Precedential No. 6: TTAB Refuses to Add Affirmative Defense of Abandonment but Allows Addition as Counterclaims

In this opposition to registration of the mark JOKER SMOKER, in the form shown below, for smoker's articles and related retail services, the applicant moved for leave to amend its answer to add an affirmative defense of abandonment regarding the opposer's pleaded JOKER registrations. The Board deemed the proposed addition improper, since an abandonment claim is an attack against the validity of the registrations that can be raised only by way of a counterclaim or separate petition for cancellation, not by an affirmative defense. However, the Board allowed applicant 15 days within which to add counterclaims for cancellation of the registrations. Republic Technologies (NA), LLC v. Joker Smoker Shop, Inc. dba Joker Smoker, 2025 USPQ2d 830 (TTAB 2025) [precedential] (Order by Interlocutory Attorney Michael Webster).

Applicant's proposed affirmative defense alleged that "Opposer has discontinued use of its marks, Registration Nos. 1,087,438, and 2,661,926, for a period of more than three (3) years, with intent not to resume use, and has thereby abandoned use of such marks pursuant to Section 45 of the Lanham Act.” The Board found those allegations to be legally sufficient to support counterclaims for abandonment. Lewis Silkin LLP v. Firebrand LLC, Can. No. 92067378, 2018 WL 6923002, at *4-6 (TTAB 2018) (“The petition to cancel pleads that Respondent is not using the mark with its goods and services, and has no intent to resume use. The Board finds that no more is necessary for a legally sufficient abandonment claim in the context of the Board’s narrow jurisdiction limited to trademark registrability.”).

Further, the Board observed, applicant did not unduly delay in seeking to amend its answer (within two months after receiving amended discovery responses from the opposer). See Black & Decker Corp. v. Emerson Elec. Co., Opp. No. 91158891, 2007 WL 894416, at *3 (TTAB 2007); Karsten Mfg. Corp. v. Editoy AG, Opp. No. 91101408, 2006 WL 1258869, at *2 (TTAB 2006) (motion for leave to amend pleading granted because grounds for new claim learned during discovery); see also TBMP § 507.02(a). Opposer did not argue that it would be prejudiced by allowing the amendment (six weeks remained in the discovery period). See, e.g., Topco Holdings, Inc. v. Hand 2 Hand Indus., LLC, Opp. No. 91267988, 2022 WL 157880, at *4 (TTAB 2022) (no undue prejudice when three months remain in discovery). Nor was there any evidence applicant acted in bad faith or had a dilatory motive in seeking leave to amend, and it had not previously amended its pleading.

If Applicant files an amended answer with counterclaims, the Board will construe Applicant’s motion for leave to amend as asking to add properly pleaded counterclaims for abandonment. Accordingly, a decision on the motion for leave to amend is deferred and proceedings remain suspended.

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TTABlogger comment: Does this ruling merit the "precedential" tag? If the Board had denied the motion, would applicant simply have filed a new motion to add the counterclaims?

Text Copyright John L. Welch 2025.