CHAPTER 800  BRIEFS ON CASE, ORAL HEARING, FINAL DECISION
801  Briefs on the Case
802  Oral Hearing
803  Final Decision
804  Request for Reconsideration of Final Decision
805  Final Decision Remand to Examining Attorney
806  Termination of Proceeding
807  Status of Application After Proceeding
801  Briefs on the Case
801.01  In General
After the close of all testimony periods in an inter partes
proceeding before the Board, the parties are allowed time in
which to file briefs on the case.  The brief is a party's
"opportunity to present, in a systematic and coherent
manner, and in a form which is permanent and can be referred
to, a discussion of the facts in light of the law," its
strongest affirmative arguments, and a rebuttal of its
adversary's arguments.  See David J. Kera, TIPS FROM THE
TTAB:  Preparing and Filing Briefs With the Trademark Trial
and Appeal Board, 66 Trademark Rep. 141, 141 (1976).
Subject to FRCP 11, a party is entitled to offer in its
brief on the case any argument it feels will be to its
advantage.  However, the facts and arguments presented in
the brief must be based on the evidence offered at trial.  A
brief may not be used as a vehicle for the introduction of
evidence.  See TBMP 705.02 and 706.02, and authorities
cited therein.
801.02  Time for Filing
37 CFR 2.128(a)(1) The brief of the party in the position
of plaintiff shall be due not later than sixty days after
the date set for the close of rebuttal testimony.  The brief
of the party in the position of defendant, if filed, shall
be due not later than thirty days after the due date of the
first brief.  A reply brief by the party in the position of
plaintiff, if filed, shall be due not later than fifteen
days after the due date of the defendant's brief.
(2) When there is a counterclaim, or when proceedings have
been consolidated and one party is in the position of
plaintiff in one of the involved proceedings and in the
position of defendant in another of the involved
proceedings, or when there is an interference or a
concurrent use registration proceeding involving more than
two parties, the Trademark Trial and Appeal Board will set
the due dates for the filing of the main brief, and the
answering brief, and the rebuttal brief by the parties.
(3) When a party in the position of plaintiff fails to file
a main brief, an order may be issued allowing plaintiff
until a set time, not less than fifteen days, in which to
show cause why the Board should not treat such failure as a
concession of the case.  If plaintiff fails to file a
response to the order, or files a response indicating that
he has lost interest in the case, judgment may be entered
against plaintiff.
801.02(a)  Plaintiff's Main Brief
The main brief of the party in the position of plaintiff is
due not later than 60 days after the date set for the close
of the rebuttal testimony period.  See 37 CFR 2.128(a)(1).
If a party in the position of plaintiff fails to file a main
brief, the Board may issue an order allowing plaintiff until
a set time, not less than 15 days, in which to show cause
why its failure to file a main brief should not be treated
as a concession of the case.  If the plaintiff fails to file
a response to the order, or files a response indicating that
it has lost interest in the case, judgment may be entered
against the plaintiff.  See 37 CFR 2.128(a)(3).  The
purpose of this order to show cause procedure is to save the
Board the burden of determining a case on the merits where
the parties have settled, but have neglected to notify the
Board thereof, or where the plaintiff has lost interest in
the case.  It is the policy of the Board not to enter
judgment against a plaintiff, for failure to file a main
brief on the case, where the plaintiff, in its response to
the show cause order, indicates that it has not lost
interest in the case.  See TBMP 537, and authorities cited
therein.
For further information concerning the 37 CFR 2.128(a)(3)
order to show cause procedure, see TBMP 537.
801.02(b)  Defendant's Main Brief
The filing of a brief on the case is not mandatory for a
party in the position of defendant.  See 37 CFR
2.128(a)(1); Notice of Final Rulemaking published in the
Federal Register on May 23, 1983 at 48 FR 23122, 23132, and
in the Official Gazette of June 21, 1983 at 1031 TMOG 13,
22; and T. Jeffrey Quinn, TIPS FROM THE TTAB:  The Rules Are
Changing, 74 Trademark Rep. 269, 275 (1984).
However, if a party in the position of defendant wishes to
file a brief on the case, the brief is due not later than 30
days after the due date of the plaintiff's main brief.  See
37 CFR 2.128(a)(1).  See also Ariola-Eurodisc Gesellschaft
v. Eurotone International Ltd., 175 USPQ 25 (TTAB 1972).
