1218    Reopening (Amendment, Etc. After Final Decision) in Appeal of Refusal of Application

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, i.e., the Board has issued a final decision, 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. [ Note 1.] 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 2.] 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 3.] 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 4.]

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 action, such as further examination and the submission of additional evidence. [ Note 5.]

NOTES:

 1.   In re Information Builders Inc., 2021 USPQ2d 228, at *1 n.1 (TTAB 2021) (defining "final decision" as final dispositive ruling that ends litigation on the merits before the Board).

 2.   See 37 C.F.R. § 2.142(g); In re Information Builders Inc., 2021 USPQ2d 228, at *4 & n.4 (TTAB 2021) (applicant’s attempt to circumvent adverse final decision by filing express abandonment (without prejudice) under 37 C.F.R. § 2.68, with no mandate from the Federal Circuit and no order from the Director directing Board to give effect to the express abandonment, is impermissible under 37 C.F.R. § 2.142(g), would frustrate the administrative process, and runs contrary to the principle of finality of judgments); In re Carlton Cellars, LLC, 2020 USPQ2d 10150, at *5 (TTAB 2020) (applicant’s failure to comply with requirements for acceptable identification and to pay required application filing fees cannot be remedied after final decision issues); 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).

 3.   37 C.F.R. § 2.142(g); In re Taverna Izakaya LLC, 2021 USPQ2d 1134, at *2-4 (TTAB 2021) (only one component of mark was deemed descriptive, rather than the mark as a whole, so affirmance of descriptiveness refusal could be set aside if applicant submitted disclaimer of descriptive component); In re Guaranteed Rate, Inc., 2020 USPQ2d 10869, at *10 n.50 (TTAB 2020) (disclaimer requirement affirmed, but requirement will have been met if applicant submits disclaimer within 30 days, and application will proceed since disclaimer requirement was only issue on appeal); In re Information Builders Inc., 2020 USPQ2d 10444, at *11-12 (TTAB 2020) (same, and adds that the disclaimer must be submitted before applicant files any appeal of the final decision; in addition, "[t]he submission of the required disclaimer, however, will not overcome the refusal to register under Section 2(d) of the Trademark Act and does not serve to toll the time to appeal the Board’s decision."), appeal dismissed, No. 20-1979 (Oct. 20, 2020); In re UST Global (Singapore) Pte. Ltd., 2020 USPQ2d 10435, at *9 & n.30 (TTAB 2020) (same, and adds that a request to reopen an application after the Board renders a final decision does not toll the time for filing an appeal of the Board’s decision); 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, applicant allowed time to submit disclaimer and decision would be set aside); In re Box Solutions Corp., 79 USPQ2d 1953, 1958 (TTAB 2006) (same); In re Crystal Geyser Water Co., 85 USPQ2d 1374, 1379 (TTAB 2007) (same); 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).

 4.   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. Cf. In re Information Builders Inc., 2021 USPQ2d 228, at *4 & n.4 (TTAB 2021) (applicant’s attempt to circumvent adverse final decision by filing express abandonment (without prejudice) under 37 C.F.R. § 2.68, with no mandate from the Federal Circuit and no order from the Director directing Board to give effect to the express abandonment, is impermissible under 37 C.F.R. § 2.142(g), would frustrate the administrative process, and runs contrary to the principle of finality of judgments).

 5.   SeeIn re Guild Mortgage Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019) (remanded because Board failed to consider 8th du Pont factor in likelihood of confusion analysis notwithstanding that applicant had submitted evidence and made substantive arguments about that factor); 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). Cf. In re Information Builders Inc., 2021 USPQ2d 228, at *4 & n.4 (TTAB 2021) (applicant’s attempt to circumvent adverse final decision by filing express abandonment (without prejudice) under 37 C.F.R. § 2.68, with no mandate from the Federal Circuit and no order from the Director directing Board to give effect to the express abandonment, is impermissible under 37 C.F.R. § 2.142(g), would frustrate the administrative process, and runs contrary to the principle of finality of judgments); In re Forney Industries, Inc., 127 USPQ2d 1787, 1788 n.3 (TTAB 2018) (Board notes necessity of remand for further examination, if the applicant successfully appeals Board’s decision, "to ensure compliance with the requirements for a complete application and acceptable specimens in support of registration" with regard to mark description amendment), vacated and remanded on other grounds, 955 F.3d 940, 2020 USPQ2d 10310 (Fed. Cir. 2020).