(a) Whenever it shall come to the attention of the Trademark Trial and Appeal Board that a civil action, another Board proceeding, or an expungement or reexamination proceeding may have a bearing on a pending case, proceedings before the Board may be suspended until termination of the civil action, the other Board proceeding, or the expungement or reexamination proceeding. A civil action or proceeding is not considered to have been terminated until an order or ruling that ends litigation has been rendered and noticed and the time for any appeal or other further review has expired with no further review sought.
(b) Whenever there is pending before the Board both a motion to suspend and a motion which is potentially dispositive of the case, the potentially dispositive motion may be decided before the question of suspension is considered regardless of the order in which the motions were filed.
(c) Proceedings may also be suspended sua sponte by the Board, or, for good cause, upon motion or a stipulation of the parties approved by the Board. Many consented or stipulated motions to suspend are suitable for automatic approval by ESTTA, but the Board retains discretion to condition approval on the party or parties providing necessary information about the status of settlement talks, discovery activities, or trial activities, as may be appropriate.
[48 FR 23136, May 23, 1983, as amended at 63 FR 48097, Sept. 9, 1998; 81 FR 69975, Oct. 7, 2016; 86 FR 64330, Nov. 17, 2021]
Notes of Decisions
Goya Foods, Inc. v. Tropicana Prods., Inc., 846 F.2d 848 (2d Cir. 1988).
“The TTAB granted Goya’s request to suspend the administration hearings, see 37 C.F.R. § 2.117 (1987), with leave to resume the proceedings in the event the District Court action was stayed or dismissed.”
Toro Co. v. Hardigg Indus., Inc., 549 F.2d 785 (C.C.P.A. 1977).
“117, 37 CFR 2.117. 4 Issue The dispositive issue is whether the board erred in holding res judicata inapplicable.”
Humetrix, Inc. v. Gemplus S.C.A., 268 F.3d 910 (9th Cir. 2001).
“See 37 C.F.R. § 2.117 (a) (“Whenever ... a party or parties to a pending [trademark registration dispute] are engaged in a civil action .”
Empresa Cubana Del Tabaco v. Culbro Corp., 478 F. Supp. 2d 513 (S.D.N.Y. 2007).
“117, 37 C.F.R. § 2.117 , the TTAB cancellation proceedings were suspended pending the outcome of the federal court litigation.”
Empresa Cubana Del Tabaco v. Culbro Corp., 587 F. Supp. 2d 622 (S.D.N.Y. 2008).
“117, 37 C.F.R. § 2.117 , the TTAB cancellation proceedings were suspended pending the outcome of the federal court litigation.”
Sterling Jewelers, Inc. v. Artistry Ltd., 896 F.3d 752 (6th Cir. 2018).
“See 37 C.F.R. § 2.117 . Sterling allowed some of the registrations to expire by declining to file affidavits certifying that the marks were used in commerce, but it still maintains several of its Artistry trademarks.”
Colgate-Palmolive Co. v. Brenner, 248 F. Supp. 378 (S.D.N.Y. 1965).
“We therefore hold that the Commissioner has the power to excuse late payment where good cause is shown even though the time for filing the opposition is not extended. Accordingly, the case is remanded to the Commissioner to afford him opportunity to exercise his discretion in…”
Goya Foods, Inc. v. Tropicana Prods., Inc., 666 F. Supp. 585 (S.D.N.Y. 1987).
“117(a), 37 C.F.R. § 2.117 (a) provides: "Whenever it shall come to the attention of the Trademark Trial and Appeal Board that parties to a pending case are engaged in a civil action which may be dispositive of the case, proceedings before the Board may be suspended until…”
In Re Agadia Sys. Inc. (Fed. Cir. 2024).
“” 37 C.F.R. § 2.117 (a)–(c). We see nothing in that regulation that would clearly deprive the TTAB of authority to stay proceedings, even if it first learned of the appeal from the Solicitor.”
Blue Athletic v. Nordstrom (D.N.H. 2010).
“at 78 (citing 37 C.F.R. § 2.117 ) . Because the TTAB does not have exclusive jurisdiction over the registrability of Blue Athletic's marks, respondents are not 16 entitled to dismissal of Blue Athletic's third request for declaratory relief.”
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