1307 Deletion of Goods and/or Services at Issue During Appeal from Expungement or Reexamination Proceeding
37 C.F.R § 2.93(d)(3) Deletion of goods and/or services at issue in a pending proceeding in a response, a surrender for cancellation under § 2.172, an amendment of the registration under § 2.173, or any other accepted submission, shall render the proceeding moot as to those goods and/or services, and no further determination will be made regarding the registrant's use of the mark in commerce as to those goods and/or services.
37 C.F.R § 2.172 Surrender for cancellation.
Upon application by the owner, the Director may permit any registration to be surrendered for cancellation. The application for surrender must be signed by the owner of the registration, someone with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter. When a registration has more than one class, one or more entire class(es) but fewer than the total number of classes may be surrendered. Deletion of fewer than all the goods or services in a single class constitutes amendment of the registration as to that class (see § 2.173), rather than surrender. A surrender for cancellation may not subsequently be withdrawn.
37 C.F.R § 2.173 Amendment of registration.
- (a) Form of amendment. The owner of a registration may apply to amend a registration or to disclaim part of the mark in the registration. The owner must submit a written request specifying the amendment or disclaimer. …
- (b) Requirements for request. A request for amendment or disclaimer must:
- (1) Include the fee required by § 2.6;
- (2) Be verified and signed in accordance with § 2.193(e)(6); and
- (3) If the amendment involves a change in the mark: one new specimen per class showing the mark as used on or in connection with the goods, services, or collective membership organization; a verified statement that the specimen was in use in commerce at least as early as the filing date of the amendment; and a new drawing of the amended mark. When requested by the Office, additional specimens must be provided.
- (4) The Office may require the owner to furnish such specimens, information, exhibits, and affidavits or declarations as may be reasonably necessary to the proper examination of the amendment.
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- (e) Amendment of identification of goods, services, or collective membership organization. No amendment in the identification of goods or services, or description of the nature of the collective membership organization, in a registration will be permitted except to restrict the identification or to change it in ways that would not require republication of the mark.
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During an ex parte appeal to the Board from an expungement or reexamination proceeding, i.e., before the Board issues a final decision [ Note 1.], the registrant may surrender for cancellation under § 2.172 the registration at issue, or amend the registration under § 2.173 to delete the goods and/or services at issue in the proceeding. [ Note 2.] The surrender or amendment must be signed by the registrant or its attorney or other authorized representative. [ Note 3.] A deletion of goods and/or services or a surrender for cancellation may not be subsequently withdrawn. [ Note 4.]
Such a deletion of the goods and/or services at issue renders the proceeding moot as to those goods and/or services, and no further determination will be made regarding the registrant's use of the mark in commerce as to those goods and/or services. [ Note 5.]
NOTES:
1. See 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).
3. 37 C.F.R § 2.172, 37 C.F.R § 2.173(b)(2).