901.02(b) Judgment Subject To Establishment Of Constructive Use
In an inter partes proceeding before the Board, no final judgment will be entered in favor of an applicant under Trademark Act § 1(b), 15 U.S.C. § 1051(b), before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to Trademark Act § 7(c), 15 U.S.C. § 1057 (c). [ Note 1.] Rather, in those cases where the Board finds that a § 1(b) applicant is entitled to prevail only if it establishes constructive use, the Board will enter judgment in favor of that applicant, subject to the applicant’s establishment of constructive use. [ Note 2.] If, after entry of that judgment, the § 1(b) applicant files an acceptable statement of use, and obtains a registration, thus establishing its constructive use, final judgment will be entered in behalf of the § 1(b) applicant. If, on the other hand, the § 1(b) applicant fails to establish constructive use, that is, fails to file an acceptable statement of use and obtain a registration, judgment will instead be entered in favor of the adverse party.
When the Board enters judgment in favor of a § 1(b) applicant subject to that party’s establishment of constructive use, the time for filing an appeal or commencing a civil action for review of the Board’s decision runs from the date of the entry of judgment subject to establishment of constructive use. [ Note 3.]
NOTES:
1. Trademark Act § 21(a)(4) and Trademark Act § 21(b)(1), 15 U.S.C. § 1071 (a) (4) and 15 U.S.C. § 1071(b)(1).
2. 37 C.F.R. § 2.129(d). See also Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840, 1844 (TTAB 1995) (constructive use provision of § 7(c) interpreted differently in Board cases involving right to register and civil actions, such as infringement action, involving a party’s right to use a mark); Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544-45 (TTAB 1991) (judgment entered in favor of applicant subject to applicant’s establishment of constructive use).
3. See 37 C.F.R. § 2.129(d). Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544-45 (TTAB 1991).