JDK Select, Inc.

Trademark Trial and Appeal Board

Oct 12, 2006

No. 78324310re (T.T.A.B. Oct. 12, 2006)

Mailed:
October 12, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re JDK Select, Inc.
________

Serial No. 78324310
_______

Jason D. Firth of Greenberg Traurig LLP for JDK Select,
Inc.

Steven W. Jackson, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Seeherman, Drost and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

In a paper filed September 5, 2006, JDK Select, Inc.
(applicant) requests reconsideration of our decision of
August 2, 2006 in this case. In that decision, we affirmed
a refusal to register applicant’s mark under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), in view of Reg.
No. 2591771. Applicant requests reconsideration on the
ground that it filed a petition to cancel the cited
registration, also on September 5, 2006. The cancellation
proceeding (No. 92046250) was instituted on September 6,
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78324310

2
2006, and it asserts, among other things, that the
registrant committed fraud in obtaining the registration.
Applicant’s request for relief states, “As the cited
registration is invalid, Applicant requests that the Board
either reconsider its refusal to register pursuant to
Section 2(d) or stay the current status of this application
until the cancellation proceedings have been decided.”
The correct characterization of Applicant’s request is
as a request to reopen the proceeding. See In re Vycom
Electronics Ltd., 21 USPQ2d 1799, 1800 (Com’r Pats. 1986).
In the Vycom Electronics case, the applicant asked the
Board to suspend proceedings in its application after the
Board had rendered a final decision in an appeal. The
applicant in that case also based its request on
cancellation proceedings it filed after the decision in the
appeal. Id. Also, as in this case, the purpose of the
proceedings was to cancel registrations which served as the
basis of the refusal which the Board affirmed on appeal.
In Vycom Electronics, the Commissioner stated,
“Although petitioner has characterized its motion as one to
stay proceedings, in fact it is a motion to reopen
prosecution because of what at the time was contemplated
and are now filed petitions to cancel. Rule 2.142(g) makes
it clear that a motion to reopen except for entry of a
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3
disclaimer, must be upon order of the Commissioner.” Id.
The Commissioner stated further that, even if the applicant
had directed its request to the Commissioner, the
Commissioner would deny the request under the
circumstances. The Commissioner concludes by stating,
“Further, during the pendency of the application before the
Examining Attorney, the petitioner could have elected to
file petitions to cancel the cited registrations and to
request suspension of further action on its application.
(Citation omitted.) Instead petitioner elected to file an
ex parte appeal and pursue it to a final decision by the
Board. Rule 2.142(g) was not intended to permit an
applicant to pursue the wholly different procedural
alternative of a cancellation proceeding after the Board
has finally disposed of an application by a decision
adverse to applicant on an ex parte appeal.” Id.
The provisions of current Trademark Rule 2.142(g) are,
in all respects, identical to the rule in effect at the
time of the Vycom Electronics case. Furthermore, the facts
before us in this request are, in all relevant respects,
identical to those in the Vycom Electronics case.
Accordingly, we deny applicant's request for
reconsideration because it, in effect, seeks to reopen the
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application and we have no authority to do so in these
circumstances. See Trademark Rule 2.142(g).