1212 Cancellation or Assignment of Cited Registration
Often, in an ex parte appeal to the Board, the asserted ground (or one of the asserted grounds) for refusal of registration is Trademark Act § 2(d), 15 U.S.C. § 1052(d), that is, that applicant’s mark so resembles a mark registered in the USPTO as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion, or to cause mistake, or to deceive.
If, during the pendency of an ex parte appeal involving a refusal to register under Trademark Act § 2(d), 15 U.S.C. § 1052(d), the cited registration is cancelled, or is assigned to the applicant, the appeal will be moot insofar as that issue is concerned. If the refusal to register on the basis of the cancelled or assigned registration is the only issue involved in the appeal, the Board will dismiss the appeal as moot, and the application will be sent to the examining attorney for approval for publication (or for registration, in the case of a Supplemental Register application). If the appeal involves additional issues, it will go forward solely on the additional issues.
When an application has been rejected under Trademark Act § 2(d), 15 U.S.C. § 1052(d), and the refusal to register has been appealed to the Board, it is recommended that the applicant periodically check the status of the cited registration. See TBMP § 1203. The applicant should immediately notify the Board if the applicant learns that the registration has expired or been cancelled, or if the registration is assigned to the applicant.