Precedential No. 17: TTAB Says Section 18 Not Available for Requiring Disclaimer of Generic Part of Mark Registered for More Than 5 Years

In what appears to be a case of first impression involving application of Section 18 of the Trademark Act, the Board granted Respondent Anzar's motion to dismiss a petition for cancellation of a more-than-five-year-old registration for the mark MONTEPIO & Design for "pawn shop services" on the ground that the petition failed to state a claim on which relief can be granted. Petitioner Montecash alleged that MONTEPIO means "pawnshop" in Spanish and is therefore generic, requiring (1) cancellation of the entire registration, or (2) cancellation of the registration in part (i.e., removal of the word MONTEPIO), or (3) restriction of the registration under Section 18 by entering a disclaimer of MONTEPIO. Montecash LLC v. Anzar Enterprises, Inc., 95 USPQ2d 1060 (TTAB 2010) [precedential].


Cancellation of Entire Registration: In Finanz St. Honore, B.V. v. Johnson & Johnson, 85 USPQ2d 1478 (TTAB 2007) [precedential], the Board ruled that a registration that is more than five years old may not be cancelled on the ground that a portion of the registered mark is generic. While Section 14 of the Trademark Act provides for cancellation of such a registration when the registered mark is, as a whole, generic, it does not provide for cancellation in the circumstances presented here.

Cancellation of the Registration in Part: Petitioner's request that the term MONTEPIO be deleted from Respondent's mark as registered is not provided for under Section 14(3) of the Trademark Act and is therefore unavailing. "Indeed, any deletions of matter from a registered mark which may materially alter the mark and/or may result in a mutilation of the mark as used by the registrant would be prohibited."

Restriction of the Registration via Disclaimer: The Board construed this claim as seeking relief under Section 18 of the Act:

The issue here, then, is whether Trademark Act §18 provides a basis for seeking entry of a disclaimer of a term which comprises only a part of the mark, and which has been asserted to be generic, when the registration is more than five years old, notwithstanding that §14(3) does not provide such a basis.

Looking at the terms of Section 18 and at its legislative history, the Board found that this type of relief is not expressly contemplated. "Moreover, to allow petitioner the relief it seeks under Section 18 would be inconsistent with the plain wording of both Sections 14(3) and 18."

The legislative history "clearly" contemplates that the Board would have authority under Section 18 to limit or otherwise modify the goods and services in a registration or application to avoid a likelihood of confusion. Section 18 is available even for registrations that are more than five years old.

However, Section 18 does not contain express provisions regarding the disclaimer of a generic term in a mark registered for more than five years. To read in such a provision would conflict with Section 14(3) and with the Finanz decision. Moreover, it is not contemplated by the legislative history.

Restriction is allowed in Section 2(d) cases in order to avoid a likelihood of confusion when the opponent is not using its mark on the goods or services to be deleted, "so as to allow the claiming party a place for its mark on the register." Here, in contrast, the request for a disclaimer, "unlike cases involving restriction of identification of goods, would not, in and of itself, allow marks to coexist on the register."

The Board's jurisdiction is limited to issues relating to the registrability of marks, and we clarify by this decision that a claim for restriction under Section 18 must not only be commercially significant but be related to the registrability of marks on the register.

Petitioner Montecash's claim was not aimed at allowing it to register its own mark. Therefore, it failed to state a claim under Section 18.

Text Copyright John L. Welch 2008.