801.02(c)  Plaintiff's Reply Brief
The filing of a reply brief is not mandatory for a party in
the position of plaintiff.  See 37 CFR 2.128(a)(1), and T.
Jeffrey Quinn, TIPS FROM THE TTAB:  The Rules Are Changing,
74 Trademark Rep. 269, 275 (1984).
However, if a party in the position of plaintiff wishes to
file a reply brief, the brief is due not later than 15 days
after the due date of the defendant's main brief.  See 37
CFR 2.128(a)(1).
801.02(d)  Reply Brief for Defendant Not Permitted
 There is no provision for the filing of a reply brief,
rebuttal brief, rejoinder brief, etc. by a party in the
position of defendant.  If a party in the position of
defendant files such a brief, it may be stricken, or given
no consideration, by the Board.  See TBMP 540, and cases
cited therein.
However, if a defendant has counterclaimed to cancel a
registration owned by the plaintiff, the defendant, as
plaintiff in the counterclaim, may file a reply brief
directed to the counterclaim.
801.02(e)  Special Situations
In certain special situations, the Board will set, by
written action, the due dates for the filing of briefs on
the case.  This occurs when (1) there is a counterclaim, or
(2) proceedings have been consolidated, and one party is in
the position of plaintiff in one of the involved proceedings
and in the position of defendant in another of them, or (3)
there is an interference or a concurrent use registration
proceeding involving more than two parties.  See 37 CFR
2.128(a)(2).
For example, if there is a counterclaim, the Board will
issue a written action setting the due dates for plaintiff's
main brief in the original proceeding (due the 60th day
after the date set for the close of rebuttal testimony);
defendant's brief as defendant in the original proceeding
and as plaintiff in the counterclaim (due the 30th day after
the due date of the plaintiff's main brief); plaintiff's
combined reply brief in the original proceeding and its
brief as defendant in the counterclaim (due the 30th day
after the due date of defendant's brief as defendant in the
original proceeding and as plaintiff in the counterclaim);
and defendant's reply brief as plaintiff in the counterclaim
(due the 15th day after the due date of plaintiff's combined
reply brief in the original proceeding and brief as
defendant in the counterclaim).  See Jan Bell Marketing Inc.
v. Centennial Jewelers Inc., 19 USPQ2d 1636 (TTAB 1990)
(example of a briefing schedule in an opposition with a
counterclaim).
In an interference or concurrent use registration
proceeding, the Board will schedule briefing periods so that
each party in the position of plaintiff will have a period
for filing a main brief on the case, each party in the
position of defendant will have a period for filing a main
brief in which it may meet the brief of each plaintiff, and
each party in the position of plaintiff will have a period
for filing a reply brief.  See TBMP 1007 (example of a
briefing schedule in an interference proceeding), and TBMP
1108 (example of a briefing schedule in a concurrent use
proceeding).  Cf. 37 CFR 2.121(b)(2).
801.03  Form and Contents of Brief
37 CFR 2.128(b) Briefs shall be submitted in typewritten or
printed form, double spaced, in at least pica or eleven-
point type, on letter-size paper.  Each brief shall contain
an alphabetical index of cases cited therein.  Without prior
leave of the Trademark Trial and Appeal Board, a main brief
on the case shall not exceed fifty-five pages in length in
its entirety, including the table of contents, index of
cases, description of the record, statement of the issues,
recitation of facts, argument, and summary; and a reply
brief shall not exceed twenty-five pages in its entirety.
Three legible copies, on good quality paper, of each brief
shall be filed.
A brief on the case must comply with the requirements of 37
CFR 2.128(b).  See also, with respect to briefs on the
case, David J. Kera, TIPS FROM THE TTAB:  Preparing and
Filing Briefs With the Trademark Trial and Appeal Board, 66
Trademark Rep. 141 (1976).
The description of the record should comprise a list of the
evidence properly introduced by the parties, such as, "The
evidence of record consists of opposer's Registration No.
1,234,567; applicant's answers to opposer's interrogatories;
the discovery deposition of Mr. X; and the testimony
depositions of opposer's witnesses, Mr. Y and Ms. Z."  The
recitation of facts should include, for each significant
fact recited, a citation to the portion of the evidentiary
record where supporting evidence may be found.
