Law & Practice

UNITED STATES: Attempt at Express Abandonment Fails

Published: April 28, 2021

Robert P. Felber, Jr.

Robert P. Felber, Jr. Waller Lansden Dortch & Davis, LLP Nashville, Tennessee, USA INTA Bulletins—North America Subcommittee

Verifier

Timothy J. Lockhart Willcox & Savage P.C. Norfolk, Virginia, USA INTA Bulletins—North America Subcommittee

In a precedential decision, the U.S. Trademark Trial and Appeal Board (TTAB) rejected the attempt of Information Builders Inc. to expressly abandon its trademark application “without prejudice” following the TTAB’s issuance of a final decision refusing registration of the mark. In re Information Builders Inc., 2021 USPQ2d 228 (TTAB 2021), Feb. 25, 2021 [precedential].

The applicant filed an application (Serial No. 87753964) to register the INFORMATION BUILDERS mark (and design) for database software and computer system design services in Class 42. The examining attorney at the U.S. Patent and Trademark Office (USPTO) issued a final refusal of the application on the grounds that: (1) the design element of the mark was likely to be confused with a mark registered by another party for related goods and services; and (2) the applicant had failed to comply with the examining attorney’s requirement to disclaim exclusive rights in the words INFORMATION and BUILDERS.

Information Builders logo

The applicant appealed the examining attorney’s refusal to the TTAB, which issued a final decision affirming the refusal of registration. The applicant filed a notice of appeal of the TTAB’s decision to the U.S. Court of Appeals for the Federal Circuit but ultimately voluntarily dismissed that appeal. On the same day, the applicant filed with the TTAB an express abandonment of its application “without prejudice.”

The TTAB found the applicant’s express abandonment to be improper and of no effect for two reasons. First, under Trademark Rule 2.68, an applicant may file an express abandonment of its application during an ex parte appeal to the TTAB but not after it has issued a final decision.

The second reason was that once the TTAB has issued a final decision, Trademark Rule 2.142(g) applies. This rule provides that, after rendering a final decision, the TTAB is without power to entertain any request for additional prosecution except: (1) to enter a disclaimer; or (2) pursuant to an order of the Director of the USPTO. Absent reopening of the application under Rule 2.142(g) or a court order reversing the TTAB decision (neither of which was applicable in this case), an application that has been refused on appeal stands abandoned after a final decision of the Board affirming a refusal of registration.

Thus, the TTAB concluded that the applicant’s express abandonment of its application “without prejudice” could not be given effect and was rejected. On the same day, the applicant filed with the Board an express abandonment of its application “without prejudice,” in an effort to preserve its right to refile the application, notwithstanding the final decision of the Board refusing registration.

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