Rwachsberg Holdings Inc., Apollo Health and Beauty Care Inc.v.Grüne Erde Beteiligungs GmbH

Trademark Trial and Appeal Board

Sep 8, 2021

91253866 (T.T.A.B. Sep. 8, 2021)

al
September 8, 2021
Opposition No. 91253866
Rwachsberg Holdings Inc. and Apollo
Health and Beauty Care Inc.

v.

Grüne Erde Beteiligungs GmbH

Before Bergsman, Lynch, and Lebow,
Administrative Trademark Judges.

By the Board:

This case now comes up for consideration of Applicant’s motion (filed March 19,
2021) for relief under Fed. R. Civ. P. 60(b)(1).1 The motion is fully briefed. For the
reasons explained below, the motion is denied.
Background
On February 3, 2020, Opposers filed a notice of opposition2 against Applicant’s
multi-class application Serial No. 87787209, as to the goods in International Class 3
only3, for the following composite mark4:

1 21 TTABVUE. Although captioned as a “Motion to Vacate Judgment,” such motion was
filed pursuant to Fed. R. Civ. P. 60(b)(1) and we, therefore, construe it as one for relief from
judgment. Under Fed. R. Civ. P. 60(b)(1), a party may be relieved from a final judgment,
order, or proceeding because of “mistake, inadvertence, surprise, or excusable neglect.”
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
This order is a precedent of
the TTAB
Opposition No. 91253866

2

for the following goods:
After-sun gels; After-sun milks; After-sun oils; Anti-aging cream;
Bath oils for cosmetic purposes; Bath pearls; Beauty masks;
Cosmetic bath salts; Cosmetic oils; Cosmetic preparations;
Cosmetic soaps; Cosmetics; Dentifrices; Eye liner; Eye shadows;
Face powder; Facial masks; Fragrances for personal body use;
Hair care preparations; Hair lotions; Lip gloss; Lipsticks; Make-
up; Make-up pencils; Make-up remover; Mascaras; Massage oils;
Perfumed soaps; Perfumery for personal body use; Rouges; Sun-
tanning oils and lotions; Sun care lotions; Bath soaps; Cosmetic
preparations against sunburn; Liquid soaps for laundry; Natural
mineral make-up; Non-medicated bath preparations; Non-
medicated sun care preparations; Shaving soaps; all of the
foregoing goods being environmentally friendly.

On March 12, 2020, Applicant filed its answer.5 Thereafter, the parties entered
into an extended period of settlement negotiations which culminated in the filing by
Opposers, on February 18, 2021, of a “Stipulated Withdraw of Application and
Dismissal of Opposition”6 which was drafted by Applicant. The stipulation contains
the following statement as well as the signatures of both parties’ counsel of record:
The parties to this opposition have reached an agreement and
respectfully request that the Board enter an appropriate Order
withdrawing the application without prejudice and dismissing the
opposition without prejudice.

2 1 TTABVUE.
3 Although Opposer opposed registration of Applicant’s mark in only one of the seven
classes in the involved application, Applicant did not move to divide the unopposed classes
into a separate application. See Trademark Rule 2.6(a)(19).
4 The application was filed on February 6, 2018, pursuant to Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b). According to the application: The mark consists of the wording
“GRÜNE ERDE” in the color dark green with a dark green tree in dark green ground
between the terms “GRÜNE” and “ERDE.” The English translation of “GRUNE ERDE” in
the mark is “GREEN SOIL.”
5 5 TTABVUE.
6 18 TTABVUE.
Opposition No. 91253866

3

The Board acted on the unambiguous language of the stipulation and issued an
order on February 25, 2021, wherein the Board deemed the subject application
abandoned in its entirety and dismissed the opposition without prejudice.7
In support of its motion for relief, Applicant alleges that “the parties did not
have a true meeting of the minds when determining the scope of the agreement to
resolve the application;”8 that “Applicant believed the parties’ agreement was only
with respect to abandonment of the only opposed class, the goods in Class 3,
whereas Opposer [sic] believes the entire application was to be abandoned;”9 and
that it would therefore be appropriate to vacate the Board’s order of February 25,
2021 because of this failure of agreement. Applicant admits that the parties’
stipulation filed on February 18, 2021 was drafted by its counsel and was “poorly
drafted with respect to providing abandonment only as to Class 3.”10 Applicant
further states that after the Board’s order of February 25, 2021 issued wherein the
entire application was deemed abandoned, Applicant realized the error and
contacted Opposers’ counsel to resolve the matter. The parties were not able to

