CHAPTER 600  WITHDRAWAL; SETTLEMENT


601  Withdrawal by Opposition or Cancellation Plaintiff

602  Withdrawal by Opposition or Cancellation Defendant

603  Withdrawal by Interference or Concurrent Use Applicant

604  Consent to Judgment

605  Settlement

606  Effect on Counterclaim

601  Withdrawal by Opposition or Cancellation Plaintiff



601.01  Withdrawal by Opposer

37 CFR 2.106(c) The opposition may be withdrawn without
prejudice before the answer is filed.  After the answer is
filed, the opposition may not be withdrawn without prejudice
except with the written consent of the applicant or the
applicant's attorney or other authorized representative.

An opposer may withdraw its opposition without prejudice at
any time before the applicant's answer thereto is filed.
After the answer is filed, however, the opposition may not
be withdrawn without prejudice except with the written
consent of the applicant or the applicant's attorney or
other authorized representative.  See 37 CFR 2.106(c).  See
also Estee Lauder Inc. v. Aloe Creme Laboratories, Inc., 178
USPQ 254 (TTAB 1973).  Cf. 37 CFR 2.114(c), and Johnson &
Johnson v. Bio-Medical Sciences, Inc., 179 USPQ 765 (TTAB
1973).  For information concerning the effect of a judgment
entered against plaintiff for withdrawal after answer
without consent, see Johnson & Johnson v. Bio-Medical
Sciences, Inc., supra.  Cf. Miller Brewing Co. v. Coy
International Corp., 230 USPQ 675 (TTAB 1986); United States
Olympic Committee v. Bata Shoe Co., 225 USPQ 340 (TTAB
1984); Bass Anglers Sportsman Society of America, Inc. v.
Bass Pro Lures, Inc., 200 USPQ 819 (TTAB 1978); and In re
Communications Technology Corp., 182 USPQ 695 (TTAB 1974).

An opposer which wishes to withdraw its opposition may do so
by filing in the PTO a written withdrawal signed by the
opposer or the opposer's attorney or other authorized
representative.  The withdrawal should include proof of
service thereof upon every other party to the proceeding.
See 37 CFR 2.119(a), and TBMP 113.



601.02  Withdrawal by Petitioner

37 CFR 2.114(c) The petition for cancellation may be
withdrawn without prejudice before the answer is filed.
After the answer is filed, the petition may not be withdrawn
without prejudice except with the written consent of the
registrant or the registrant's attorney or other authorized
representative.

A petitioner may withdraw its petition for cancellation
without prejudice at any time before the registrant's answer
thereto is filed.  After the answer is filed, however, the
petition for cancellation may not be withdrawn without
prejudice except with the written consent of the registrant
or the registrant's attorney or other authorized
representative.  See 37 CFR 2.114(c), and Johnson & Johnson
v. Bio-Medical Sciences, Inc., 179 USPQ 765 (TTAB 1973).
Cf. 37 CFR 2.106(c), and Estee Lauder Inc. v. Aloe Creme
Laboratories, Inc., 178 USPQ 254 (TTAB 1973).  For
information concerning the effect of a judgment entered
against plaintiff for withdrawal after answer without
consent, see Johnson & Johnson v. Bio-Medical Sciences,
Inc., supra.  Cf. Miller Brewing Co. v. Coy International
Corp., 230 USPQ 675 (TTAB 1986); United States Olympic
Committee v. Bata Shoe Co., 225 USPQ 340 (TTAB 1984); Bass
Anglers Sportsman Society of America, Inc. v. Bass Pro
Lures, Inc., 200 USPQ 819 (TTAB 1978); and In re
Communications Technology Corp., 182 USPQ 695 (TTAB 1974).

A petitioner which wishes to withdraw its petition for
cancellation may do so by filing in the PTO a written
withdrawal signed by the petitioner or the petitioner's
attorney or other authorized representative.  The withdrawal
should include proof of service thereof upon every other
party to the proceeding.  See 37 CFR 2.119(a), and TBMP
113.



601.03  Effect of Motion for Judgment

A plaintiff in an opposition or cancellation proceeding may
unilaterally withdraw its complaint without prejudice, even
in the face of a defendant's motion to dismiss, motion for
summary judgment, motion for judgment on the pleadings,
etc., provided that the withdrawal is filed prior to answer.
When a plaintiff unilaterally withdraws its complaint prior
to answer in the face of a defendant's pending motion for
judgment, the proceeding will be dismissed without prejudice
(unless plaintiff specifies that it is withdrawing with
prejudice), and the pending motion will be declared moot.



