A settlement that ends the appeal does not erase the decision being appealed. On 20 October 2026 the Trademark Trial and Appeal Board denied a joint motion by both sides to vacate its earlier final decision cancelling two registrations, in O&M Halyard, Inc. v. Guidepoint Global, LLC, Cancellation Nos. 92077680 (parent) and 92078922 (the order is marked not precedential). The Board’s final decision of 25 July 2025 — reached after a full trial, briefing and an oral hearing held on 28 January 2025 — had granted Guidepoint’s counterclaim and cancelled O&M Halyard’s Registration Nos. 5739878 and 6357539 for QSIGHT on the ground of non-ownership, while denying Halyard’s petitions to cancel Guidepoint’s Registration Nos. 6285787 (QSIGHT) and 6231233 (GUIDEPOINT QSIGHT) on priority and likelihood of confusion.
Halyard then took the district-court route. On 18 September 2025 it filed a civil action for review under Section 21(b) of the Trademark Act, 15 U.S.C. § 1071(b), in the Eastern District of Virginia (No. 1:25-cv-01568), adding infringement, counterfeiting, dilution and unfair-competition claims, with sister company Owens & Minor Distribution, Inc. joining as a co-plaintiff. The pleaded basis for de novo review was that Halyard had new evidence on ownership. That evidence was never put before a judge: on 19 May 2026 the court entered the parties’ joint stipulation dismissing every claim and counterclaim with prejudice under Rule 41(a)(1)(A)(ii), each side bearing its own costs. The parties then asked the Board to vacate the key holdings of its 2025 decision under Rule 60(b), reasoning that the dismissal had mooted the underlying Board proceeding. The Board agreed the appeal was moot and refused anyway, resting on U.S. Bancorp Mortgage Co. v. Bonner Mall Partnership, 513 U.S. 18 (1994): mootness produced by settlement is not a reason to vacate the judgment under review absent exceptional circumstances, a principle the Federal Circuit applied in Tafas v. Kappos, 586 F.3d 1369 (Fed. Cir. 2009) and which TBMP § 544 already states for Board proceedings. A party that steps off the statutory appeal path, the Board held, cannot use vacatur as a collateral attack on the result.
Vacatur has to be built into the appeal, not into the settlement recitals
The mechanics here are what matter for anyone drafting a settlement while a Board decision is on review. Section 21 gives a dissatisfied party two mutually exclusive routes: an appeal to the Federal Circuit on the Board record under § 1071(a), or a civil action in a district court under § 1071(b), where the court reviews de novo, acts as fact-finder, takes new evidence and has independent authority to order a registration cancelled or granted. The second route is the one that can displace a Board finding — but only if the court actually exercises it. The stipulation Halyard and Guidepoint filed referenced no new evidence, made no findings, adjudged nothing about any registration, and did not remand to the Board to consider vacatur. That last omission was decisive: the Federal Circuit has said the Board should decide motions to vacate its own decisions and that remand is the proper course (MidAmerican Energy Co. v. Mid-America Energy Resources, Inc., 250 F.3d 754 (Fed. Cir. 2000) (table)). A bare Rule 41 dismissal with prejudice closes the courtroom door and leaves the cancellation intact.
So if removing an adverse Board decision is part of what your client is paying for, the settlement cannot simply recite that the other side now concedes the point. It has to produce a judicial act — an agreed judgment with findings on the new evidence, or a remand to the Board with a stated basis for vacatur that goes beyond “we settled.” The Board also noted that the opponent’s concession was expressed in the present tense: Guidepoint agreed Halyard is the owner of the two registrations, which says nothing about ownership on the filing dates of the underlying applications — the only question the Board had actually tried. Drafting a concession that does not track the adjudicated issue buys nothing.
Non-ownership at filing is the defect you cannot settle around
The reason no amount of agreement could rescue these registrations is that registration by someone who did not own the mark when the application was filed makes the application void ab initio (Lyons v. American College of Veterinary Sports Medicine & Rehabilitation, 859 F.3d 1023, 1027 (Fed. Cir. 2017)). The Board treats clearing void registrations off the register as a public interest that the parties cannot trade away between themselves, and it weighed that interest above the parties’ asserted interest in ending years of litigation.
The chain of title that produced the defect is ordinary corporate-group housekeeping gone wrong, and it is worth reading as a warning. Per the 2025 decision, a third party sold the QSIGHT platform and its intellectual property to Owens & Minor Distribution, Inc. in March 2004 — a sister subsidiary, and one that pre-dated Halyard’s own existence. O&M Distribution ran the business and its customer agreements identified it as the owner. The only written instrument Halyard could point to as transferring rights to itself was a 2018 licence agreement whose recital said the licensor “was previously assigned” the mark; the Board found that vague recital insufficient to prove an assignment. Without a proven assignment of the mark and its goodwill in the first step, the licence-back in the second step had nothing to operate on (Visa U.S.A., Inc. v. Birmingham Trust National Bank, 696 F.2d 1371, 1376-77 (Fed. Cir. 1982)).
Halyard’s fallback — that its sister company’s use inured to it as a related company under Section 5, 15 U.S.C. § 1055 — failed on a distinction every corporate group should have on file. Related-company use turns on control over the nature and quality of the goods or services (15 U.S.C. § 1127), and the control inherent in a parent-subsidiary relationship generally supplies it. Common ownership by the same parent does not: use by one sister corporation does not automatically inure to the benefit of another. Filing in the name of whichever group entity happens to hold the trademark budget is therefore a live validity risk, not a formality, and it surfaces years later when someone counterclaims. The practical audit is short — identify the entity that actually controls use and quality, confirm a recorded written assignment with goodwill into whatever entity is named as applicant, and fix the applicant identity before the application is filed rather than papering it afterwards. Where ownership has already moved, a correctly-named new application is the remedy the Board itself pointed to in closing — and it comes at the price of surrendering the original filing dates.
The clock this puts on your calendar
Two dates follow a loss at the Board, and both are governed by 37 CFR § 2.145. A notice of appeal to the Federal Circuit under Section 21(a) must be filed with the Director no later than 63 days from the date of the final Board decision, and a civil action under Section 21(b) must be commenced within the same 63 days; in inter partes cases a cross-appeal or cross-action runs to 14 days after service or the 63rd day, whichever is later. A rehearing or reconsideration request filed in time shifts the 63 days to run from the Board’s action on that request. Halyard commenced its civil action 55 days after the decision issued — comfortably inside the window, which is where you want to be given that extensions require a good-cause showing before expiry or excusable neglect after it.
The deadline teams most often miss is the smaller one. Under § 2.145(c)(3), a party starting a Section 21(b) civil action in an inter partes case must file notice with the Board through ESTTA — identifying the case name, number and court — within five business days of filing the complaint. Failure to file that notice can result in termination of the Board proceeding and further USPTO action consistent with the final Board decision, which is to say the outcome you are appealing can be implemented while you litigate. A five-business-day trigger that attaches to an event in another forum is exactly the kind of obligation that falls between litigation counsel and the prosecution team; it belongs in the docket alongside the 63-day date, and the choice between the Federal Circuit and a district court should be made with the evidence you actually intend to introduce, because taking one route forecloses the other.