District Court Dismisses Section 18 Counterclaim for "Cancellation by Restriction"

In a trademark infringement action, the U.S. District Court for the Western District of Virginia dismissed a counterclaim under Section 18 of the Lanham Act for "Cancellation by Restriction" of a registration for the mark CFA for financial advisor certification services. Defendant claimed that restricting the registration to fields other than "retirement financial planning at the employer level" would avoid confusion with its mark CPFA. The court, however, found no legal support for the proposition that Section 18 applies to civil actions, and in any case it ruled that defendant failed to allege facts that would make its claim plausible. CFA Institute v. American Society of Pension Professionals and Actuaries, Case No. 3:19-cv-00012 (W.D. Va. October 24, 2019).

Section 18 provides that in inter partes proceedings the TTAB "may modify the application or registration by limiting the goods or services specified therein, may otherwise restrict or rectify with respect to the register the registration of a registered mark." The Board held in Eurostar that in order to seek restriction of the goods or services in a registration, the plaintiff must allege two elements: "(1) the entry of a proposed restriction to the goods or services in its opponent’s application or registration will avoid a finding of likelihood of confusion, and (2) the opponent is not using its mark on those goods and services that will be effectively excluded from the application or registration if the proposed restriction is entered."

The court first observed that "it is not clear that Section 18 even applies in federal court." Defendant cited no case in which a court had entertained a claim under Section 18. On the other hand, no court has held that Section 18 is inapplicable in courts.

Defendant pointed to Section 37 of the Lanham Act, which states that "In any action involving a registered mark the court may determine the right to registration, order the cancellation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action." However, defendant provided no case law to support defendant's theory that Section 18 applies "by virtue of Section 37." [Then what the heck is Section 37 for? ed.].

Moving right along, the court found that even if it did accept that Section 18 and Eurostar apply in federal court, defendant's counterclaim was legally insufficient. Defendant failed to allege any facts that, if proven, how the proposed restriction would affect any likelihood of confusion in the marketplace. Moreover, defendant did not allege facts to show that plaintiff is not using its mark on the services to be excluded.

Finally, the court pointed out that plaintiff will be required to prove that defendant's use in commerce will be likely to cause confusion. "Regardless of whether Defendant's counterclaim is maintained, likelihood of confusion based on actual use will remain the central inquiry in at least resolving Plaintiff's Section 1114 claim [for infringement of a registered mark]."


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TTABlog comment: Seems to me that Section 37 by itself gives the court the power to restrict a registration. But what differencce would it make in this case?

Text Copyright John L. Welch 2019.