Modern Woodmen of America

Trademark Trial and Appeal Board

Mar 12, 2012

No. 77308779re (T.T.A.B. Mar. 12, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.

Mailed: March 12, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Modern Woodmen of America
________

Serial Nos. 77308794, 77308779, and 77308822
_______

Thomas J. Moore of Bacon & Thomas, PLLC for Modern Woodmen
of America.

Caryn Glasser, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Holtzman, Taylor, and Wolfson, Administrative
Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:

Modern Woodmen of America (“applicant”) has filed a
timely request for reconsideration of the Board’s decision
dated January 6, 2012, affirming the refusals to register
in application Serial Nos. 77308794, 77308779, and 77308822
for the marks:
Serial Nos. 77308794, 77308779, and 77308822

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and
.
The examining attorney refused registration under
Section 2(d) of the Trademark Act in view of the following
registrations:
1. Registration No. 0890680 for the mark OMAHA WOODMEN;

2. Registration No. 2767582 for the mark WOODMEN
FINANCIAL SERVICES;

3. Registration No. 2995606 for the mark WOODMEN
MORTGAGE SERVICES;

4. Registration No. 2995607 for the mark WOODMEN
INSURANCE AGENCY; and

5. Registration No. 3559362 for the mark WOODMEN OF THE
WORLD.
Applicant requests reconsideration to allow time for
it to receive a substantive response from Woodmen of the
World Life Insurance Society and/or Omaha Woodmen Life
Insurance Society (“registrant”) regarding a proposed
Mutual Use Agreement that applicant has transmitted to
registrant. Applicant indicates that it would then expect
to submit the agreement to the examining attorney.
Serial Nos. 77308794, 77308779, and 77308822

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Once an application has been decided by the Board on
appeal, it cannot be reopened except for the entry of a
disclaimer. See Trademark Rule 2.142(g). The Board has no
authority, following its final decision on appeal, to
remand the case to the examining attorney for further
examination. See In re Johanna Farms, Inc., 223 USPQ 459,
460 (TTAB 1984); In re Mercedes Slacks, Ltd., 213 USPQ 397,
397 n.2 (TTAB 1982); and TBMP § 1217 (3d ed. 2011).
Accordingly, the Board lacks authority to reopen this
proceeding and remand the cases to the examining attorney
to consider any Mutual Consent Agreement that the parties
may hereafter execute.
Applicant’s request for reconsideration on this basis
is accordingly denied.
Applicant further requests reconsideration in view of
its recently filed “Petition to the Director Under
Trademark Rule 2.146 to Reopen Prosecution” to allow cited
Reg. No. 890680, for the mark OMAHA WOODMEN, to be
withdrawn. It is noted, however, that Reg. No. 890680 has
now been cancelled.
Accordingly, applicant’s request for reconsideration
is granted to the extent that any discussion in the
decision regarding Reg. No. 890680 is considered moot, and
Serial Nos. 77308794, 77308779, and 77308822

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the decision is hereby vacated as to that registration.
The Board’s decision otherwise stands.
Finally, applicant has requested that we delay our
decision on its request for reconsideration until after
March 13, 2012, the date when cited Reg. No. 2995606, for
the mark WOODMEN MORTGAGE SERVICES, will be cancelled if a
Section 8 affidavit or declaration is not filed. We have
construed this request as a request for a suspension of
this proceeding. Applicant’s request for suspension is
granted.
Accordingly, proceedings herein are suspended for 45
days,1 and further consideration of applicant’s request for
reconsideration as it relates to Reg. No. 2995606 is
deferred, pending a determination as to whether this
registration will be cancelled.

1 Although cancellation will be effective March 13, 2012,
additional time is allotted to take into account possible mailing
delays and processing time.