Federal Circuit disposition — 2010-1528

# NOTE: This order is nonprecedential. United States Court of Appeals for the Federal Circuit

IN RE CARMINE'S BROADWAY FEAST INC.

2010-1528
(Serial No. 78/934,642)

Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board.

## ON MOTION

Before GAJARSA, MAYER, and PROST, Circuit Judges.

GAJARSA, Circuit Judge.

## ORDER

Carmine's Broadway Feast Inc. and the Under Secre-
tary for Commerce for Intellectual Property and Director
of the United States Patent and Trademark Office jointly
move to vacate the Trademark Trial and Appeal Board
decision as moot and to remand for further proceedings.

The Board affirmed a rejection of Carmine's Broad-
way's trademark application as likely to cause confusion
with two trademark registrations, U.S. Registration Nos.
1,444,609 and 2,864,349. Registration No. 2,864,349 has

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since been cancelled, and Registration No. 1,444,609 is
now owned by Carmine's Broadway and therefore no
longer poses a bar to the present trademark registration.

Carmine's Broadway's ownership of Registration No.
1,444,609 subsequent to the Board's decision does not
mean that vacatur by this court is appropriate. See,
e.g., U.S. Bancorp Mortgage Co. v. Bonner Mall Partner-
ship, 513 U.S. 18, 29 (1994) (holding that "mootness by
reason of settlement does not justify vacatur of a judg-
ment under review"). The proper course is to remand the
case so that the Board can consider the Carmine's Broad-
way's request for vacatur of the Board's decision.

Accorgingly,
IT IS ORDERED THAT:

(1) The motion for vacatur is denied.

(2) The motion to remand for further
proceedings is granted.

FOR THE COURT

MAY 2 7 2011

Date

/s/ Jan Horbaly
Jan Horbaly
Clerk

cc: Beth A. Chapman, Esq.
Raymond T. Chen, Esq.
s24

FILED
U.S. COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
MAY 2 7 2011

JAN HORBALY
CLERK