602  Withdrawal by Opposition or Cancellation Defendant

602.01  Withdrawal by Applicant

37 CFR 2.68 Express abandonment (withdrawal) of
application.
An application may be expressly abandoned by filing in the
Patent and Trademark Office a written statement of
abandonment or withdrawal of the application signed by the
applicant, or the attorney or other person representing the
applicant.  Except as provided in 2.135, the fact that an
application has been expressly abandoned shall not, in any
proceeding in the Patent and Trademark Office, affect any
rights that the applicant may have in the mark which is the
subject of the abandoned application.

37 CFR 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.

An applicant which wishes to expressly abandon its
application may do so by filing in the PTO a written
statement of abandonment or withdrawal of the application,
signed by the applicant or the applicant's attorney or other
authorized representative.  See 37 CFR 2.68.

However, after the commencement of an opposition proceeding,
if the applicant files a written abandonment of its subject
application or mark without the written consent of every
adverse party to the proceeding, judgment will be entered
against the applicant.  See 37 CFR 2.135.  See also Fleming
Companies Inc. v. Thriftway Inc., 21 USPQ2d 1451 (TTAB
1991), aff'd, 26 USPQ2d 1551 (S.D.Ohio 1992); Goodway Corp.
v. International Marketing Group Inc., 15 USPQ2d 1749 (TTAB
1990); Grinnell Corp. v. Grinnell Concrete Pavingstones
Inc., 14 USPQ2d 2065 (TTAB 1990); and In re First National
Bank of Boston, 199 USPQ 296 (TTAB 1978).  The written
consent of an adverse party may be signed by the adverse
party itself, or by the adverse party's attorney or other
authorized representative.  See 37 CFR 2.135.  For
information concerning the effect of a 37 CFR 2.135
judgment against applicant, see Miller Brewing Co. v. Coy
International Corp., 230 USPQ 675 (TTAB 1986); United States
Olympic Committee v. Bata Shoe Co., 225 USPQ 340 (TTAB
1984); Bass Anglers Sportsman Society of America, Inc. v.
Bass Pro Lures, Inc., 200 USPQ 819 (TTAB 1978); and In re
Communications Technology Corp., 182 USPQ 695 (TTAB 1974).
Cf. Aromatique Inc. v. Lang, 25 USPQ2d 1359 (TTAB 1992), and
Johnson & Johnson v. Bio-Medical Sciences, Inc., 179 USPQ
765 (TTAB 1973).

In an opposition to an application having multiple classes,
if the applicant files a request to amend the application to
delete an opposed class, the request for amendment is, in
effect, an abandonment of the application with respect to
that class, and is governed by 37 CFR 2.135.

An abandonment of an opposed application should be filed
with the Board, and should bear at the top of its first page
both the application serial number, and the opposition
number and title.  The abandonment should include proof of
service thereof upon every other party to the proceeding.
See 37 CFR 2.119(a), and TBMP 113.

If an applicant files an unconsented abandonment after the
commencement of an opposition, but before applicant has been
notified thereof by the Board, applicant will be allowed an
opportunity to obtain and submit the written consent of
every adverse party, or to withdraw the abandonment and
defend against the opposition, failing which judgment will
be entered against applicant.  See In re First National Bank
of Boston, 199 USPQ 296 (TTAB 1978).  Cf. TBMP 218 and
307.11.

If an opposition and an unconsented abandonment of the
opposed application are filed on the same day, the
abandonment (unless specifically made with prejudice) is
without prejudice to applicant; the opposition will be
returned to the opposer; no proceeding will be instituted;
and any submitted opposition fee will be refunded.  See In
re First National Bank of Boston, 199 USPQ 296 (TTAB 1978).
Cf. TBMP 218 and 307.11.

If it comes to the attention of the Board, after the filing
of an opposition, that the opposed application was
abandoned, prior to its publication for opposition, for
failure of the applicant to respond to an Office action
issued by the Trademark Examining Attorney, the Board will
advise the parties that the application is not subject to
opposition unless applicant files a petition to revive under
37 CFR 2.66, and the petition is granted.  If a prior
abandonment for failure to timely respond comes to the
attention of the Board at a time reasonably contemporaneous
with the filing of the opposition, and the application is
not revived, the opposition will not be instituted; the
opposition papers will be returned to the opposer; and any
submitted opposition fee will be refunded.  If the prior
abandonment comes to the attention of the Board at a later
stage in the opposition, and the application is not revived,
the opposition will be dismissed without prejudice.  See
Societe des Produits Nestle S.A. v. Basso Fedele & Figli, 24
USPQ2d 1079 (TTAB 1992).

