further examination and the submission of additional evidence. [ Note 4.]

NOTES:

 1.   See 37 C.F.R. § 2.142(g); In re House Beer, LLC, 114 USPQ2d 1073, 1077 n.15 (TTAB 2015) (once final decision issues, applicant cannot request suspension of appeal to seek cancellation of cited registration); In re Brack, 114 USPQ2d 1338, 1343 (TTAB 2015) (applicant’s failure to comply with requirement to sign and verify application prior to appeal cannot be remedied after issuance of decision); In re Faucher Industries Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) ("the Board cannot re-write the application to reinstate an identification previously discarded by the applicant, nor can it re-open the application for amendment of the identification by applicant."); In re Societe D’Exploitation de la Marque Le Fouquet’s, 67 USPQ2d 1784, 1789 (TTAB 2003) (no authority to remand after decision on appeal for amendment to filing basis); In re Hines, 32 USPQ2d 1376, 1377 (TTAB 1994) (reconsideration); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 n.3 (TTAB 1986).

 2.   37 C.F.R. § 2.142(g); In re Country Music Association, Inc., 100 USPQ2d 1824, 1835 (TTAB 2011) (requirement for a disclaimer in part affirmed, applicant allowed time to submit disclaimer); In re Brown-Forman Corp., 81 USPQ2d 1284, 1288 (TTAB 2006) (requirement for disclaimer affirmed, but decision would be set aside if applicant submits disclaimer within 30 days); In re Box Solutions Corp., 79 USPQ2d 1953, 1958 (TTAB 2006) (requirement for disclaimer affirmed, but applicant allowed 30 days to submit the disclaimer and decision affirming the requirement would be set aside); In re Crystal Geyser Water Co., 85 USPQ2d 1374, 1379 (TTAB 2007) (requirement for disclaimer affirmed, but applicant allowed 30 days to submit required disclaimer and decision would be set aside); In re Petite Suites Inc., 21 USPQ2d 1708, 1710 (Comm’r 1991) (Board has authority to remand application, after decision by Board on appeal, for entry of a disclaimer); In re S. D. Fabrics, Inc., 223 USPQ 56, 57 n.1 (TTAB 1984) (Board accepts disclaimers after decision by Board on appeal where the disclaimer puts the application in condition for publication without the need for any further examination).

 3.   See 37 C.F.R. § 2.142(g); In re Adlon Brand Gmbh & Co., 120 USPQ2d 1717, 1724 (TTAB 2016) (applicant cannot make a conditional request for remand based on the outcome of the Board’s decision on appeal); In re Integrated Embedded, 120 USPQ2d 1504, 1512 (TTAB 2016) (once final decision rendered request to amend to Supplemental Register not possible); In re Faucher Industries Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) ("the Board cannot re-write the application to reinstate an identification previously discarded by the applicant, nor can it re-open the application for amendment of the identification by applicant."); In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1047 n.2 (TTAB 2002) (request in applicant’s brief that if the refusals are maintained the application be amended to the Supplemental Register denied because application which has been decided on appeal will not be reopened); In re Taverniti, SARL, 228 USPQ 975, 976 (TTAB 1985) (since applicant’s registration was not part of evidentiary record before Board when it decided case, registration can be given no consideration in the absence of a successful petition to the Commissioner [now Director] to reopen); In re Taverniti, SARL, 225 USPQ 1263, 1264 n.3 (TTAB 1985) (it has been practice of the Commissioner [now Director] to refuse to reopen, after final decision, for amendment to the Supplemental Register); In re Johanna Farms, Inc., 223 USPQ 459, 460 (TTAB 1984) (Board has no jurisdiction to remand an application, after final decision, for submission of new evidence; only the Commissioner [now Director] has authority, after final decision, to remand for the purpose of reopening the application; In re S. D. Fabrics, Inc., 223 USPQ 56, 57 n.1 (TTAB 1984) (after a case has been decided on appeal, an amendment to the Supplemental Register may be accepted only by the Commissioner [now Director] upon petition, and Commissioner has in past denied petitions to reopen to amend to the Supplemental Register); In re Dodd International, Inc., 222 USPQ 268, 270 (TTAB 1983) (Board denied request to reopen application, after final decision, for amendment to Supplemental Register, quoting 37 C.F.R. § 2.142(g)); In re Vesper Corp., 8 USPQ2d 1788, 1789 n.3 (Comm’r 1988) (petitions to reopen are granted only when proposed amendment would place application in condition for publication, subject to updating search, and no other examination by examining attorney would be required); In re Vycom Electronics Ltd., 21 USPQ2d 1799, 1800 (Comm’r 1986) (petition to reopen to allow applicant to file and litigate petition to cancel cited registration denied); In re Mack Trucks, Inc., 189 USPQ 642, 643 (Comm’r 1976) (petition to reopen for letter of consent and for amendment of identification of goods denied; applicant, having elected to proceed, prior to Board’s decision, without letter of consent assumed the risk of an adverse decision by Board and does not establish sufficient cause to reopen; also, both the letter of consent and amendment would require further examination beyond an updating search); Ex parte Simoniz Co., 161 USPQ 365, 366 (Comm’r 1969) (petition to reopen for amendment to Supplemental Register denied; applicant elected a course of action and had a hearing and an adjudication thereon); TMEP § 1501.06.

 4.   See In re Spirits International N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1496 (Fed. Cir. 2009) (application remanded because Board applied incorrect standard for materiality in determining mark geographically deceptive); In re Les Halles De Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539, 1542 (Fed. Cir. 2003) (remanded because Board applied standard that had been changed in interim); In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853, 1858 (Fed. Cir. 2003) (remanded for Board to consider record in light of new test set out by Court); In re Lowrance Electronics Inc., 14 USPQ2d 1251, 1251 (TTAB 1989).