Legal Promotions, Inc.

Trademark Trial and Appeal Board

May 23, 2008

No. 76655995re (T.T.A.B. May. 23, 2008)

Mailed:
May 23, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Legal Promotions, Inc.
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Serial No. 76655995
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Howard A. MacCord, Jr. of MacCord Mason PLLC for Legal
Promotions, Inc.

Ada P. Han, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
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Before Zervas, Cataldo and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Legal Promotions, Inc. filed a use-based application
for the mark THEAUTOFILE (as amended), in standard
character format, for “vinyl folders to hold auto insurance
papers and the like sized to fit in an automobile glove
box,” in Class 16. Applicant disclaimed the exclusive
right to use the word “file.” The Trademark Examining
Attorney refused registration under Section 2(e)(1) of the
Trademark Act of 1946, 15 U.S.C. §1052(e)(1), on the ground
that the mark THEAUTOFILE is merely descriptive. In a
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 76655995
2
decision dated April 9, 2008, the Board affirmed the
refusal to register applicant’s mark.
On May 15, 2008, applicant filed a request to amend
the application to the Supplemental Register. We construe
applicant’s request to amend the application to the
Supplemental Register as a request for reconsideration of
the refusal to register based on applicant’s proposed
amendment of the application to the Supplemental Register.
For the reasons set forth below, applicant’s request is
denied.
First, applicant’s request for reconsideration was not
timely filed. Trademark Rule 2.144, 37 CFR §2.144,
provides that “[a]ny request for rehearing or
reconsideration, or modification of the decision, must be
filed within one month of the date of the decision.”
Applicant’s request for the Board to take any action with
respect to an application for which a final decision has
been rendered must be filed within one month of the date of
the decision. Because the Board’s final decision was
issued on April 9, 2008 and because applicant’s request was
filed on May 15, 2008, applicant’s request was not timely
filed.
Second, applicant may not request an amendment to the
Supplemental Register after a final decision has been
Serial No. 76655995
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rendered. Trademark Rule 2.143(g), 37 CFR §2.143(g),
provides that “[a]n application which has been considered
and decided on appeal will not be reopened except for the
entry of a disclaimer under §6 of the Act of 1946 or upon
order of the Director.” This means that an application may
not be “reopened” (i.e., amended) except to enter a
disclaimer or upon an order from the Director. TBMP §1218
(2nd ed. rev. 2004). See also In re Petite Suites Inc., 21
USPQ2d 1709, 1711 (after a final decision by the Board,
prosecution of an application will not be reopened to allow
applicant to amend its application to seek registration
under Section 2(f)); Ex parte Simoniz Company, 161 USPQ 365
(Comm’r Pat. 1969); Ex parte Helene Curtis Industries,
Inc., 134 USPQ 73 (Comm’r Pat. 1962).
In view of the foregoing, applicant’s request to amend
its application to the Supplemental Register is denied.