If, during the pendency of an opposition, the Board grants a
request by the Trademark Examining Attorney for remand under
37 CFR 2.130 (see TBMP 515), and the application
thereafter becomes abandoned, by operation of law, for
failure of the applicant to respond to an Office action
issued by the Examining Attorney, or because a final refusal
to register issued by the Examining Attorney is affirmed on
appeal, judgment under 37 CFR 2.135 will not be entered
against applicant in the opposition.  Rule 2.135 comes into
play only when there is a written abandonment by the
applicant.  However, opposer will be given time in which to
elect whether it wishes to go forward to obtain a
determination of opposition on its merits, or to have the
opposition dismissed without prejudice as moot.  Cf. TBMP
602.02(b); Marshall Field & Co. v. Mrs. Fields Cookies, 11
USPQ2d 1154 (TTAB 1989); United Rum Merchants Ltd. v.
Distillers Corp. (S.A.), 9 USPQ2d 1481, 1484 (TTAB 1988);
Bank of America National Trust & Savings Ass'n v. First
National Bank of Allentown, 220 USPQ 892 (TTAB 1984); and
Daggett & Ramsdell, Inc. v. Procter & Gamble Co., 119 USPQ
350 (TTAB 1958), rev'd on other grounds, 275 F.2d 955, 125
USPQ 236 (CCPA 1960).  If, after remand under 37 CFR 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 CFR 2.135.

If an applicant whose application is the subject of an
opposition files an abandonment of the application with the
written consent of the opposer, the opposition will be
dismissed without prejudice, and the application will stand
abandoned.  If the applicant files an abandonment of the
application with the written consent of the opposer, and the
opposer files a withdrawal of the opposition, the opposition
will be dismissed without prejudice, and the application
will stand abandoned.  If the applicant files an abandonment
of the application with prejudice with the written consent
of the opposer, the opposition will be dismissed without
prejudice (and the application will stand abandoned with
prejudice to applicant's right to reregister the same mark
for the same goods or services), unless the parties specify
otherwise in writing.  See Aromatique Inc. v. Lang, 25
USPQ2d 1359 (TTAB 1992).  If the applicant files an
abandonment of the application with prejudice with the
written consent of the opposer, and the opposer files a
withdrawal of the opposition with prejudice with the written
consent of the applicant, the opposition will be dismissed
with prejudice, and the application will stand abandoned
with prejudice to applicant's right to reregister the same
mark for the same goods or services.



602.02  Withdrawal by Respondent

602.02(a)  Voluntary Surrender of Registration for
Cancellation

37 CFR 2.134(a) After the commencement of a cancellation
proceeding, if the respondent applies for cancellation of
the involved registration under section 7(d) of the Act of
1946 without the written consent of every adverse party to
the proceeding, judgment shall be entered against the
respondent.  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.

37 CFR 2.172 Surrender for cancellation.
Upon application by the registrant, the Commissioner may
permit any registration to be surrendered for cancellation.
Application for such action must be signed by the registrant
and must be accompanied by the original certificate of
registration, if not lost or destroyed.  When there is more
than one class in a registration, one or more entire class
but less than the total number of classes may be surrendered
as to the specified class or classes.  Deletion of less than
all of the goods or services in a single class constitutes
amendment of registration as to that class (see 2.173).

A registrant which wishes to voluntarily surrender its
registration for cancellation may do so by filing in the PTO
a written application therefor, signed by the registrant and
accompanied by the original certificate of registration, or,
if the original certificate of registration has been lost or
destroyed, by a statement to that effect.  See Section 7(e)
of the Act, 15 U.S.C. 1057(e); 37 CFR 2.172; and TMEP
1113.05(b) and 1607.01.  There is no fee for a voluntary
surrender for cancellation.  See TMEP 1607.01.

