Monday, March 01, 2021

Precedential No. 3: TTAB Rejects Applicant's Express Abandonment of Application "Without Prejudice" After Adverse Final Decision

In the shortest precedential decision in recent memory, the Board rejected this applicant's attempt to expressly abandon its application "without prejudice" after the Board had issued a final decision affirming the refusal to register applicant's mark. In a mere four pages, the Board pointed out that the purported abandonment was both untimely under Trademark Rule 2.68 and in contravention of Rule 2.142(g), which limits the Board's power to re-open an appeal after a final decision. In re Information Builders Inc., 2021 U.S.P.Q.2d 228 (T.T.A.B. 2021) [precedential] (By the Board).

In April 2020, the Board affirmed a Section 2(d) refusal to register the mark INFORMATION BUILDERS and Design (above left) for database software and related design services, finding the mark confusingly similar to the design mark shown above right, for overlapping software and services. In re Information Builders Inc., 2020 USPQ2d 10444 (TTAB 2020) [precedential] (Opinion by George C. Pologeorgis). [TTABlogged here]. The applicant appealed the decision to the CAFC, but then withdrew the appeal (stating that it no longer had a bona fide intention to use the mark) and filed with the TTAB an express abandonment of its application, stating that the abandonment was "without prejudice." The Board found that submission "improper and . . . of no effect."

Under Rule 2.68, an applicant may expressly abandon an application during prosecution, or during an ex parte appeal to the Board. However, once the Board issuse a final decision, "prosecution is over and a different rule - Rule 2.142(g) applies." 

Rule 2.142(g) provides, in pertinent part, that "[a]n application which has been considered and decided on appeal will not be reopened except for the entry of a disclaimer under section 6 of the Act of 1946 or upon order of the Director …." The Board concluded that, "[a]bsent reopening of the application under Rule 2.142(g) or a reviewing court order reversing the Board’s decision, an application that has been decided on appeal stands abandoned after a final decision of the Board affirming a refusal to register."

Here, the applicant did not seek to enter a disclaimer, nor was there an order from the Director permitting the purported express abandonment "without prejudice." Nor did the disposition of the appeal provide any basis to disregard the Rules: "[t]here was no mandate vacating the Board's decision, directing the Board to do anything more, or allowing Applicant to file this purported express abandonment."

In view of the foregoing, Applicant’s purported express abandonment of its application “without prejudice” is not only untimely under Rule 2.68, but also contravenes the limitations in Rule 2.142(g). The Board’s April 30, 2020 final decision affirming the refusals to register Applicant’s mark remains as issued. Applicant’s application stands abandoned as a result of that decision. Applicant cannot circumvent that adverse Board decision by filing an express abandonment of the involved application.

And so, the applicant express abandonment of its application "without prejudice" was rejected.

Read comments and post your comment here.

TTABlogger comment: Why does the Board cite the TMEP and TBMP in support of its ruling? They are merely practice guides and are not the law.

If the applicant no longer intends to use the mark, why did it want to abandon the application "without prejudice"?

Text Copyright John L. Welch 2021.


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