BrainLAB AG

Trademark Trial and Appeal Board

Mar 11, 2005

No. 78102336re (T.T.A.B. Mar. 11, 2005)

Mailed:
March 11, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re BrainLAB AG
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Serial Nos. 78102333 and 781023364
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On Request for Reconsideration
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Don W. Bulson of Renner, Otto, Boisselle & Sklar, LLP for
BrainLAB AG.

Marc J. Leipzig, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
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Before Seeherman, Bottorff and Rogers,
Administrative Trademark Judges.

Rogers, Administrative Trademark Judge:

The Board's decision in this appeal focused solely on
whether the examining attorney properly refused to allow
applicant's marks to be registered when applicant had
refused to amend a particular phrase in the identification
of goods, in one class, in each of the applications. We
held that the refusal was proper and that, in the absence
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 78102333 and No. 78102336
2
of an appeal of our decision, the Board would delete the
vague and overbroad phrase and allow the marks to be
otherwise registered.
Applicant now seeks reconsideration on the ground that
after it filed its reply brief, it had agreed with the
examining attorney on an appropriate amendment to the
phrase in dispute and submitted the amendment by e-mail to
the examining attorney. Neither the applicant nor the
examining attorney requested suspension of the appeal and
remand to allow the amendment to be entered, which would
have rendered the appeal moot.
Notwithstanding the absence of a timely request for
remand, it is clear that there was no need for the Board to
issue the final decision. We set aside the decision and
remand the application for the examining attorney to enter
the various amendments that were agreed upon at various
times during the pendency of these appeals. After the
examining attorney has entered all such amendments, so as
to render the final refusal moot, he should inform the
Board, so that we may dismiss these appeals.