However, after the commencement of a cancellation
proceeding, if the respondent applies for cancellation of
its subject registration under Section 7(e) of the Act
without the written consent of every adverse party to the
proceeding, judgment will be entered against the respondent.
See 37 CFR 2.134(a).  Cf. 37 CFR 2.135; Goodway Corp. v.
International Marketing Group Inc., 15 USPQ2d 1749 (TTAB
1990); Grinnell Corp. v. Grinnell Concrete Pavingstones
Inc., 14 USPQ2d 2065 (TTAB 1990); and In re First National
Bank of Boston, 199 USPQ 296 (TTAB 1978).  The written
consent of an adverse party may be signed by the adverse
party itself, or by the adverse party's attorney or other
authorized representative.  See 37 CFR 2.134(a).  For
information concerning the effect of a judgment of this
type, see TBMP 602.01, and cases cited therein.

In a cancellation proceeding against a registration having
multiple classes, if the respondent files a request to amend
the registration to delete a class sought to be cancelled,
the request for amendment is, in effect, a voluntary
surrender of the registration with respect to that class,
and is governed by 37 CFR 2.134(a).

An application for voluntary surrender of a registration
which is the subject of a Board inter partes proceeding
should be filed with the Board, and should bear at the top
of its first page both the registration number, and the
inter partes proceeding number and title.  The application
for voluntary surrender should include proof of service
thereof upon every other party to the proceeding.  See 37
CFR 2.119(a), and TBMP 113.

If a registrant whose registration is the subject of a
petition for cancellation files a voluntary surrender of the
registration with the written consent of the petitioner, the
petition for cancellation will be dismissed without
prejudice, and the registration will be cancelled.  If the
registrant files a voluntary surrender of the registration
with the written consent of the petitioner, and the
petitioner files a withdrawal of the petition for
cancellation, the petition for cancellation will be
dismissed without prejudice, and the registration will be
cancelled.  If the registrant files a voluntary surrender of
the registration with prejudice with the written consent of
the petitioner, the petition for cancellation will be
dismissed without prejudice (and the registration will be
cancelled, such cancellation being with prejudice to
registrant's right to reregister the same mark for the same
goods or services), unless the parties specify otherwise in
writing.  If the registrant files a voluntary surrender of
the registration with prejudice with the written consent of
the petitioner, and the petitioner files a withdrawal of the
petition for cancellation with prejudice with the written
consent of the registrant, the petition for cancellation
will be dismissed with prejudice, and the registration will
be cancelled, such cancellation being with prejudice to
registrant's right to reregister the same mark for the same
goods or services.



602.02(b)  Cancellation Under Section 8; Expiration Under
Section 9

37 CFR 2.134(b) After the commencement of a cancellation
proceeding, if it comes to the attention of the Trademark
Trial and Appeal Board that the respondent has permitted his
involved registration to be cancelled under section 8 of the
Act of 1946 or has failed to renew his involved registration
under section 9 of the Act of 1946, an order may be issued
allowing respondent until a set time, not less than fifteen
days, in which to show cause why such cancellation or
failure to renew should not be deemed to be the equivalent
of a cancellation by request of respondent without the
consent of the adverse party and should not result in entry
of judgment against respondent as provided by paragraph (a)
of this section.  In the absence of a showing of good and
sufficient cause, judgment may be entered against respondent
as provided by paragraph (a) of this section.

See Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d
1154 (TTAB 1989); C.H. Guenther & Son Inc. v. Whitewing
Ranch Co., 8 USPQ2d 1450 (TTAB 1988); and Abraham's Seed v.
John One Ten, 1 USPQ2d 1230 (TTAB 1986).  Cf. In re Checkers
of North America Inc., 23 USPQ2d 1451 (Comm'r 1992), and
Global Maschinen GmbH v. Global Banking Systems, Inc., 227
USPQ 862 (TTAB 1985).

In a cancellation proceeding against a registration having
multiple classes, if the respondent permits a class which is
the subject of the cancellation proceeding to be cancelled
under Section 8 of the Act, or fails to renew the
registration under Section 9 of the Act with respect to that
class, the cancellation or failure to renew with respect to
that class is governed by 37 CFR 2.134(b).

An order to show cause under 37 CFR 2.134(b) may be issued
by the Board upon motion by the petitioner, or (if the
failure to file a Section 8 or Section 9 affidavit comes to
the attention of the Board in another manner) upon the
Board's own initiative.  For information concerning motions
for an order to show cause under 37 CFR 2.134(b), see TBMP
536.

