Opinion
No. 2010-1528.
May 27, 2011.
Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board.
Before GAJARSA, MAYER, and PROST, Circuit Judges.
ON MOTION ORDER
Carmine's Broadway Feast Inc. and the Under Secretary for Commerce for Intellectual Property and Director of the United States Patent and Trademark Office jointly move to vacate the Trademark Trial and Appeal Board decision as moot and to remand for further proceedings.
The Board affirmed a rejection of Carmine's Broadway's trademark application as likely to cause confusion with two trade-mark registrations, U.S. Registration Nos. 1,444,609 and 2,864,349. Registration No. 2,864,349 has since been cancelled, and Registration No. 1,444,609 is now owned by Carmine's Broadway and therefore no longer poses a bar to the present trade-mark registration.
Carmine's Broadway's ownership of Registration No. 1,444,609 subsequent to the Board's decision does not mean that vacatur by this court is appropriate. See, e.g., U.S. Bancorp Mortgage Co. v. Bonner Mall Partnership, 513 U.S. 18, 29,
115 S.Ct. 386, 130 L.Ed.2d 233 (1994) (holding that "mootness by reason of settlement does not justify vacatur of a judgment under review"). The proper course is to remand the case so that the Board can consider the Carmine's Broadway's request for vacatur of the Board's decision.
Accordingly,
IT IS ORDERED THAT:
(1) The motion for vacatur is denied.
(2) The motion to remand for further proceedings is granted.