807.02 Applications Not Abandoned and Registrations Not Cancelled
When an opposition or concurrent use proceeding ends with a judgment which is not adverse to an involved applicant and the Board terminates the proceeding, the application returns to the status it had before the proceeding commenced, unless the Board indicates in its decision that the application must be republished, or includes in its decision a 37 C.F.R. § 2.131 remand to the examining attorney. [ Note 1.] See TBMP § 805.
When a cancellation or concurrent use proceeding ends with a judgment which is not adverse to an involved registration and the Board terminates the proceeding, the otherwise appropriate status of the subject registration is unaffected by the proceeding. [ Note 2.]
Upon termination of an inter partes proceeding in which the application was not abandoned or the registration was not cancelled in its entirety, the Board updates the "Application Status" field in TTABVUE to reflect "Terminated." However, it is the Trademark Examining Operation that undertakes the electronic transactions necessary to return the application to the status it had before the proceeding was instituted, and to ensure that the otherwise appropriate status of the registration is unaffected by the proceeding. The Board is unable to change the status of the application or registration at this point unless: (1) the placement of the application or registration into "Terminated" status was premature or otherwise inappropriate, or (2) the application or registration should be abandoned or cancelled in its entirety.
Please Note: This status update process can take up to several weeks. If, after a reasonable time, the application or registration has not been electronically transitioned in status from that which the Board enters upon termination of its proceeding to that which the Trademark Examining Operation subsequently enters, the interested party should contact the Trademark Assistance Center for assistance.
If the application or registration was the subject of multiple proceedings brought by unrelated plaintiffs, and the Board finds in favor of one of the plaintiffs, either on summary judgment or at final hearing, the Board usually issues an order to the remaining plaintiffs allowing them time to inform the Board if they wish to go forward to obtain a judgment on the merits, failing which, the proceeding will be dismissed as moot. [ Note 3.]
NOTES:
1. See 37 C.F.R. § 2.136.
3. See New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1551 n.3 (TTAB 2011).