The purpose of 37 CFR 2.134(b) is to prevent a cancellation
proceeding respondent whose subject registration comes due,
during the course of the proceeding, for a Section 8 or
Section 9 affidavit, from being able to moot the proceeding,
and avoid judgment, by deliberately failing to file the
required affidavit of use under Section 8, or renewal
application under Section 9.  See Notice of Final Rulemaking
published in the Federal Register on May 23, 1983 at 48 FR
23122, 23126, and in the Official Gazette of June 21, 1983
at 1031 TMOG 13, 17; and T. Jeffrey Quinn, TIPS FROM THE
TTAB:  The Rules Are Changing, 74 Trademark Rep. 269, 277
(1984).

The Board's policy governing application of 37 CFR 2.134(b)
is as follows:

     The paragraph has been modified to provide an
     opportunity for the respondent in such situa-
     tion to "show cause" why judgment should not
     be entered against it.  If respondent submits
     a showing that the cancellation or expiration
     was the result of an inadvertance or mistake,
     judgment will not be entered against it.  If
     respondent submits a showing that the cancel-
     lation or expiration was occasioned by the
     fact that its registered mark had been aban-
     doned and that such abandonment was not made
     for purposes of avoiding the proceeding but
     rather was the result, for example, of a two-
     year period of nonuse which commenced well
     before respondent learned of the existence of
     the proceeding, judgment will be entered
     against it only and specifically on the ground
     of abandonment.

See Notice of Final Rulemaking published in the Federal
Register on May 23, 1983 at 48 FR 23122, 23133, and in the
Official Gazette of June 21, 1983 at 1031 TMOG 13, 23.  See
also  Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d
1154 (TTAB 1989); C.H. Guenther & Son Inc. v. Whitewing
Ranch Co., 8 USPQ2d 1450 (TTAB 1988); Abraham's Seed v. John
One Ten, 1 USPQ2d 1230 (TTAB 1986); and T. Jeffrey Quinn,
TIPS FROM THE TTAB:  The Rules Are Changing, 74 Trademark
Rep. 269, 277 (1984).

If, in response to an order to show cause issued under 37
CFR 2.134(b), a respondent submits a showing that the
cancellation of its registration under Section 8 of the Act,
or failure to renew the registration under Section 9 of the
Act, was the result of inadvertance or mistake, judgment
will not be entered against it.  See:  Notice of Final
Rulemaking published in the Federal Register on May 23, 1983
at 48 FR 23122, 23133, and in the Official Gazette of June
21, 1983 at 1031 TMOG 13, 23; C.H. Guenther & Son Inc. v.
Whitewing Ranch Co., 8 USPQ2d 1450 (TTAB 1988); and
Abraham's Seed v. John One Ten, 1 USPQ2d 1230 (TTAB 1986).

If respondent submits a showing that it permitted its
registration to be cancelled under Section 8 of the Act, or
failed to renew the registration under Section 9 of the Act,
because its registered mark had been abandoned, and that the
abandonment was not made for purposes of avoiding the
proceeding, judgment will be entered against it only and
specifically on the ground of abandonment (if abandonment
has not been pleaded as a ground for cancellation, plaintiff
will be allowed to amend its pleading appropriately).  See:
Notice of Final Rulemaking published in the Federal Register
on May 23, 1983 at 48 FR 23122, 23133, and in the Official
Gazette of June 21, 1983 at 1031 TMOG 13, 23, and Marshall
Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1154 (TTAB
1989).

In those cases where the Board finds that respondent has
shown good and sufficient cause why judgment should not be
entered against it under 37 CFR 2.134(b), petitioner will
be given time in which to elect whether it wishes to go
forward with the cancellation proceeding, or to have the
cancellation proceeding dismissed without prejudice as moot.
See C.H. Guenther & Son Inc. v. Whitewing Ranch Co., 8
USPQ2d 1450 (TTAB 1988); and Abraham's Seed v. John One Ten,
1 USPQ2d 1230 (TTAB 1986).  In those cases where the Board
enters judgment against the respondent only and specifically
on the ground of abandonment, petitioner will be given time
in which to elect whether it wishes to go forward to obtain
a determination of the remaining issues, or to have the
cancellation proceeding dismissed without prejudice as to
those issues.  See Marshall Field & Co. v. Mrs. Fields
Cookies, 11 USPQ2d 1154 (TTAB 1989).  Cf., with respect to
the Board's election practice, United Rum Merchants Ltd. v.
Distillers Corp. (S.A.), 9 USPQ2d 1481, 1484 (TTAB 1988);
Bank of America National Trust & Savings Ass'n v. First
National Bank of Allentown, 220 USPQ 892 (TTAB 1984); and
Daggett & Ramsdell, Inc. v. Procter & Gamble Co., 119 USPQ
350 (TTAB 1958), rev'd on other grounds, 275 F.2d 955, 125
USPQ 236 (CCPA 1960).