Without prior leave of the Board, a main brief on the case
may not exceed 55 pages in length in its entirety, and a
reply brief may not exceed 25 pages in its entirety.  See 37
CFR 2.128(b).  See also United Foods Inc. v. United Air
Lines Inc., 33 USPQ2d 1542 (TTAB 1994), and Consorzio del
Prosciutto di Parma v. Parma Sausage Products Inc., 23
USPQ2d 1894 (TTAB 1992).  The parts of the brief which fall
within the length limit include the table of contents, index
of cases, description of the record, statement of the
issues, recitation of facts, argument, and summary.
Extensive single-spaced footnotes may not be used as a
subterfuge to avoid the page limit.  See Consorzio del
Prosciutto di Parma v. Parma Sausage Products Inc., supra.
Exhibits or appendices to a brief, not being part of the
brief itself, are not included within the limit.  See 37 CFR
2.128(b), and Notice of Final Rulemaking published in the
Federal Register on August 22, 1989 at 54 FR 34886, 34895,
and in the Official Gazette of September 12, 1989 at 1106
TMOG 26, 33-34.  Cf. American Optical Corp. v. Atwood
Oceanics, Inc., 177 USPQ 585 (Comm'r 1973) (case decided
under earlier version of 37 CFR 2.128(b)).  For information
concerning motions for leave to file a brief exceeding the
page limit, see TBMP 538.
When cases are cited in a brief, the case citation should
include a citation to The United States Patent Quarterly, if
the case has appeared in that publication.  If the case has
not been published in The United States Patent Quarterly, it
is recommended that a copy of the case be submitted with the
brief.
If a mark which is the subject of, or is pleaded in, a
proceeding includes stylization or a design feature, a
picture of the mark should be included in the brief on the
case.
If a plaintiff files a reply brief, the brief must be
confined to rebutting the defendant's main brief.
801.04  Amicus Briefs
The Board may, in its discretion, entertain an amicus brief.
See TBMP 539, and authorities cited therein.  An entity
which wishes to file an amicus brief should file a motion
with the Board for leave to do so.  For information
concerning motions for leave to file an amicus brief, see
TBMP 539.
801.05  Motion to Strike Brief on Case
A party may move to strike a brief on the case on a variety
of grounds, including that the brief was untimely filed,
exceeds the page limit for a brief on the case, violates the
format requirements for such a brief, is a brief not
provided for by the applicable rules (i.e., is a reply brief
filed by the defendant, for example), etc.  In addition, a
party may move to strike evidentiary matter attached to a
brief where the evidentiary matter was not properly made of
record during the time for taking testimony.  For
information concerning motions to strike a brief on the
case, or matter attached to such a brief, see TBMP 540, and
cases cited therein.
802  Oral Hearing
37 CFR 2.129(a) If a party desires to have an oral argument
at final hearing, the party shall request such argument by a
separate notice filed not later than ten days after the due
date for the filing of the last reply brief in the
proceeding.  Oral arguments will be heard by at least three
Members of the Trademark Trial and Appeal Board at the time
specified in the notice of hearing.  If any party appears at
the specified time, that party will be heard.  If the Board
is prevented from hearing the case at the specified time, a
new hearing date will be set.  Unless otherwise permitted,
oral arguments in an inter partes case will be limited to
thirty minutes for each party.  A party in the position of
plaintiff may reserve part of the time allowed for oral
argument to present a rebuttal argument.
(b) The date or time of a hearing may be reset, so far as is
convenient and proper, to meet the wishes of the parties and
their attorneys or other authorized representatives.
802.01  In General
The oral hearing on the case in an inter partes proceeding
before the Board corresponds to the oral summation in court
proceedings after all the evidence is in.  See 37 CFR
2.116(f).
An oral hearing is not mandatory, but rather is scheduled
only if a timely request therefor is filed by a party to the
proceeding.  The oral hearing provides a party with one last
opportunity to emphasize its strongest arguments, and to
refute its adversary's arguments.  It is particularly useful
in cases with complex issues or a complex record, or where
the defendant needs to respond to arguments in the
plaintiff's reply brief.  For information concerning
situations in which it may be advisable to request an oral
hearing on a case, see Saul Lefkowitz, TIPS FROM THE TTAB:
Presentation of an Oral Hearing Before the Trademark Trial
and Appeal Board, 67 Trademark Rep. 283 (1977).
Subject to FRCP 11, a party is entitled to offer at oral
hearing any argument it feels will be to its advantage.