7 19 TTABVUE. As discussed more fully below, we observe that once an opposition is
commenced, the Board has jurisdiction over the application. Trademark Rule 2.101(a), 37
C.F.R. § 2.101(a); and TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(TBMP) §§ 302 and 304 (2021). After the commencement of an opposition proceeding, if the
applicant files a written abandonment of its subject application or mark without the
written consent of every adverse party to the proceeding, judgment will be entered against
the applicant. Trademark Rule 2.135, 37 C.F.R. § 2.135; TBMP § 602.01. Here, however,
because Opposers provided their written consent to the abandonment of the application,
judgment was not entered against Applicant as to Class 3, the opposed class.
8 21 TTABVUE 2.
9 Id.
10 Id. at 3.
Opposition No. 91253866

4
agree on whether their prior negotiations concerned abandoning Class 3 only or the
entire subject application.
In response, Opposers argue that the present motion “plainly violates
Trademark Rule §2.68, which states unconditionally that ‘[a] request for
abandonment or withdrawal [of an application] may not subsequently be
withdrawn.’”11 Opposers therefore assert that the February 18, 2021 filing may not
now be withdrawn.12 Opposers further assert that during the parties’ negotiations,
Opposers specifically referred to Trademark Rule 2.68 stating the following in the
email sent to Applicant’s counsel: “[Opposers] consent to the express abandonment
of [Applicant’s] trademark application. Please prepare a motion to that effect
pursuant to 37 C.F.R. § 2.68 and TBMP § 602.01 and we will sign to provide the
consent in writing.”13
Opposers state that they signed and filed the February 18, 2021 stipulation that
Applicant drafted “because it exactly matched the agreement between the parties;”
that during negotiations “Applicant never limited its offer to be merely an
abandonment of only the Class 3 goods in the application (and had Applicant done
so, such offer would have been flatly rejected by Opposer [sic] as inadequate…”);
and that “Applicant’s different recollection after the fact does not amount to
excusable neglect under Rule 60(b)(1)….”14

11 22 TTABVUE 3.
12 Id.
13 A copy of the referenced email correspondence between the parties’ attorneys was
submitted by Applicant as an exhibit to its motion. 21 TTABVUE 16-17 and 22
TTABVUE48-49.
14 22 TTABVUE 6.
Opposition No. 91253866

5
In reply, Applicant states that Opposers argue “incorrectly that Rule 2.68
controls this case” and that the parties’ February 18, 2021 stipulation did not refer
to such rule.15 However, Applicant does not directly dispute Opposers’ contention
that Applicant never limited its offer to merely an abandonment of only the Class 3
goods.
Analysis
Under Fed. R. Civ. P. 60(b)(1), a party may be relieved from a final judgment,
order, or proceeding because of “mistake, inadvertence, surprise, or excusable
neglect.” However, the relief requested in this case—namely, withdrawal of an
express abandonment of an application—is precluded by the Rules of Practice in
Trademark Cases which do not allow the withdrawal of an express abandonment of
an application. Contrary to Applicant’s assertion, Trademark Rule 2.68, 37 C.F.R.
§ 2.68, applies in this instance. Trademark Rule 2.68 permits the abandonment of
an application by the filing of a written statement of abandonment or withdrawal of
the application signed by the applicant or the applicant’s attorney. Such rule
unequivocally states that “[a] request for abandonment or withdrawal may not
subsequently be withdrawn.”16 Applicant’s motion seeks to withdraw its February

15 24 TTABVUE 2.
16 We observe that the rule was amended in 2015 to include such language. The reasoning
for this amendment is explained in the Federal Register:

The Office is amending § 2.68(a) to indicate that, consistent with
existing practice, a request for abandonment or withdrawal may not
subsequently be withdrawn. This is intended 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.
Opposition No. 91253866

6
18, 2021 abandonment of its application. Under Trademark Rule 2.68 this is
impermissible.
Conclusion
Accordingly, Applicant’s motion for relief is denied. The Board’s February 25,
2021 order dismissing this opposition and abandoning Applicant’s application in its
entirety stands.

Miscellaneous Changes to Trademark Rules of Practice, Final Rule, 80 Fed. Reg.
2,303 (Jan. 16, 2015) (accessed at https://www.govinfo.gov/content/pkg/FR2015-
01-16/pdf/2015-00267.pdf, April 8, 2021).