603 Withdrawal by Interference or Concurrent Use Applicant
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 A request for abandonment or withdrawal may not subsequently be withdrawn.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 in the abandoned application in any proceeding in the Office.
37 C.F.R. § 2.135 Abandonment of application or mark.
After the commencement of an opposition, concurrent use, or interference proceeding, if the applicant files a written abandonment of the application or of the mark without the written consent of every adverse party to the proceeding, judgment shall be entered against the applicant. The written consent of an adverse party may be signed by the adverse party or by the adverse party’s attorney or other authorized representative.
After the commencement of an interference or concurrent use proceeding, if an applicant whose application is a subject of the proceeding files a written abandonment of its application or mark without the written consent of every adverse party to the proceeding, judgment will be entered against the applicant. [ Note 1.] Any concurrent use proceeding will be dissolved, and registration to applicant will be refused.
If, after the commencement of a concurrent use proceeding involving two or more applicants, one of the applicants files an unconsented abandonment of its application, but not of its common law use of its mark, judgment will be entered against that applicant with respect to the registration sought by it. However, if the abandoning applicant is specified as an excepted concurrent user in any other application involved in the proceeding, the abandoning applicant will remain a party to the proceeding as a concurrent user, and every other applicant to the proceeding who, in its own application, has listed that party as an excepted user will retain the burden of proving its entitlement to registration in view of the acknowledged rights of the abandoning applicant. [ Note 2.] On the other hand, if a party to a concurrent use proceeding abandons all rights in its mark and in its application (if any), any remaining party that seeks concurrent registration may move to amend its application to delete the abandoning party as an excepted user. If the abandoning party is the only excepted user specified in a remaining party’s application, the remaining party may move to amend its application to seek a geographically unrestricted registration. [ Note 3.] See TBMP § 1106.05. If the motion is granted, the concurrent use proceeding will be dissolved without prejudice, and the application will be republished, for purposes of opposition, as an application for a geographically unrestricted registration.
If an application which is the subject of an interference or concurrent use proceeding has multiple classes, and the applicant files a request to amend the application to delete a class, the request for amendment is, in effect, an abandonment of the application with respect to that class, and is governed by 37 C.F.R. § 2.135.
A request for abandonment of an application that is the subject of an interference or concurrent use proceeding should be electronically filed with the Board. Applicants must use ESTTA for filing an abandonment of an application involved in an interference or in a concurrent use proceeding. [ Note 4.] For further information regarding ESTTA, see TBMP § 110. Use of the TEAS system for filing an abandonment of such an application is not appropriate. The top of its first page should list both the application serial number, and the interference or concurrent use proceeding number and title. The abandonment should include proof of service thereof upon every other party to the proceeding. [ Note 5.] See TBMP § 113.
If, during the pendency of an interference or concurrent use proceeding involving an application under Trademark Act § 1 or § 44, the Board grants a request by the examining attorney for remand under 37 C.F.R. § 2.130 and the application thereafter becomes abandoned by operation of law, for failure of the applicant to respond to an Office action, or because a final refusal to register is affirmed on appeal, judgment under 37 C.F.R. § 2.135 will not be entered against applicant in the interference, or in the concurrent use proceeding. See TBMP § 515 (Motion to Remand Application to Examining Attorney). 37 C.F.R. § 2.135 comes into play only when there is a written abandonment by the applicant. If, after remand under 37 C.F.R. § 2.130, applicant files a written abandonment of its application without the written consent of every adverse party to the proceeding, judgment will be entered against the applicant pursuant to 37 C.F.R. § 2.135. An application under Trademark Act § 66(a) may not be remanded under 37 C.F.R. § 2.130. [ Note 6.]
Applications based solely on Trademark Act §§ 44 or 66(a) are not subject to concurrent use registration proceedings. [ Note 7.] Applications under § 66(a) are not permitted to have more than one basis. [ Note 8.] As a consequence, § 66(a) applications cannot be subject to concurrent use proceedings.
NOTES:
2. See Fleming Cos. Inc. v. Thriftway Inc., 21 USPQ2d 1451, 1456 (TTAB 1991) (although judgment was entered against excepted user in view of abandonment of its application without consent and therefore user was not entitled to a registration, because said party was listed as exception to plaintiff’s right to use, plaintiff was required to show entitlement to concurrent registration), aff’d, 809 F. Supp. 38, 26 USPQ2d 1551 (S.D. Ohio 1992); Newsday, Inc. v. Paddock Publications, Inc., 223 USPQ 1305, 1308 (TTAB 1984) (once concurrent user is acknowledged, even if application owned by user is expressly abandoned, plaintiff is not entitled to unrestricted registration and still must show entitlement to concurrent use registration). Cf. 37 C.F.R. § 2.99(d)(3); Precision Tune Inc. v. Precision Auto-Tune Inc., 4 USPQ2d 1095 (TTAB 1987) (settlement agreement sufficient to show entitlement as to non-defaulting user but still must show entitlement as to defaulting users and may do so through an ex parte type of showing).
3. See Newsday, Inc. v. Paddock Publications, Inc., 223 USPQ 1305, 1307 (TTAB 1984).
4. See 37 C.F.R. § 2.126(a) and 37 C.F.R. § 2.126(b).
5. See 37 C.F.R. § 2.119(a).
6. See 37 C.F.R. § 2.130. See also 37 C.F.R. § 7.25 (entitled "Sections of part 2 applicable to extension of protection").