(concurring).
Mr. Justice Clark,1 Judge Smith, and I are in complete agreement that this court cannot act on the merits of the opposition which was decided by the board and that the proper procedure is for this court to vacate the board’s decision, reported at 147 USPQ 539.
This concurring opinion is motivated by the dissenting opinions and its purpose is to answer some of the points they raise and to cite some of the authority which supports the action being taken by the majority.
The posture of this case is not the same as it was before the filing of the motion which we denied a year before the argument of the case in this court. Before that, it was an ordinary appeal on a controversial issue. It was a “case or controversy.” The motion, however, called our attention to facts showing that the issue had become moot. This mootness is the salient fact underlying the action of the majority as stated for it in Judge Smith’s opinion.
It has been suggested that the majority action is beyond our authority, unnecessary, and unwise and that we should decide the controversy, which is now moot, “on its merits.” No authority has been cited to justify such action. I think none exists.
Authority to the contrary in support of the elementary principle that a United States court established under Article III of the Constitution is limited to deciding cases and controversies and that a moot question is not in this category is found in People of State of California v. San Pablo & Tulare R. R., 149 U.S. 308, 13 S.Ct. 876, 37 L.Ed. 747 (1893), St. Pierre v. United States, 319 U.S. 41, 63 S.Ct. 910, 87 L.Ed. 1199 (1943), United States v. Munsingwear, Inc., 340 U.S. 36, 71 S.Ct. 104, 95 L.Ed. 36 (1950), and in the recent case which became moot after the granting of certiorari to this court on the petition of the Patent Office, In re Hofstetter, 362 F.2d 293, 53 CCPA 1545 (1966), vacated, Brenner v. Hofstetter, 389 U.S. 5, 88 S.Ct. 29, 19 L.Ed.2d 5 (1967), appeal dismissed, In re Hofstetter, 55 CCPA-, 155 U.S.P.Q. 515 (1967). In Hofstetter the mootness resulted from an applicant abandoning a patent application while court review was pending and here it results from a stipulation to withdraw an application to register a trademark. The parallel is clear.
Authority for the statement that this court is an Article III court — giving rise to the obligation to act like one— is found in Glidden v. Zdanok, 370 U.S. 530, 82 S.Ct. 1459, 8 L.Ed.2d 671 (1962). As such a court, we certainly have inherent authority to do what the law requires of us, namely, to vacate a decision of a lower tribunal in a matter which has become moot. According to the above decisions, we do not have the authority to decide that matter and it appears to me, for that reason, that it would be both unnecessary and unwise for us to do so. See S. A. Diamond, Federal Jurisdiction to Decide Moot Cases, 94 U.Pa.L.Rev. 125; Cases Moot on Appeal: A Limit on the Judicial Power, 103 U.Pa.L.Rev. 772; Disposition of Moot Cases by the United *286States Supreme Court, 23 U.Chi.L.Rev. 77.
In vacating the board decision, it should be noticed that we are not doing so at the request of the parties or pursuant to their stipulation. Neither are we sustaining the opposition, notwithstanding the obvious fact that the opposer has prevailed over the applicant for registration. But it has done so through negotiation rather than litigation — the kind of resolution of a dispute we should do all within our power to encourage.
The parties wanted this court to give its official blessing to the terms of their stipulation but overlooked the fact that several of the matters in it — such as the release of damages, agreement not to use, and the allowance of time to appellee to dispose of goods — are entirely outside our jurisdiction. That is why we had to deny appellant’s motion, as Judge Smith’s opinion points out. All appellant wanted under the circumstances which existed after the settlement between the parties was somehow to get rid of the decision of the board which had gone against it. But appellant misconceived the proper solution. As Judge Smith said, it left it to this court to decide. It should be clear now that appellant’s proper course would have been to establish the mootness of the case and suggest the vacating of the board decision.
It is noted from Viber Co. v. Renner Co., 156 USPQ 160 (1967), that when the Trademark Trial and Appeal Board has jurisdiction of a case previously decided by it and is advised that it has become moot, it vacates its own prior decision. In a decision, reported at 153 USPQ 819, the board had sustained an opposition by Viber to registration of a trademark. Upon the subsequent withdrawal of the opposition pursuant to an agreement between the parties, the board vacated that decision.
Since jurisdiction of the present cause of action was in this court at the time it became moot and still is, it seems appropriate that we should vacate the only decision rendered in it as well as refuse to render any further decision on the merits.
. Associate Justice, United States Supreme Court, sitting by designation in place of Almond, J.