(394) Interlocutory Decisions by the
Trademark Trial and Appeal Board
Only final decisions of the Trademark Trial and Appeal Board are
subject to judicial review. Some confusion may exist in inter partes
trademark proceedings as to whether certain decisions of the Board are
"final" fort purpose of judicial review.
An example where confusion may arise is a case in which (1) an
opposition is filed, (2) applicant counterclaims for cancellation of a
registration relied upon by an opposer, and (3) the Board renders a
dicision (generally on summary judgment) on the opposition, but sets the
counterclaim for trial. Under these circumstances, there is no final
order of the Board, because a decision has not been entered on the
The party losing the opposition may feel compelled to seek judicial
review within two months of the Board's decision to "prserve" its
rights. But such an appeal appears to be premature under Copeland's
Enterprises, Inc. v. CNV, Inc. 887 F.2d 1065, 12 USPQ2d 1563 (fed. Cir.
1989) (in banc). Copeland's is not the only appeal which has been
dismissed because it was taken from an interlocutory decision of the
Board. See Cortex Corporation v. W.L. Gore & Associates, Inc., No.
91-1016 (Fed. Cir. January 14, 1991)(unpublished), and Kellogg Co. v.
Pack'em Enterprises, Inc., No. 90-1336 (Fed. Cir. Sept. 27, 1990)
In an effort to (1) minimize disruption in proceeding pending before
the Board, (2) eliminate unnecessary appeals and filing of civil
actions, only to have the appeal or civil action dismissed as premature,
and (3) provide some certainty to parties and their attorneys as to when
an appeal is timely, the Board will, when resolving a merits issue prior
to final judgement, generally indicate that it has entered an
"interlocutory" order in the proceeding and further set the time for
seeking judicial review of the "interlocutory" order to expire two
months from the date a final order is entered in the proceeding.
Jan. 22, 1991 HARRY F. MANBECK, Jr.
Assistant Secretary and Commissioner
of Patents and Trademarks
[1123 TMOG 36]