803    Final Decision

After an oral hearing has been held in a Board inter partes proceeding, the case is set down for final decision. If no oral hearing is requested, the case is set down for final decision after the due date for filing the last reply brief.

A panel of at least three Administrative Trademark Judges or other statutory members of the Board (collectively "judges") renders the final decision. [ Note 1.] See TBMP § 802.04. When there has been an oral hearing in a case, the final decision normally is rendered by the panel before whom the oral hearing was held. If one of the three judges before whom an oral hearing was held is unable to participate in the final decision, another judge may be substituted at final decision for the missing judge. TBMP § 802.04.

The Board may use an augmented panel at final decision. For information concerning the use of an augmented panel, see TBMP § 540. For further information concerning the constitution of Board panels, see Trademark Act § 17, 15 U.S.C. § 1067; and In re Alappat, 33 F.3d 1526, 31 USPQ2d 1545, 1547-51 (Fed. Cir. 1994) (en banc).

Generally, every judge assigned to decide the case does not read the full evidentiary record in a case. Rather, one judge is assigned to read the testimony and examine the other evidence of record, discuss the case with the other judges, and then draft a decision and supporting opinion. The draft is circulated to the other judges for their approval. A judge who does not agree with the decision may write a dissent. [ Note 2.] A judge who agrees with the decision, but disagrees with the reasoning expressed in the opinion supporting the decision, or wishes to express additional reasons, may write a concurring opinion.

When the judges rendering the decision have completed a final decision, a copy is sent to every party to the proceeding. All final decisions are posted on the USPTO website and are available for public viewing via TTABVUE and the TTAB Reading Room webpage, both of which may be accessed by proceeding number or other criteria. A link to the TTAB Reading Room is available on the Board’s webpage or may be accessed directly at https://ttab-reading-room.uspto.gov/efoia/efoia-ui/#/search/decisions . For more information regarding access to files, see TBMP § 120.

Trademark Act § 21, 15 U.S.C. § 1071, and 37 C.F.R. § 2.145  govern any appeal from a final decision of the Board. For more information regarding appeals, see TBMP Chapter 900.

In some instances, the Board in its decision may not decide all of the tried claims. [ Note 3.]

The Board in its discretion may issue a bifurcated decision on a matter raised in the parties’ briefing prior to rendering a final decision on the merits. [ Note 4.]

NOTES:

 1.   See Trademark Act § 17, 15 U.S.C. § 1067.

 2.   See, e.g., Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1414-18 (TTAB 2010) (one judge dissenting). See also In re Adlon Brand GmbH & Co. KG, 120 USPQ2d 1717, 1725-29 (TTAB 2016) (same); In re Lebanese Arak Corp., 94 USPQ2d 1215, 1221-24 (TTAB 2010) (two judges in augmented panel wrote dissent).

 3.   Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd., 126 USPQ2d 1526, 1540 n.52 (TTAB 2018) (Board has "‘discretion to decide only those claims necessary to enter judgment and dispose of the case," as our "determination of registrability does not require, in every instance, decision on every pleaded claim.’") (quoting Multisorb Tech., Inc. v. Pactive Corp., 109 USPQ2d 1170, 1171 (TTAB 2013)); Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1478 (TTAB 2017) (same). See also McGowen Precision Barrels, LLC v. Proof Research, Inc., 2021 USPQ2d 559, at *66 n.195 (TTAB 2021) (in light of decision on functionaility, Board does not reach remaining grounds); American Paging Inc. v. American Mobilphone Inc., 13 USPQ2d 2036, 2039-40 (TTAB 1989) (electing to consider neither whether the claim of abandonment is properly before the Board, nor the merits of the claim of abandonment, where granting petition for cancellation under Section 2(d) of the Trademark Act), aff'd, 923 F.2d 869, 17 USPQ2d 1726 (Fed. Cir. 1990) (non-precedential).

 4.   See, e.g., Destileria Serralles, Inc. v. Kabushiki Kaisha Donq, 125 USPQ2d 1463 (TTAB 2017) (Board addressed a pleading issue in a separate opinion).