However, the facts recited and arguments made at oral
hearing must be based on the evidence offered at trial.  An
oral hearing may not be used as a vehicle for the
introduction of evidence.  See 37 CFR 2.123(l); TBMP 717;
and Saul Lefkowitz, TIPS FROM THE TTAB:  Presentation of an
Oral Hearing Before the Trademark Trial and Appeal Board, 67
Trademark Rep. 283 (1977).  Cf. TBMP 801.01.
802.02  Request for Oral Hearing
A party which wishes to have an oral hearing on the case
must file a request therefor, by separate paper (not as part
of its brief on the case), not later than 10 days after the
due date for the filing of the last reply brief in the
proceeding.  See 37 CFR 2.129(a).  A hearing may be
requested by any party to the proceeding.
If an oral hearing is not requested, the case will be
decided in due course after the due date for the filing of
the last reply brief on the case.
802.03  Time and Place of Hearing
When a timely request for an oral hearing on the case has
been filed by a party to an inter partes proceeding before
the Board, the Board sets the date and time for the hearing,
and sends each party a notice of hearing specifying the
date, time, and location of the hearing.  See 37 CFR
52.129(a).  It is the normal practice of the Board, in
setting an oral hearing, to telephone the parties, or their
attorneys or other authorized representatives, to determine
a convenient date and time for the hearing, following which
the written notice formally scheduling the hearing is
mailed.  Oral hearings are held at the offices of the Board.
Attendance at a scheduled oral hearing is voluntary, not
mandatory.  If any party appears at the specified time, the
party will be heard, whether or not the party which appears
is the one which requested the hearing.  See 37 CFR
2.129(a).  If a party elects not to attend a scheduled
hearing, the party should notify the Board, well in advance
of the scheduled hearing date, that it will not attend the
hearing.
If a party which requested an oral hearing fails to appear
at the appointed time, without giving prior notice to the
Board of nonappearance, the failure to appear will be
construed by the Board as a withdrawal of the request for an
oral hearing, and any new request for an oral hearing will
be granted only upon a showing that the failure to appear
was occasioned by extraordinary circumstances.
If the Board is prevented from hearing the case at the time
specified in the notice of hearing, a new hearing date will
be set.  See 37 CFR 2.129(a).  The date or time of a
hearing may also be reset, so far as is convenient and
proper, at the request of the parties and their attorneys or
other authorized representatives.  See 37 CFR 2.129(b).
For information concerning requests to reset an oral
hearing, see TBMP 542.01.  However, parties should not file
repeated requests to reset an oral hearing.
802.04  Before Whom Held
An oral hearing is held before a panel of at least three
members (i.e., administrative trademark judges) of the
Board.  See 37 CFR 2.129(a).  Cf. Section 17 of the Act, 15
U.S.C. 1067; Knickerbocker Toy Co. v. Faultless Starch Co.,
467 F.2d 501, 175 USPQ 417 (CCPA 1972); and 37 CFR
2.142(e)(1).  Normally, an oral hearing panel consists of
only three Board members.  If a member of a panel of three
before which an oral hearing was held is, for some reason,
unable to participate in the final decision, another Board
member may be substituted at final decision for the missing
member, even though the substituted member was not present
at the oral hearing; no new oral hearing is necessary.  See
In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985),
and Jockey International, Inc. v. Bette Appel Unltd., 216
USPQ 359 (TTAB 1982).  Cf. Plus Products v. Medical
Modalities Associates, Inc., 217 USPQ 464 (TTAB 1983) (final
decision rendered by only two Board members invalid); Ronson
Corp. v. Ronco Teleproducts, Inc., 197 USPQ 492 (Comm'r
1978) (final decision rendered by only two Board members
invalid); and Ethicon, Inc. v. American Cyanamid Co., 193
USPQ 374 (Comm'r 1977) (alleged invalid appointment to Board
of one panel member).
The Board may, in its discretion, use an augmented panel to
hear a case.  See TBMP 541, and cases cited therein.  A
decision by the Board to use an augmented panel may be made
either upon the Board's own initiative, or upon motion filed
by a party to the proceeding.  For information concerning
motions for an augmented panel hearing, see TBMP 541.  For
further information concerning the constitution of Board
panels, see In re Alappat, 33 F.3d 1526, 31 USPQ2d 1545
(Fed. Cir. 1994).
