T.M.E.P. § 1217
Res Judicata

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

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1217 Res Judicata

A prior adjudication against an applicant, in connection with the same mark, on the basis of the same facts and issues, constitutes a proper ground of refusal as res judicata. Prior adjudications include decisions of the Trademark Trial and Appeal Board or any of the reviewing courts. The refusal is appropriate only after the time for further court review has expired and no such review has been sought or, if sought, the review action has been terminated. However, the applicant may not be precluded under the doctrine of res judicata from again seeking registration if the facts and circumstances have changed since the adverse decision. See In re Honeywell Inc., 8 USPQ2d 1600 (TTAB 1988); In re Johanna Farms Inc., 8 USPQ2d 1408 (TTAB 1988); In re Minnetonka, Inc., 3 USPQ2d 1711 (TTAB 1987).

When refusing registration on the basis of res judicata, the examining attorney also must raise all other issues that are pertinent to the application.

When all matters other than the question of res judicata have been attended to, but review action on the prior adjudication is not yet terminated, the examining attorney may suspend action on the application pending termination. See TMEP §716.02(d).