Precedential No. 25: TTAB Deems Grace Period Petition for Cancellation Moot When Registrant Failed to Renew

The Board dismissed a petition for cancellation (of a registration for the mark ROD & CUSTOM for "magazines about automobiles") that was filed during the six-month grace period for (second) renewal of the challenged registration. When the registrant did not file its renewal application, the registration automatically expired as of its twentieth anniversary date, and so the later-filed petition for cancellation was deemed moot. Thomas C Taylor v. Motor Trend Group, LLC, 2023 USPQ2d 1051 (TTAB 2023) [precedential].

Registrant Motor Trend's Section 8 Declaration of Use and Section 9 Renewal application for its 20-year old registration were due on October 22, 2022. However, Section 8(a)(3) and Section 9(a) of the Trademark Act provide for a six-month grace period within which to file the declarations. The subject petition for cancellation was filed on March 1, 2023, within the grace period for renewal. The Board promptly instituted the cancellation proceeding, since the USPTO records indicated that the registration was still viable. Motor Trend failed to file its renewal papers by the grace period deadline of April 22, 2023. The USPTO records were updated on May 5, 2023 to indicate that the registration had expired and was cancelled. The Board, however, pointed out that:

[T]he date of expiration of a registration is not based on the expiration of the grace period or the date on which the USPTO takes the ministerial action of entering the expiration and cancellation of the registration into the USPTO trademark database. Land O’ Lakes, Inc. v. Hugunin, 88 USPQ2d 1957, 1959 (TTAB 2008).

On May 11, 2023, the Board issued an order under Rule 2.134(b), requiring Motor Trend to show cause why its failure to renew should not be deemed the equivalent of a cancellation by request without the consent of the petitioner, resulting in judgment for petitioner. Motor Trend responded by moving to dismiss the proceeding as moot. The Board agreed with Motor Trend, ruling that "if a combined Sections 8 and 9 affidavit is not filed by the end of the grace period, a registration expires by operation of law as of the last day of its ten-year term, and no rights in the registration exist after that date." Therefore, the subject registration expired on October 22, 2022.

Respondent’s registration expired prior to the filing of the petition to cancel because there was no renewal filing made within the statutory period (including the grace period), even though Office records were not updated until later to show the expiration. As a result, Petitioner’s petition to cancel for abandonment was filed after the expiration date of the registration and is therefore moot.

The Board ruled that Rule 2.134(b) was inapplicable because it applies “when a subject registration comes due for a Section 8 affidavit or Section 9 renewal during the course of the proceeding.”

The purpose of Rule 2.134(b), and the policy underlying the issuance of a show cause order, is to prevent a cancellation proceeding respondent whose subject registration comes due, during the course of the proceeding, for a Section 8 affidavit or Section 9 renewal (or in the case of a Section 66(a) registration, a Section 71 affidavit or Section 70 renewal), from being able to moot the proceeding, and avoid judgment, by deliberately failing to file the required affidavits or renewal applications.

Here the subject registration was in the grace period when the petition for cancellation was filed. Motor Trend’s registration expired by operation of law as of October 22, 2022, a date before Petitioner Taylor filed his petition to cancel.

And so, the Board dismissed the petition for cancellation without prejudice, as moot.

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TTABlogger comment: It's a good idea to avoid judgment and the res judicata effects thereof.

Text Copyright John L. Welch 2023.