802.05  Length of Oral Argument
Ordinarily, each party in a Board inter partes proceeding is
allowed 30 minutes for its oral arguments.  If it so
desires, the plaintiff may reserve part of its 30 minutes
for rebuttal.  See 37 CFR 2.129(a).  If there is a
counterclaim, the defendant, as the plaintiff in the
counterclaim, may also reserve part of its 30 minutes for
rebuttal on the counterclaim.
There is no requirement that a party use all of its allotted
30 minutes for oral argument.  Often, a case is of such
nature that a party's oral arguments thereon may be
presented in considerably less than 30 minutes.
On the other hand, if a party feels that it needs more than
30 minutes for oral argument, it may file a request with the
Board for additional time.  See 37 CFR 2.129(a), and TBMP
542.02.  Cf. 37 CFR 2.128(b), and TBMP 538.  For
information concerning requests for additional time for oral
argument, see TBMP 542.02.  If the request is granted, each
party will be allowed the same amount of time for oral
argument.
802.06  Audiotaping
Upon motion showing good cause, the Board will usually
permit a party to make an audiotape recording of an oral
hearing.  Such a recording, when permitted by the Board, is
strictly for the party's private use, and is not to be used
for purposes of publicity, or as "evidence" in any
proceeding.  For information concerrning motions for leave
to audiotape an oral hearing, see TBMP 543.
If permission to record an oral hearing is granted, the
moving party is responsible for furnishing, operating, and
removing its own audiotaping equipment in an unobtrusive
manner.  A court reporter is distracting and disruptive in
the context of an oral hearing before the Board, and
therefore may not be used.  For the same reason, an oral
hearing before the Board may not be videotaped.  See TBMP
543.
802.07  Visual Aids, etc.
The Board will generally allow certain types of materials,
such as graphs, large depictions of marks, schedules,
charts, etc., to be used at oral hearing, either for
clarification or to eliminate the need for extended
description, when such materials are based on evidence
properly of record.  See Reflange Inc. v. R-Con
International, 17 USPQ2d 1125 (TTAB 1990).
A party may also bring to the oral hearing any materials
introduced as exhibits at trial, including audiotapes or
videotapes of commercials or demonstrations.  A party which
introduced an audiotape or videotape as an exhibit at trial,
and wishes to play it at the oral hearing, should notify the
Board in advance.  In addition, a party which wishes to play
such a tape at oral hearing is responsible for furnishing,
operating, and removing the necessary equipment in an
unobtrusive manner.
A party may not, however, use an oral hearing for the
purpose of offering new evidence, whether in the form of
charts, graphs, exhibits, or other such materials.  See TBMP
802.01, and authorities cited therein.  Nor may a party
submit in writing the text of its oral argument; to allow
such a practice would be to permit a party, in effect, to
file an additional brief on the case.  See Reflange Inc. v.
R-Con International, 17 USPQ2d 1125 (TTAB 1990).
802.08  Nature of Hearing
Prior to an oral hearing, the Board panel members read the
briefs on the case and, if necessary, examine the case
files.  Thus, persons presenting oral arguments should not
read from the briefs on the case, except to emphasize an
admission contained in an adversary's brief.
Normally, an oral hearing case is not assigned to a
particular Board member for the drafting of a final decision
until some time after the oral hearing.  Thus, the Board
member who sits in the middle of the panel of three is not
necessarily the person to whom the case will be assigned for
decision; rather, the middle panel member is usually (but
not always) the senior panel member.
A person presenting oral arguments should be prepared to
answer questions from Board panel members at any point in
the arguments.  If exhibits or visual aids have been brought
to the oral hearing, they should be shown to the adversary
before they are shown to the Board panel.  Further, a person
presenting oral arguments should never interrupt the oral
arguments of the adversary.
For further information on how to argue a case before the
Board, see Saul Lefkowitz, TIPS FROM THE TTAB:  Presentation
of an Oral Hearing Before the Trademark Trial and Appeal
Board, 67 Trademark Rep. 283 (1977).
803  Final Decision
After an oral hearing has been held in a Board inter partes
proceeding, the case is set down for final decision.  If no
oral hearing is requested, the case is set down for final
decision after the due date for the filing of the last reply
brief on the case.
