Wednesday, March 13, 2019

On Summary Judgment, TTAB Dismisses Cancellation Petition Predicated on Respondent's Untimely Section 8 Declaration

The Board dismissed this petition for cancellation on summary judgment, ruling that the USPTO's acceptance of an untimely Section 8 Declaration is not a ground for cancellation. Respondent Direct Impulse missed the deadline to respond to a post-registration office action rejecting its Section 8 Declaration, but the Office then accepted a later, corrected filing well after the renewal grace period had expired. Bonehead Brands, LLC v. Direct Impulse Design, Inc., Cancellation No. 92068333 (February 13, 2019) [not precedential].

Petitioner Bonehead contended that the subject registration was automatically cancelled when Direct Impulse failed to file a proper Section 8 Declaration prior to expiration of the grace period for renewal. The Board, however, ruled that "[a]n allegation that a registrant made an untimely or deficient declaration under Section 8, or that the USPTO should not have renewed a registration, is not an available ground for cancellation under Section 14(3)."

Respondent's 10-year Section 8 Declaration of Use (and its Renewal Application) was due on December 12, 2016. On May 11, 2016, Respondent filed a combined declaration under Sections 8 and 9. On August 2, 2016, the Post Registration branch issued an Office Action accepting the Section 9 portion of the combined filing but rejecting the specimen submitted in support of the Section 8 declaration on the ground that it was a printer's proof and therefore did not show use of the registered mark in commerce. Respondent was give six months to file a substitute specimen and verification, but it did not file a response to this Office Action

On April 3, 2018, and well beyond the six-month renewal grace period that expired on June 12, 2017, the Post Registration Branch issued another Office Action , reiterating its rejection. On April 11, 2018, Bonehead filed its petition to cancel Respondent’s registration on the ground of abandonment, based on Respondent’s failure to file a timely, acceptable Section 8 declaration. Two days later, on April 13, 2018, Respondent filed a combined Section 8 and 9 declaration with a substitute specimen and verification, which the USPTO accepted on April 17, 2018, issuing a notice of renewal for the involved registration.

Bonehead’s petition for cancellation was  predicated on the allegation that the registration had been technically cancelled due to Respondent’s failure to file a timely response to the August 2, 2016 Office Action or to otherwise file an acceptable Section 8 declaration before the expiration of the grace period. The Board disagreed:

Contrary to Petitioner’s assertion, a registration is not considered “technically” or  automatically cancelled or “abandoned” by virtue of a registrant’s purported failure to file a timely or acceptable Section 8 declaration. Section 8 of the Trademark Act, 15 U.S.C. § 1058, provides that “[e]ach registration shall remain in force for 10 years, except that the registration of any mark shall be canceled by the Director unless the owner of the registration files in the United States Patent and Trademark Office affidavits that meet the requirements of subsection (b)….” Failure to file a timely Section 8 declaration does not result in an automatic cancellation of the registration; rather, an action must be taken by the Director of the USPTO for the registration to be cancelled. In this case, the Director did not cancel the involved registration, but rather accepted the April 13, 2018 filing and renewed the registration.

The Board pointed out that there is “no mechanism under Section 8 by which a third party can seek the cancellation of a registration in an inter partes proceeding based on an allegedly deficient or untimely filing.” Furthermore, the Board does not have jurisdiction to review the USPTO’s acceptance of the April 13, 2018 filing or the supposed failure of the Director of the USPTO to cancel the registration pursuant to Section 8.

Any petition to cancel a registration more than five years old must be based on one of the specifically enumerated grounds of Section 14(3) of the Trademark Act, 15 U.S.C. § 1064(3). * * * An allegation that a registrant made an untimely or deficient declaration under Section 8, or that the USPTO should not have renewed a registration, is not an available ground for cancellation under Section 14(3).

Petitioner Bonehead claimed that Respondent had abandoned its mark, but there were no allegations of nonuse or loss of significance as a mark.

Finding no material fact in dispute, the Board granted Respondent’s motion for summary judgment.

Read comments and post your comment here.

TTABlog comment: Bonehead also claimed that once its cancellation petition was filed, the USPTO should not have accepted the Section 8 Declaration, but the Board pointed out that Respondent was required to maintain its registration throughout the pendency of the proceeding and failure to file the Declaration could result in an adverse judgment.

Text Copyright John L. Welch 2019.


At 9:21 AM, Anonymous Anonymous said...

So, why not precedential?

At 10:24 AM, Anonymous Anonymous said...

Could they have petitioned to the director instead? Could they still?

Under 35 U.S.C. §2 and 37 C.F.R. §2.146(a)(3), the Director may exercise supervisory authority on petition in appropriate circumstances. As noted in TMEP §1706, the Director may review the actions of an examiner or paralegal under 37 C.F.R. §2.146(a)(3) to determine whether there has been clear error or an abuse of discretion.

At 1:40 PM, Blogger Pamela Chestek said...

Could they have just called post-reg to ask that it be cancelled?

At 8:14 PM, Blogger John L. Welch said...

Pam, it seems like that would have worked in the period between the deadline for response to the first post-registration refusal to the issuance of the second post-registration refusal: i.e., From Feb. 2, 2017 to April 3, 2018.

In a March 30, 2018 response to an office action that had issued months before, Bonehead said "An argument as to the likelihood of confusion is submitted. However, the prior registered mark used against this application is a year and one half late (August 2016) for an answer to a Section 8 refusal. Even with grace periods, the lack of a response surely places the mark due to be abandoned/ cancelled. Therefore the prior mark is moot. However, the argument is offered in case the mark, for some reason, is still active."

Four days later the USPTO issued a new refusal of Respondent's Section 8 declaration.

At 10:57 AM, Anonymous Laura Geyer said...

Great practice point here -- if you spot a mark (as in a trademark search or contemplating a cancellation), that ought to have been cancelled based on failure to file a section 8 or renewal, or any other ground, you can write the PTO at to let them know. Typically, the PTO cancels within 24 hours – it’s extremely efficient. I've done this probably 15 or so times at this point and it has always worked. Much cheaper than a cancellation.


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