Be Precise When Expressly Abandoning A Trademark Application Or Face The Consequences

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In a recent precedential decision, the Trademark Trial and Appeal Board (“TTAB”) cautioned practitioners to be careful what they ask for and to draft their filings accordingly.

On September 8, 2021, the TTAB denied Applicant Grüne Erde Beteiligungs GmbH’s (“Grüne Erde”) motion for relief from judgment following its express abandonment of its opposed multi-class application to register the following mark:

Grüne Erde expressly abandoned the subject application as part of a settlement to resolve a pending opposition filed against only the Class 3 goods recited in the application.  Although Opposer opposed registration of Grüne Erde’s mark in only one of the seven classes in the application, Grüne Erde did not move to divide the unopposed classes into a separate application.

Pursuant to the parties’ agreement, Opposer filed a Stipulated Withdrawal of Application and Dismissal of Opposition drafted by Grüne Erde.  The Stipulation included the following statement and the signature of counsel of record for both parties:

The parties to this opposition have reached an agreement and respectfully request that the Board enter an appropriate Order withdrawing the application without prejudice and dismissing the opposition without prejudice.

(emphasis added).

Based on the unambiguous language of the Stipulation, the TTAB issued an Order deeming the subject application abandoned in its entirety.

Grüne Erde filed a motion for relief from judgment under Fed. R. Civ. P. 60(b)(1), claiming the “‘the parties did not have a true meeting of the minds when determining the scope of the agreement to resolve the application;’ that ‘Applicant believed the parties’ agreement was only with respect to abandonment of the only opposed class, the goods in Class 3, whereas Opposer [sic] believes the entire application was to be abandoned;’” and that it would, therefore, be appropriate to vacate the TTAB’s Order because of this failure of agreement.  Decision, at p. 3.

The TTAB denied Grüne Erde’s motion, stating that, although Fed. R. Civ. P. 60(b)(1) provides that a party may be relieved from a final judgment, order or proceeding because of “mistake, inadvertence, surprise, or excusable neglect,” Trademark Rule 2.68 unequivocally precluded the relief Grüne Erde sought—namely, the withdrawal of an express abandonment.  Id., at pp. 4-5.

Put plainly, draft stipulations and, in particular, express abandonments with a critical eye to ensure that you carve out any necessary exceptions or limitations to the abandonment.  The TTAB will not be forgiving and no relief from the abandonment will be obtained.

The decision is Rwachsberg Holdings Inc., et al. v. Grüne Erde Beteiligungs GmbH, Opposition No. 91253866 (TTAB Sept. 8, 2021).

[View source.]

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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