901.02(b) Judgment Subject To Establishment Of Constructive Use
In an inter partes proceeding before the Board, no final judgment will be entered in favor of an applicant under Trademark Act § 1(b), 15 U.S.C. § 1051(b), before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to Trademark Act § 7(c), 15 U.S.C. § 1057(c). [ Note 1.] Rather, in those cases where the Board finds that a § 1(b) applicant is entitled to prevail only if it establishes constructive use, the Board will enter judgment in favor of that applicant, subject to the applicant’s establishment of constructive use. [ Note 2.] If, after entry of that judgment, the § 1(b) applicant files an acceptable statement of use, and obtains a registration, thus establishing its constructive use, final judgment will be entered in behalf of the § 1(b) applicant. If, on the other hand, the § 1(b) applicant fails to establish constructive use, that is, fails to file an acceptable statement of use and obtain a registration, judgment will instead be entered in favor of the adverse party.
When the Board enters judgment in favor of a § 1(b) applicant subject to that party’s establishment of constructive use, the time for filing an appeal or commencing a civil action for review of the Board’s decision runs from the date of the entry of judgment subject to establishment of constructive use. [ Note 3.]
NOTES:
1. Trademark Act § 21(a)(4) and Trademark Act § 21(b)(1), 15 U.S.C. § 1071(a)(4) and 15 U.S.C. § 1071(b)(1).
2. 37 C.F.R. § 2.129(d). See also RxD Media, LLC v. IP Application Development LLC, 125 USPQ2d 1801, 1809 n.50, 1816 (TTAB 2018) (judgment entered in favor of applicant subject to establishment of constructive use; Board decision contingent on registration, if and when registration is issued appropriate action is taken to terminate the proceeding), aff’d, 377 F. Supp. 3d 588 (E.D. Va. 2019), aff’d, 986 F.3d 361, 2021 USPQ2d 81 (4th Cir. 2021);Kraft Group LLC v. William A. Harpole, 90 USPQ2d 1837, 1842 (TTAB 2009) (judgment in favor of applicant subject to establishment of constructive use); Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840, 1844 (TTAB 1995) (constructive use provision of § 7(c) interpreted differently in Board cases involving right to register and civil actions, such as infringement action, involving a party’s right to use a mark); Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544-45 (TTAB 1991) (judgment entered in favor of applicant subject to applicant’s establishment of constructive use).
3. See 37 C.F.R. § 2.129(d); RxD Media, LLC v. IP Application Development LLC, 125 USPQ2d 1801, 1816 (TTAB 2018), aff’d, 377 F. Supp. 3d 588 (E.D. Va. 2019), aff’d, 986 F.3d 361, 2021 USPQ2d 81 (4th Cir. 2021); Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544-45 (TTAB 1991).