Cortex Corporation, Appellant, v. W.l. Gore & Associates, Inc., Appellee, 928 F.2d 410 (Fed. Cir. 1991)

At the direction of the court, the parties and the Commissioner of Patents and Trademarks addressed the issue of whether Cortex Corporation's appeal should be dismissed as premature. W.L. Gore & Associates, Inc. and the Commissioner urge dismissal. Cortex urges continuance of the appeal.

Cortex filed an application to register a trademark. Gore opposed the application and moved for summary judgment based on likelihood of confusion. Cortex counterclaimed seeking cancellation of Gore's federal registrations on the ground that they were procured by fraud.

On July 3, 1990, the Trademark Trial and Appeal Board (TTAB) granted Gore's motion for summary judgment holding that there was likelihood of confusion. The TTAB's decision also stated that the counterclaim for cancellation would go forward. Both issues were part of a single PTO proceeding.

Cortex appealed from the July 3, 1990 decision. Gore and the Commissioner argue that the appeal is premature because the counterclaim remains. Cortex argues, in essence, that because the issues in the opposition and cancellation proceedings are entirely distinct and not intertwined that the decision is appealable.

We agree with Gore and the Commissioner. In Copelands' Enterprises Inc. v. CNV, Inc., 887 F.2d 1065 (Fed. Cir. 1989) (in banc), which also involved an appeal from the PTO, we determined that partial summary judgments were not appealable. That the issues remaining are distinct is of no moment. The issues in Copelands were separate and distinct.

Accordingly,

IT IS ORDERED THAT:

The appeal is dismissed.