807 Status of Application after Proceeding
37 C.F.R. § 2.136 Status of application or registration on termination of proceeding. After the Board has issued its decision in an opposition, cancellation or concurrent use proceeding, and after the time for filing any appeal of the decision has expired, or any appeal that was filed has been decided and the Board’s decision affirmed, the proceeding will be terminated by the Board. On termination of an opposition, cancellation or concurrent use proceeding, if the judgment is not adverse to the applicant or registrant, the subject application returns to the status it had before the institution of the proceeding and the otherwise appropriate status of the subject registration is unaffected by the proceeding. If the judgment is adverse to the applicant or registrant, the application stands refused or the registration will be cancelled in whole or in part without further action and all proceedings thereon are considered terminated.
Once the Board has issued its decision in an opposition, cancellation, or concurrent use proceeding, the Board will terminate the proceeding after the time for filing any appeal of the decision has expired, or any appeal that was filed has been decided and the decision has been affirmed. [ Note 1.] When the proceeding is terminated, the TTABVUE proceeding record will include a prosecution history entry to indicate that the proceeding is "TERMINATED."
NOTES:
1. 37 C.F.R § 2.136. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69968 (October 7, 2016) ("The Office is amending § 2.136 to specify when a proceeding will be terminated by the Board and the status of an application or registration on termination of an opposition, cancellation, or concurrent use proceeding.").
807.01 Abandoned Applications and Registrations Entirely Cancelled
The Board handles all status updates to applications that are abandoned and registrations that are cancelled in their entireties upon termination of inter partes proceedings. [ Note 1.] Please Note: The status update process may take up to one week from the date of termination. If the status of such an application or registration is incorrect after one week, the interested party should contact the Board for assistance.
NOTES:
1. 37 C.F.R § 2.136. See Forest Laboratories Inc. v. G.D. Searle & Co., 52 USPQ2d 1058, 1060 n.3 (TTAB 1999) (if opposition is sustained, application is deemed abandoned); In re Vesper Corp., 8 USPQ2d 1788, 1789 (Comm’r 1988) (there is no authority for the Commissioner to reopen an application for entry of an amendment after a successful opposition). See also National Patent Development Corp. v. Hercules Inc., 192 USPQ 491, 492 (Comm’r 1976) (Commissioner refused to reopen application for motion to amend after adverse final judgment in opposition).
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).