Precedential No. 7: TTAB Dismisses Cancellation Proceeding as Moot After Registrant Fails to File Section 8 Declaration

In another precedential procedural ruling, the Board held that, because a registration expires by law as of its sixth anniversary if a Section 8 declaration is not filed before the expiration of the six-month grace period, a petition for cancellation filed during the grace period is deemed moot and judgment cannot be entered against the respondent. Retrobrands America LLC v. Molson Coors Beverage Company USA LLC, 2024 USPQ2d 769 (TTAB 2024) [precedential].

Retrobrands petitioned to cancel a registration for the mark ZIMA for "Alcoholic flavored brewed malt beverages, except beer," on the ground of abandonment. The challenged registration issued on August 22, 2017; a Section 8 Declaration of Use was due six years later but could be filed during the subsequent six-month grace period ending February 22, 2024. The subject petition for cancellation was filed on September 21, 2023, during the grace period.

On September 23, 2023, Respondent Molson moved to dismiss the petition as moot, strangely arguing that, because it did not plan to file a Section 8 Declaration, the registration expired as a matter of law at the six-year deadline. Alternatively, it moved to suspend proceedings until the expiration of the grace period, and for dismissal as moot at that time. Retrobrands asserted that this was effectively an attempt by Molson to cancel the registration without consent under Section 7(e) of the Trademark Act, thereby avoiding judgment against it.

The Board observed that, when the six-month grace period expires for the filing of a Section 8 Declaration, the subject registration is cancelled by operation of law as of the last day of the sixth year following registration. Men’s Wearhouse, LLC v. WKND NYC LLC, 2024 USPQ2d 86, at *1 (TTAB 2024). When Retrobrands filed its petition for cancellation, it was (obviously?) not yet known if the registration would be cancelled retroactively. Molson's motion to dismiss on the ground of mootness was therefore premature and so it was denied.

However, the Board declined to consider Molson's request as a voluntary surrender of the registration, but rather saw it merely as a premature request for dismissal based on its representation that it would not file the Declaration. The Board therefore denied Retrobrands' request for entry of judgment.

The Board granted Molson's request for suspension "to the extent we consider this case suspended retroactive to the filing date of Respondent's motion."

The Board then dismissed the petition to cancel "without prejudice as moot." [Emphasis by the Board].

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TTABlogger comment: It seems to me that once the petition for cancellation was filed, Molson should have to explain why it should be able to jettison its registration without judgment being entered. See, for example, the Ruifei case [TTABlogged here], observing that a registrant may not, by deleting goods from a registration, moot a proceeding to avoid a judgment as to the deleted goods, and requiring the registrant to explain the reason for its deletions.

Text Copyright John L. Welch 2024.