By James Juo.

One way to settle a trademark opposition is by agreeing to abandon the application in dispute. In Rwachsberg Holdings Inc. and Apollo Health and Beauty Care Inc. v. Grüne Erde Beteiligungs GmbH, Opposition No. 91253866 (TTAB Sept. 8, 2021), Rwachsberg Holdings and Apollo Health and Beauty Care both opposed Grüne Erde's multi-class trademark application Serial No. 87787209 for a composite “Grüne Erde” mark, with respect to the goods in International Class 3 only. The application, however, also included goods and services in Classes 11, 20, 24, 25, 27, and 35. The Board noted that although the application was opposed in only one of the seven classes in the involved application, the applicant did not move to divide the unopposed classes into a separate application under Trademark Rule 2.6(a)(19).

As part of a settlement of the Opposition proceeding, the parties filed a “Stipulated Withdraw of Application and Dismissal of Opposition” which requested that the Board withdraw the application without prejudice. The Board then issued an order that deemed the subject application abandoned in its entirety and dismissed the opposition without prejudice.

Grüne Erde later filed a motion for relief from the judgment under Fed. R. Civ. P. 60(b)(1), under which a party may be relieved from a final judgment, order, or proceeding because of “mistake, inadvertence, surprise, or excusable neglect.” Grüne Erde argued that it had intended to only abandon the application to Class 3, which was the subject of the opposition. The Opposers, however, noted that a request for withdrawal may not subsequently be withdrawn, citing Trademark Rule 2.68 (37 C.F.R. § 2.68); and that Grüne Erde never limited its settlement offer to merely an abandonment of only the Class 3 goods.

The Board held that Trademark Rule 2.68 unequivocally states that “[a] request for abandonment or withdrawal may not subsequently be withdrawn,” noting that the purpose of the rule was “to provide applicants, registration owners, and the public assurance of the accuracy of the status of applications or registrations after filings are received by the Office.”

Accordingly, Grüne Erde's motion was denied as impermissible, and its trademark application remains abandoned in its entirety.

When an abandonment or withdrawal of a trademark application is negotiated as part of a settlement for an opposition, care should be taken to understand exactly what is being abandoned before crossing the Rubicon by filing that request for abandonment or withdrawal.

The trademark attorneys at Thomas P. Howard, LLC are experienced at prosecuting trademark applications before the USPTO, as well as enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.