806    Termination of Proceeding

When an inter partes proceeding before the Board has been finally determined (that is, when the time for filing an appeal from a decision of the Board determining the case has expired, and no appeal has been filed, or when any appeals filed have been determined), the Board takes certain further steps, based on the judgment entered, to close out the proceeding file and give effect to the judgment. [ Note 1.] The same is true when a proceeding ends by stipulation of the parties, voluntary withdrawal, or consent to judgment by one party.

For example, when a decision of the Board dismissing an opposition becomes final (that is, the time for filing an appeal has expired, and no appeal has been filed, or when any appeals filed have been finally determined), or the opposition is dismissed pursuant to a stipulation of the parties or as the result of a withdrawal by opposer, among other things, the Board normally takes the following steps:

  • (1) The proceeding file, containing all the submissions filed therein, including filings marked as Confidential pursuant to a protective order, is updated to "Terminated" in TTABVUE.
  • (2) After termination, exhibits which were filed in the case and which were not able to be scanned are disposed of by the Board in an appropriate manner unless the party who filed them makes prior arrangements to pick them up.
  • (3) When the opposition status is updated to "Terminated" in TTABVUE, the status of the subject application is updated to "Opposition Terminated – See TTAB Records," and the application is released to the Trademark Examining Operation, which may then take additional appropriate action (and make further appropriate updates to the status of the application), such as:
    • (a) issue a notice of allowance under 37 C.F.R. § 2.81(b)  if the application is an intent-to-use application for which no amendment to allege use under 37 C.F.R. § 2.76  has been submitted and accepted;
    • (b) issue a registration pursuant to 37 C.F.R. § 2.81(a);
    • (c) republish the subject application if necessary.
  • (4) When reexamination of the subject application by the examining attorney is ordered pursuant to 37 C.F.R. § 2.131, the status of the application is updated accordingly and jurisdiction is restored to the examining attorney for further examination. See TBMP § 805 for further information on final decision remands.
  • (5) If the applicant has abandoned the subject application or if the Board orders the application to be abandoned, the status of the application is updated to "Abandoned – After Inter-Partes Decision" in TTABVUE.

The Board normally follows steps one and two set out above when a decision of the Board on a cancellation becomes final. In addition:

  • (6) When a decision of the Board granting a petition for cancellation becomes final, the subject registration is cancelled, in whole or in part, by separate order of the Director with no further action by the parties. Upon the cancellation order by the Director, the cancellation proceeding is terminated in TTABVUE.
  • (7) When a decision of the Board dismissing the petition for cancellation becomes final, the cancellation proceeding is terminated in TTABVUE and the status of the subject registration ultimately reverts to the earlier and otherwise appropriate status.

For further information concerning the status of an application or registration after termination of an opposition, cancellation, or concurrent use proceeding see TBMP § 807.

Because the Board will take the termination steps described above when a Board decision appears to be final, a party that commences a civil action seeking review of the Board’s decision pursuant to Trademark Act § 21(b), 15 U.S.C. § 1071(b), must file written notice thereof with the Board via ESTTA no later than five business days after the party files the complaint in the district court. The notice must include the case name, case number, and court in which the civil action was filed. The party also may file a copy of the complaint with the notice. [ Note 2.] If a party files a civil action, but fails to notify the Board, the Board, believing that its decision has become final, will terminate the proceeding. As a result, a notice of allowance may be issued or an application may be abandoned prematurely, or a registration may be issued or cancelled prematurely while the civil action seeking review of the Board’s decision is still pending. For further information concerning appeal of a Board decision, see TBMP Chapter 900.

For further information regarding access to files see TBMP § 120.

NOTES:

 1.   37 C.F.R. § 2.136.

 2.   37 C.F.R. § 2.145(c)(3).