The final decision is rendered by a panel of at least three
Board members.  See Section 17 of the Act, 15. U.S.C. 1067;
Knickerbocker Toy Co. v. Faultless Starch Co., 467 F.2d 501,
175 USPQ 417 (CCPA 1972); Plus Products v. Medical
Modalities Associates, Inc., 217 USPQ 464 (TTAB 1983); and
Ronson Corp. v. Ronco Teleproducts, Inc., 197 USPQ 492
(Comm'r 1978).  Cf. 37 CFR 2.129(a) and 2.142(e)(1); In re
Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985);
Jockey International, Inc. v. Bette Appel Unltd., 216 USPQ
359 (TTAB 1982); and Ethicon, Inc. v. American Cyanamid Co.,
193 USPQ 374 (Comm'r 1977).  When there has been an oral
hearing in a case, the final decision normally is rendered
by the panel before which the oral hearing was held.  If a
member of a panel of three before which an oral hearing was
held is unable to participate in the final decision, another
Board member may be substituted at final decision for the
missing member.  See TBMP 802.04, and cases cited therein.
The Board may use an augmented panel at final decision.  For
information concerning the use of an augmented panel, see
TBMP 541.  For further information concerning the
constitution of Board panels, see In re Alappat, 33 F.3d
1526, 31 USPQ2d 1545 (Fed. Cir. 1994).
The evidentiary record in a case is not read by every member
of the panel assigned to decide the case.  Rather, one panel
member is assigned to read the testimony and examine the
other evidence of record, discuss the case with the other
panel members, and then draft a decision and supporting
opinion.  The draft is circulated to the other panel members
for their approval and signature.  A panel member who does
not agree with the decision may write a dissent.  A panel
member who agrees with the decision, but disagrees with the
reasoning expressed in the opinion supporting the decision,
or wishes to express addtional reasons, may write a
concurring opinion.
When a final decision has been signed by the members of the
panel rendering the decision, a copy thereof is mailed to
every party to the proceeding.
804  Request for Reconsideration of Final Decision
A party may file a request for rehearing, reconsideration,
or modification of a decision issued after final hearing.
See 37 CFR 2.129(c).  For information concerning requests
for rehearing, reconsideration, or modification of a
decision issued after final hearing, see TBMP 544.
805  Final Decision Remand to Examining Attorney
37 CFR 2.131 Remand after decision in inter partes
proceeding.
If, during an inter partes proceeding, facts are disclosed
which appear to render the mark of an applicant
unregistrable, but such matter has not been tried under the
pleadings as filed by the parties or as they might be deemed
to be amended under Rule 15(b) of the Federal Rules of Civil
Procedure to conform to the evidence, the Trademark Trial
and Appeal Board, in lieu of determining the matter in the
decision on the proceeding, may refer the application to the
examiner for reexamination in the event the applicant
ultimately prevails in the inter partes proceeding.  Upon
receiving the application, the examiner shall withhold
registration pending reexamination of the application in the
light of the reference by the Boad.  If, upon reexamination,
the examiner finally refuses registration to the applicant,
an appeal may be taken as provided by 2.141 and 2.142.
If, during the course of an opposition, concurrent use, or
interference proceeding, facts are disclosed which appear to
render the subject mark of an involved applicant
unregistrable, and the matter has not been tried under the
pleadings as filed by the parties or as they might be deemed
to be amended pursuant to FRCP 15(b), the Board, in its
decision in the proceeding, may, in addition to determining
the pleaded matters, remand the application to the Trademark
Examining Attorney for further examination in light of the
disclosed facts.  That is, the Board may include in its
decision a recommendation that in the event applicant
ultimately prevails in the inter partes proceeding, the
Examining Attorney reexamine the application in light of the
disclosed facts.  See 37 CFR 2.131, and TBMP 515 and cases
cited therein.  Cf. TBMP 1217.
If a party to an opposition, concurrent use, or interference
proceeding believes that the facts disclosed therein appear
to render the subject mark of an involved application
unregistrable, but the matter was not pleaded or tried by
the express or implied consent of the parties pursuant to
FRCP 15(b), the party may request that the Board include, in
its decision in the proceeding, a 37 CFR 2.131 remand to
the Examining Attorney.  The request may be made in the
party's brief on the case, or by separate motion.
806  Termination of Proceeding
When an inter partes proceeding before the Board has been
finally determined (that is, when the time for filing an
appeal from a decision of the Board determining the case has
expired, and no appeal has been filed, or when any appeals
filed have been determined), the Board takes certain further
steps, based on the judgment entered therein, to close out
the proceeding file and give effect to the judgment.  See
Notice of Final Rulemaking published in the Federal Register
on August 22, 1989 at 54 FR 34886, 34896, and in the
Official Gazette of September 12, 1989 at 1106 TMOG 26, 34.
