Tuesday, January 23, 2024

Precedential No. 3: TTAB Rules that a Cancellation Petition Filed During Grace Period is Mooted If Section 8 Declaration Is Not Filed

In a slight variation of the recent precedential ruling in Taylor v. Motor Trend [TTABlogged here], the Board ruled that a cancellation proceeding commenced during the Section 8 grace period for the target registration is mooted if the registrant does not timely file its Section 8 Declaration of Use. The Men’s Wearhouse, LLC v. WKND NYC LLC, 2024 USPQ2d 86 (TTAB 2024) [precedential].

Taylor v. Motor Trend concerned the failure to file a renewal application before the expiration of the six-month grace period. Here, the Board dealt with the non-filing of a Section 8 Declaration of Use before the end of the six-month grace period following the sixth anniversary of a registration.

Respondent WKND's registration issued on March 14, 2017, and so its Section 8 declaration was due by March 14, 2023. See 15 U.S.C. §1058(a)(1); see also Trademark Rule 2.160(a)(1)(i). Warehouse's petition for cancellation was filed on March 15, 2023, one day after the Section 8 deadline but before September 14, 2023, the expiration of the six-month grace period for the declaration. See 15 U.S.C. § 1058(a)(3); see also Trademark Rule 2.160(a)(3). The USPTO's records did not yet reflect any change in the status of the registration when the petition was filed, and so the Board promptly instituted this proceeding.

Because the WKND did not file a Section 8 declaration during the grace period, the USPTO's records were updated in accordance with USPTO policy, on September 29, 2023, to reflect the cancellation of the registration for failure to file the Section 8 declaration. See TMEP § 1611.

On October 25, 2023, more than seven months after this proceeding was instituted and more than three weeks after the USPTO's records were updated to reflect the cancellation of the registration, the Board issued an order allowing WKND "to show cause why … cancellation [of its registration under Section 8] should not be deemed to be the equivalent of a cancellation by request of Respondent without the consent of the adverse party, and should not result in entry of judgment against Respondent as provided by Trademark Rule 2.134."

WKND responded by indicating that its failure to file the Section 8 Declaration was the result of "inadvertence or mistake" due to a calendaring error. It then requested that the registration "be revived and [Respondent] be permitted to file a Section 8 declaration." Fuhgeddaboudit, said the Board: "[I]t is well settled that the deadline for filing a Section 8 declaration is statutory and cannot be waived. See, e.g., Checkers Drive-In Rests., Inc. v. Comm'r of Pats. & Trademarks, 51 F.3d 1078, 34 USPQ2d 1574, 1581 (D.C. Cir. 1995).

The Board then considered the effect of WKND's failure to timely file a Section 8 declaration. It found applicable the principles set forth in Taylor v. Motor Trend and Land O'Lakes v Hugenin.

In Taylor, the Board held that:

the 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. Rather, if a [Section 8 declaration and Section 9 renewal application] are (sic) 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.

In Land O' Lakes, in the context of an affirmative defense, the Board held that a "registration expired by operation of law on [the day after the six-year anniversary] as a result of [a] failure to file" and further that "the date of expiration of [a] registration is not dependent on the date the Office undertook the ministerial function of entering the cancellation into the USPTO database."

The Board concluded that WKND's registration expired by operation of law as of March 14, 2023, and so the subject petition for cancellation filed on the following day was moot. The petition was therefore dismissed without prejudice.

Read comments and post your comment here.

TTABlogger comment: Did this ruling deserve the "precedential" tag?

Text Copyright John L. Welch 2024.


At 2:06 PM, Anonymous Anonymous said...

Interesting to learn that technically the cancellation date of a registration "reverts" back to the six year date after the grace period ends. I would have assumed it was the end of the grace period. I am not sure if that matters in any situation, but I wonder if that is a good reason to never file in the grace period if you can avoid it.

Hard to believe that counsel in this case could miss such an important date too! They were fully involved and had already answered. Check your insurance.


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