Precedential No. 34: Section 66(a) Registration May Be Cancelled Under Section 14 Even If I.R. Still Viable

The TTAB denied Respondent Mad Croc's Rule 12(b)(6) motion to dismiss this petition for cancellation of a Section 66(a) registration (a/k/a Madrid Protocol extension of protection), alleging that the subject mark had been abandoned. Mad Croc contended that because the corresponding International Registration was still viable, the registration could not be cancelled under Section 14, and therefore that the petition failed to state a claim on which relief can be granted. The Board, however, ruled that "a Section 66(a) registration is subject to the same treatment and conditions which prevail in connection with any other registrant. *** [T]his includes the possibility that the registration may be cancelled on any available ground under Section 14 of the Trademark Act, 15 U.S.C. § 1064." SaddleSprings, Inc. v. Mad Croc Brands, Inc., 104 USPQ2d 1948 (TTAB 2012) [precedential].

Petitioner SaddleSprings alleged that Respondent has "either never used the Registered Mark in commerce or completely ceased using Registered Mark, in connection with the goods identified in the Registration for a period of at least three consecutive years.”

In its motion, Mad Crocs argued that its registration is subject to Section 71 of the Trademark Act, 15 U.S.C. Section 1141k, which states that "an extension of protection remains in force for the term of the international registration, except that the Director may cancel the extension if the affidavit required by Section 1141k is not timely filed." Consequently, Respondent asserted, the Director has no authority to cancel the registration prior to expiration of the grace period for filing a declaration or affidavit of use - i.e., prior to six years and six months after the registration issued on February 20, 2007.

SaddleSprings maintained that Respondent's arguments conflict with Section 69 of the Trademark Act, which provides that "an extension of protection shall have the same effect and validity as a registration on the Principal Register." It argued that, under Respondent's interpretation, Madrid-based registrations would be immune from attack, even if obtained fraudulently and even if the mark has been abandoned, or is generic or "functionable." (sic).

So the question for the Board was this: "whether abandonment is an available claim with respect to a registration based on Section 66(a) for which the underlying international registration is valid and subsisting."

The Board observed that there are some distinctions between registrations issuing on different bases under the Trademark Act: e.g., a Section 1(a) registration requires use, while Section 44 and 66(a) registrations do not; a Section 44(e) registration stands independent of the underlying foreign national registration, while a Section 66(a) registration always remains part of and dependent upon the international registration. However,"the availability of particular grounds for cancellation is not such a distinction."

Section 71 is "clearly not a limitation on cancellation of a Section 66(a) registration" any more than Section 8 is a limitation on cancellation of a Section 1 or 44 registration.  The two sections are "similar by design:" each sets out the normal duration or term of the registration, but neither expressly limits the right of others to petition for cancellation under Section 14 of the Act.

The Board found no support in the text for Respondent's proposed reading of Section 71. Moreover, if Section 71 were to be read as Respondent suggests, then Section 8 should be read to prohibit cancellation of any registration under Section 14, rendering that section meaningless.

The Board asserted that its interpretation of the statute is consisted with Article 5(6) of the Madrid Protocol, which expressly acknowledges that a request for extension may be subject to cancellation..

Because trademark rights in this country are based on use in commerce, and because the validity of a Section 66(a) registration must be determined under the Trademark Act, the registrant must use the mark in commerce in order to avoid abandonment.  In the absence of justifiable non-use, registrations for marks that have never been used, or for which use has been discontinued with no intent to resume use, are subject to cancellation even if the International Registration remains in effect.

Thus, once having obtained a U.S. registration, an owner of a Section 66(a) registration is subject to the same treatment and conditions which prevail in connection with any other registrant. We hold that this includes the possibility that the registration may be cancelled on any available ground under Section 14 of the Trademark Act, 15 U.S.C. § 1064.

And so the Board denied the motion to dismiss and issued an order resuming the proceeding.

Text Copyright John L. Welch 2012.