As noted above, the purpose of 37 CFR 2.134(b) is to
prevent a cancellation proceeding respondent from being able
to moot the proceeding, and avoid judgment, by deliberately
failing to file a required affidavit of use under Section 8,
or renewal application under Section 9.  The rule provides
not that an order to show cause "shall" be issued, but
rather that an order "may" be issued.  Normally, the Board,
in the exercise of its discretion under the rule, does not
issue a show cause order in those cases where the failure to
file a required affidavit under Section 8, or renewal
application under Section 9, occurs after the filing of a
petition for cancellation, but before respondent has been
notified thereof by the Board.  Rather, the Board issues an
action notifying respondent of the filing of the proceeding,
advising both parties that the registration has been
cancelled under Section 8, or has expired, and allowing
petitioner time in which to elect whether it wishes to go
forward with the cancellation proceeding, or to have the
cancellation proceeding dismissed without prejudice as moot.
Cf. TBMP 602.01.  However, a petitioner which believes that
the respondent had knowledge of the filing of the petition
to cancel (notwithstanding the fact that respondent had not
been notified thereof by the Board), and that respondent
deliberately failed to file a required affidavit of use
under Section 8, or renewal application under Section 9, in
an effort to moot the proceeding, and avoid judgment, may
file a motion for an order to show cause under 37 CFR
2.134(b) (see TBMP 536), stating the reasons for its
belief.



603  Withdrawal by Interference or Concurrent Use Applicant

37 CFR 2.68 Express abandonment (withdrawal) of
application.
An application may be expressly abandoned by filing in the
Patent and Trademark Office a written statement of
abandonment or withdrawal of the application signed by the
applicant, or the attorney or other person representing the
applicant.  Except as provided in 2.135, the fact that an
application has been expressly abandoned shall not, in any
proceeding in the Patent and Trademark Office, affect any
rights that the applicant may have in the mark which is the
subject of the abandoned application.

37 CFR 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.  See 37 CFR 2.135.

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 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.  See Fleming Companies Inc. v. Thriftway Inc., 21
USPQ2d 1451 (TTAB 1991), aff'd, 26 USPQ2d 1551 (S.D.Ohio
1992), and Newsday, Inc. v. Paddock Publications, Inc., 223
USPQ 1305 (TTAB 1984).  Cf.  37 CFR 2.99(d)(3), and
Precision Tune Inc. v. Precision Auto-Tune Inc., 4 USPQ2d
1095 (TTAB 1987).  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 which
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.  See Newsday, Inc.
v. Paddock Publications, Inc., supra.  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 CFR 2.135.

An abandonment of an application which is the subject of an
interference or concurrent use proceeding should be filed
with the Board, and should bear at the top of its first page
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.  See 37 CFR 2.119(a), and TBMP
113.

If, during the pendency of an interference or concurrent use
proceeding, the Board grants a request by the Trademark
Examining Attorney for remand under 37 CFR 2.130 (see TBMP
515), and the application thereafter becomes abandoned, by
operation of law, for failure of the applicant to respond to
an Office action issued by the Examining Attorney, or
because a final refusal to register issued by the Examining
Attorney is affirmed on appeal, judgment under 37 CFR 2.135
will not be entered against applicant in the interference,
or in the concurrent use proceeding.  Rule 2.135 comes into
play only when there is a written abandonment by the
applicant.  If, after remand under 37 CFR 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 CFR 2.135.



604  Consent to Judgment

If a party to an inter partes proceeding before the Board
does not wish to litigate the case, and is willing to accept
entry of judgment against itself, the party may file a
statement with the Board indicating that it consents to
entry of judgment against itself.  Upon receipt of such a
statement, the Board will enter judgment against the filing
party.



605  Settlement

605.01  In General

A substantial percentage of the inter partes cases filed
with the Board are eventually settled.  The Board encourages
settlement, and several aspects of Board practice and
procedure, including its liberal discovery practice (see
TBMP chapter 400) and its usual willingness to suspend
proceedings in pending cases while parties negotiate for
settlement (see TBMP 510.03 and 605.02), serve to
facilitate the resolution of cases by agreement.



605.02  Suspension for Settlement Negotiations

Parties which are negotiating for settlement, and wish to
defer further litigation of the case pending conclusion of
their negotiations, should remember to file stipulations to
extend or suspend the running of the time periods set in the
case.

