Precedential No. 29: USPTO Has Inherent Authority to Correct its Error by Cancelling Inadvertently Issued Registration

The Board ironed out a wrinkle in this rather straightforward affirmance of a Section 2(e)(1) mere descriptiveness refusal of NURSECON (in standard character form) for "Arranging and conducting special events for social entertainment purposes." The Board rejected the applicant's argument that the USPTO exceeded its authority when it cancelled the registration for this mark and restored the application to pending status. "[T]he cancellation of the registration number as inadvertently issued was an appropriate exercise of the USPTO's inherent authority to correct its errors." In re Nursecon, LLC, 2024 USPQ2d 2217 (TTAB 2024) [precedential] (Opinion by Judge Mary Beth Myles).

After the applicant’s Statement of Use was accepted and the application was published for opposition, but before the registration issued, Examining Attorney Ingrid Eulin added a note to the application file stating:

It has come to the examining attorney’s attention that a refusal of registration must issue. Due to processing limitations, the USPTO is unable [to] stop the registration from issuing. Therefore, on the registration date, the registration will be cancelled as inadvertently issued and the application restored to pendency in order for a refusal to be issued.

After the registration issued, the Office cancelled it and restored the application to pending status. The applicant argued "that the USPTO exceeded its authority by unilaterally cancelling an issued registration to re-open examination of the Application" and further that the proposed mark is not merely descriptive. Ultimately, the Section 2(e)(1) refusal was made final, and this appeal ensued.

The applicant argued that the USPTO’s jurisdiction over a trademark application ends with the issuance of the registration and that, absent some change in fact or law or some other exigent circumstances, the USPTO lacks the authority to cancel a previously issued registration. The Board was unmoved.

The USPTO has a duty to issue valid registrations in compliance with the Trademark Act and “to examine all trademark applications for compliance with each and every eligibility requirement.” In re Cordua Rests., Inc., 823 F.3d 594, 600 (Fed. Cir. 2016). The USPTO, like all administrative agencies, possesses inherent authority to reconsider its decisions. *** The USPTO also has “broad authority to correct [its] errors.” The Last Best Beef, LLC v. Dudas, 506 F.3d 333, 340 (4th Cir. 2007) (holding that the USPTO acted within its inherent authority to correct its own unlawful action by canceling the issuance of two registrations).

Although the TMEP states that an examining attorney must correct a "clear error," that statement is merely an "administrative guideline." And even though the Examining Attorney here did not explicitly state that there was a "clear error" in failing to issue a descriptiveness refusal, "the determination that a refusal should have issued under Trademark Act Section 2(e)(1) was nevertheless a finding of clear error."

[T]he USPTO possesses inherent authority to correct its errors, recognized by courts .... That authority does not derive from the TMEP. Rather, the TMEP provides guidance for procedure. See Foreword to TMEP.

Turning to the substantive issue, the Examining Attorney maintained that the proposed mark is merely descriptive because NURSE describes the target consumers of Applicant’s services, CON is a shortened version of “conference” or “convention,” and the combination of the two words does not alter the descriptive meaning of the proposed mark. The Board agreed, finding that NURSECON "describes a significant feature of Applicant’s recited services, namely, that they may be and are provided at nursing conferences." Furthermore, conferences and conventions themselves may constitute "special events for social entertainment purposes."

The applicant asserted that it coined the term NURSECON, but the Board pointed out once again that "the fact that Applicant may be the first or only user of a term does not render the term distinctive if, as here, it has been shown to be merely descriptive of the [services] in the application."

The Board had no doubt that NURSECON is merely descriptive of the applicant's services, and so it affirmed the refusal to register.

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TTABlogger comment: The TMEP is not the law! One of my favorite rants.

Text Copyright John L. Welch 2024.