The same is true when a proceeding ends by stipulation of
the parties, or by a voluntary withdrawal or consent to
judgment by one party.
For example, when a decision of the Board dismissing an
opposition becomes final (that is, the time for filing an
appeal has expired, and no appeal has been filed), or the
opposition is dismissed pursuant to a stipulation of the
parties or as the result of a withdrawal by opposer, the
Board normally takes the following steps, inter alia:
     (1) The testimony depositions, any discovery
depositions made of record in the case, and one copy of each
brief on the case (that is, materials which, because of
their bulkiness, would not have been kept by the Board in
the proceeding file--see TBMP 120.01), are all placed on
the prongs in the proceeding file.  The two extra copies of
each brief are discarded.
     (2)  The word "TERMINATED" is stamped on the proceeding
file.
     (3)  The proceeding file is sent to the PTO warehouse
where terminated proceeding files are stored.
     (4)  Exhibits which, because of their size, were too
bulky to put in the proceeding file, and therefore were
stored separately by the Board (see TBMP 120.02), are
returned to the party which filed them.
     (5)  Confidential materials filed under protective
order are returned to the party which filed them.
     (6)  The applicant's subject application is sent to the
appropriate section of the PTO for further appropriate
action, such as, issuance of a notice of allowance under 37
CFR 2.81(b), in an intent-to-use application for which no
amendment to allege use under 37 CFR 2.76 has been
submitted and accepted; issuance of a registration pursuant
to 37 CFR 2.81(a); republication, if necessary for some
reason; or reexamination by the Trademark Examining Attorney
pursuant to a 37 CFR 2.131 remand (see TBMP 805).
Alternatively, if the applicant's subject application has
been abandoned by the applicant, the abandoned application
is sent to the PTO warehouse where newly abandoned
applications are stored (pending their destruction
approximately two years after abandonment).
When a decision of the Board granting a petition for
cancellation becomes final, the first five steps listed
above are taken, and the subject registration is cancelled
by separate order of the Commissioner.  When a decision of
the Board dismissing a petition for cancellation becomes
final, the first five steps are taken, and the file of the
registration is returned to the PTO warehouse where "live"
(subsisting) registrations are stored.
Because the Board will take the termination steps described
above when a decision of the Board determining a case
appears, from the records of the PTO, to have become final,
a party which commences a civil action, pursuant to Section
21(b) of the Act, 15. U.S.C. 1071(b), seeking review of the
Board's decision should file written notice thereof in the
PTO, addressed to the Board, within one month after the
expiration of the time for appeal or civil action.  See 37
CFR 2.145(c)(4).  If a party files a civil action seeking
review of a Board's decision determining a proceeding, but
fails to notify the Board thereof, the Board, believing that
its decision has become final, will terminate the
proceeding.  As a result, a registration may be issued or
cancelled prematurely, while the civil action seeking review
of the Board's decision is still pending.
807  Status of Application After Proceeding
37 CFR 2.136 Status of application on termination of
proceeding.
On termination of a proceeding involving an application, the
application, if the judgment is not adverse, returns to the
status it had before the institution of the proceedings.  If
the judgment is adverse to the applicant, the application
stands refused without further action and all proceedings
thereon are considered terminated.
When an opposition, concurrent use or interference
proceeding ends with a judgment which is not adverse to an
involved applicant, the application returns to the status it
had before commencement of the proceeding, unless the Board
indicates in its decision that the application must be
republished for some reason, or includes in its decision a
37 CFR 2.131 remand to the Trademark Examining Attorney
(see TBMP 805).  See 37 CFR 2.136.
If the proceeding ends with a judgment which is adverse to
the applicant, the application stands refused, the file
thereof is stamped "ABANDONED," and all proceedings thereon
are considered terminated.  See 37 CFR 2.136; In re Vesper
Corp., 8 USPQ2d 1788 (Comm'r 1988) (Commissioner refuses to
reopen application after adverse final judgment in
opposition); and National Patent Development Corp. v.
Hercules Inc., 192 USPQ 491 (Comm'r 1976) (Commissioner
refuses to reopen application after adverse final judgment
in opposition).