When the Board is notified that parties are negotiating for
settlement, the Board may suspend proceedings for a period
of up to six months, subject to the right of either party to
request resumption at any time prior to the expiration of
the suspension period.  See TBMP 510.03.  The suspension
period may be further extended upon request, or upon
notification to the Board that the parties are still engaged
in their settlement negotiations.



605.03  Settlement Agreements

605.03(a)  In General

When an inter partes proceeding before the Board is settled,
the parties thereto should notify the Board of the
settlement promptly.  It is not necessary that the parties
file a copy of their settlement agreement with the Board.
Rather, they may simply file a stipulation stating the
desired disposition of the proceeding (i.e., "It is hereby
stipulated that the opposition be sustained," "It is hereby
stipulated that the petition for cancellation be dismissed
with prejudice," or whatever).  If there is a counterclaim,
the stipulation should also state the desired disposition of
the counterclaim.  If, in a proceeding with a counterclaim,
the parties stipulate to the disposition of the claim
against which the counterclaim was brought, but there is no
stipulation to dispose of the counterclaim, and there is no
withdrawal of the counterclaim, consent by one party to
entry of judgment against itself on the counterclaim, etc.,
the counterclaim will go forward, notwithstanding the fact
that judgment has been entered on the original claim.  See
TBMP 606.

If the proceeding is to be dismissed, the stipulation should
specify whether the dismissal is to be with prejudice or
without prejudice.  If no specification is made, the Board,
in its action dismissing the proceeding, will simply state
that the proceeding is being dismissed "in accordance with
the agreement of the parties."  However, if the agreement
itself also fails to indicate whether the dismissal is to be
with or without prejudice, at some later time a dispute may
arise between the parties as to whether they intended the
dismissal to be with or without prejudice.  A clear
specification in the stipulation will avoid any such future
trouble.

A settlement stipulation which is not in accordance with the
applicable rules and the statute will be given no effect by
the Board.

A settlement agreement may simply call for a party to
withdraw with, or without, prejudice, or with, or without,
consent.  In such a case, the parties need not file a
settlement stipulation, because the withdrawal, when filed,
will result in a final disposition of the proceeding.



605.03(b)  With Amendment of Subject Application or
Registration

If a settlement agreement is contingent upon the amendment
of a defendant's subject application or registration, the
request for amendment is governed by 37 CFR 2.133(a) (see
TBMP 514), and should be filed with the Board.  The request
should bear at its top both the number of the subject
application or registration, and the Board proceeding number
and title.  The request also should include proof of service
thereof upon every other party to the proceeding.  See 37
CFR 2.119(a), and TBMP 113.

A proposed amendment to a defendant's application or
registration must comply with all applicable rules and
statutory provisions.  See TBMP 514.01.  Thus, for example,
a proposed amendment which materially alters the character
of the defendant's subject mark cannot be appoved.  See
Section 7(e) of the Act, 15 U.S.C. 1057(e), and 37 CFR
2.72 and 2.173.  If a settlement agreement calls for an
amendment which may amount to a material change in the
defendant's mark, the parties may wish to also agree that if
a request for amendment of the defendant's subject
application or registration is denied by the Board, the
defendant will abandon that application, or voluntarily
surrender that registration, and file a new application for
registration of the altered mark; and that the plaintiff
will not oppose the new application or seek to cancel any
registration that matures therefrom.  The abandonment or
voluntary surrender, if necessary, would, of course, be
governed by 37 CFR 2.135 or 37 CFR 2.134(a), respectively.
See TBMP 602.

In an opposition to an application having multiple classes,
if the applicant files a request to amend the application to
delete an opposed class, the request for amendment is, in
effect, an abandonment of the application with respect to
that class, and is governed by 37 CFR 2.135.  Similarly, in
a cancellation proceeding against a registration having
multiple classes, if the respondent files a request to amend
the registration to delete a class sought to be cancelled,
the request for amendment is, in effect, a voluntary
surrender of the registration with respect to that class,
and is governed by 37 CFR 2.134(a).



605.03(c)  With Amendment of Plaintiff's Pending Application

The plaintiff in an inter partes proceeding before the Board
may own a pending application for registration which has
been rejected by the Trademark Examining Attorney in view of
the defendant's subject registration, or which is going to
be rejected by the Examining Attorney when and if
defendant's subject application matures to registration.  In
such a case, a settlement agreement may be contingent upon
the approval of an amendment to be filed in the plaintiff's
application, or acceptance of a consent agreement to be
filed therein, and the consequent approval of the
application for publication.

