1211 Abandonment During Appeal
37 C.F.R. § 2.68 Express abandonment (withdrawal) of application.
- (a) Written document required. An applicant may expressly abandon an application by filing a written request for abandonment or withdrawal of the application, signed by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with the requirements of § 2.193(e)(2). A request for abandonment or withdrawal may not subsequently be withdrawn.
- (b) Rights in the mark not affected. Except as provided in § 2.135, the fact that an application has been expressly abandoned shall not affect any rights that the applicant may have in the mark set forth in the abandoned application in any proceeding before the Office.
During an ex parte appeal to the Board, i.e., before the Board issues a final decision [ Note 1.], the applicant may expressly abandon its involved application by filing in the Office a written statement of abandonment or withdrawal of the application. [ Note 2.] The abandonment or withdrawal must be signed by the applicant or its attorney or other authorized representative. [ Note 3.] A request for abandonment or withdrawal may not be subsequently withdrawn. [ Note 4.]
The express abandonment, during an ex parte appeal to the Board, of the applicant’s involved application will not, in any proceeding in the Office, affect any rights that the applicant may have in the mark that is the subject of the abandoned application. [ Note 5.]
In contrast, after the commencement of an opposition, concurrent use, or interference proceeding, if the applicant files a written abandonment of its involved application or mark without the written consent of every adverse party to the proceeding, judgment will be entered against the applicant. [ Note 6.] TBMP § 602.01 and TBMP § 603.
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).
2. 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).
This amendment requiring a signature to the abandonment, effective February 17, 2015, is "intended to provide applicants, registration owners, and the public assurance of the accuracy of the status of applications or registrations after filings are received by the Office." MISCELLANEOUS CHANGES TO TRADEMARK RULES OF PRACTICE AND THE RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS, 80 Fed. Reg. 2303, 2307 (January 16, 2015).
4. 37 C.F.R. § 2.68(a). See, e.g., Rwachsberg Holdings Inc. v. Grüne Erde Beteiligungs GmbH, 2021 USPQ2d 926, at *5-6 (TTAB 2021) ("[T]he Rules of Practice in Trademark Cases … do not allow the withdrawal of an express abandonment of an application"). See also Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812, 2 USPQ2d 1264, 1267 (1st Cir. 1987). Cf. In re Honeywell Inc., 8 USPQ2d 1600, 1601-02 (TTAB 1988) (preclusive effect of prior final judgment arising out of an ex parte case); Flowers Industries Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1583 (TTAB 1987); Lukens Inc. v. Vesper Corp., 1 USPQ2d 1299, 1301 (TTAB 1986), aff’d, 831 F.2d 306 (Fed. Cir. 1987).