The Board has no jurisdiction over a plaintiff's application
which is still pending before the Trademark Examining
Attorney.  See Home Juice Co. v. Runglin Cos., 231 USPQ 897,
898, at fn.7 (TTAB 1986).  Thus, when the plaintiff in an
inter partes proceeding before the Board owns an application
which is still pending before the Trademark Examining
Attorney, and an amendment or consent agreement is filed in
the application pursuant to a settlement agreement between
the parties, the amendment should be filed with the
Examining Attorney, not with the Board.  The Examining
Attorney can and should consider the amendment or agreement
and take appropriate action with respect thereto (including,
if the amendment or consent agreement puts the application
in condition for publication, approving the application for
publication), notwithstanding the fact that action on the
application may previously have been suspended pending the
final determination of the inter partes proceeding before
the Board.  Indeed, if settlement of the inter partes
proceeding is contingent upon approval of the amendment, or
acceptance of the consent agreement, by the Examining
Attorney, proceedings before the Board may be suspended
pending action by the Examining Attorney on the amendment or
consent agreement.



605.03(d)  Breach of Settlement Agreement

If an agreement settling an inter partes proceeding before
the Board is breached by one of the parties thereto, an
adverse party's remedy is by way of civil action.  The Board
has no jurisdiction to enforce such an agreement.



605.03(e)  Effect of Judgment Based Upon Agreement

For information concerning the effect of agreements and
judgments resulting therefrom, see Kimberly-Clark Corp. v.
Fort Howard Paper Co., 772 F.2d 860, 227 USPQ 36 (Fed. Cir.
1985); Chromalloy American Corp. v. Kenneth Gordon (New
Orleans), Ltd., 736 F.2d 694, 222 USPQ 187 (Fed. Cir. 1984);
Wells Cargo, Inc. v. Wells Cargo, Inc., 606 F.2d 961, 203
USPQ 564 (CCPA 1979); Danskin, Inc. v. Dan River, Inc., 498
F.2d 1386, 182 USPQ 370 (CCPA 1974); United States Olympic
Committee v. Bata Shoe Co., 225 USPQ 340 (TTAB 1984); and
Marc A. Bergsman, TIPS FROM THE TTAB:  The Effect of Board
Decisions in Civil Actions; Claim Preclusion and Issue
Preclusion in Board Proceedings, 80 Trademark Rep. 540
(1990).  See also Epic Metals Corp. v. H.H. Robertson Co.,
870 F.2d 1574, 10 USPQ2d 1296 (Fed. Cir. 1989), and Hartley
v. Mentor Corp., 869 F.2d 1469, 10 USPQ2d 1138 (Fed. Cir.
1989).



605.03(f)  Consent Orders

The Board will dismiss, sustain, etc., a Board inter partes
proceeding, if the parties thereto so stipulate (see TBMP
605.03(a)), and will also enter judgment against a party
which submits its written consent to entry of judgment
against itself, or which concedes that its case is not well
taken.  Further, the Board encourages the use of stipulated
evidence in Board inter partes proceedings.  See 37 CFR
2.123(b), and TBMP 716.  However, the Board does not issue
advisory opinions.  Nor does the Board issue consent orders.
That is, the Board does not, based simply upon a joint
request by the parties that it do so, enter, approve, or
otherwise adopt as its own findings, as if on the merits,
stipulated findings of fact and/or conclusions of law,
without any consideration by the Board of evidence properly
adduced during the course of the proceeding.  Rather, the
Board makes findings of fact, and conclusions of law, on the
merits of the case only as warranted by the evidence of
record upon motion for summary judgment or at final hearing.



606  Effect on Counterclaim

If, prior to the determination of a counterclaim, the
parties stipulate to the disposition of the claim against
which the counterclaim was brought, or the original claim is
withdrawn, dismissed for failure to prosecute, or otherwise
disposed of, the counterclaim will nevertheless go forward,
unless the parties stipulate to its disposition, or it is
withdrawn by the counterclaimant, or one party consents to
entry of judgment against itself on the counterclaim, etc.
See, for example,  Syntex (U.S.A.) Inc. v. E.R. Squibb &
Sons Inc., 14 USPQ2d 1879 (TTAB 1990).  Cf. TBMP 901.02(a).