307.02 Petition That Must Be Filed Within Five Years from the Date of Registration
307.02(a) In General
A petition to cancel a registration issued on the Principal Register under the Act of 1946, on a ground not specified in Trademark Act § 14(3) or Trademark Act § 14(5), 15 U.S.C. § 1064(3) or 15 U.S.C. § 1064(5), must be filed within 5 years from the date of the registration of the mark. [ Note 1.] Similarly, a petition to cancel a registration issued on the Principal Register under the Act of 1881 or the Act of 1905, and published under the provisions of Trademark Act § 12(c), 15 U.S.C. § 1062(c) on a ground not specified in Trademark Act § 14(3) or Trademark Act § 14(5), 15 U.S.C. § 1064(3) or 15 U.S.C. § 1064(5) must be filed within 5 years from the date of publication under Trademark Act § 12(c), 15 U.S.C. § 1062(c). [ Note 2.]
Although a petition to cancel filed after the expiration of the five-year period, in the case of such a Principal Register registration, must recite one of the grounds specified in Trademark Act § 14(3) or 14(5), 15 U.S.C. § 1064(3) or 15 U.S.C. § 1064(5),a petition to cancel filed prior to the expiration of the five-year period may be based on any ground which could have prevented registration initially. [ Note 3.] The grounds for cancellation which are thus available in the case of a petition filed within the five-year period, but not thereafter, include: all of the grounds specified in Trademark Act § 14(3) and Trademark Act § 14(5), 15 U.S.C. § 1064(3) or 15 U.S.C. § 1064(5) as well as likelihood of confusion under Trademark Act § 2(d), 15 U.S.C. § 1052(d); [ Note 4.], all of the grounds specified in Trademark Act § 2(e), 15 U.S.C. § 1052(e) (including a claim that respondent’s mark is merely descriptive or deceptively misdescriptive, that respondent’s mark is geographically descriptive or geographically deceptively misdescriptive, or that respondent’s mark is primarily merely a surname) [ Note 5.]; the ground that respondent is not the owner of the registered mark; and the ground that there was no bona fide use of respondent’s mark in commerce to support the original registration.
For additional information on selected grounds for opposition and cancellation, see TBMP § 309.03(c). For a discussion of standing to file a petition to cancel or a notice of opposition, see TBMP § 309.03(b).
As stated above, a petitioner may not seek to cancel a Principal Register registration over 5 years old on the ground of likelihood of confusion. [ Note 6.] However, under Trademark Act §18, 15 U.S.C. § 1068, a petitioner may seek to partially cancel a registration over 5 years old by restricting the goods or services therein in order to avoid a likelihood of confusion. For a discussion of a petition to partially cancel a registration under Trademark Act §18 , 15 U.S.C. § 1068, see TBMP § 309.03(d).
Note that a petitioner may not seek to cancel a Principal Register registration over 5 years old on the ground that it is generic, where the genericness claim is made only as to a portion of the mark and not the entire mark. However, the alleged generic nature of the portion of the mark may have a bearing on the likelihood of confusion analysis. [ Note 7.]
The five-year period specified in Trademark Act § 14(1), 15 U.S.C. § 1064(1), (i.e., "Within five years from the date of the registration of the mark under this Act") includes the fifth anniversary date of the registration. [ Note 8.] Cf. TMEP § 1604.04 and TMEP § 1606.03. Similarly, the five-year period specified in Trademark Act § 14(2), 15 U.S.C. § 1064(2), ("Within five years from the date of publication under Section 12(c) hereof of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905"), includes the fifth anniversary date of the publication under Trademark Act § 12(c), 15 U.S.C. § 1062(c). [ Note 9.]
The filing date of the petition is the date of receipt in the Office of the petition, with proof of service and the required fee. [ Note 10.] However, if the petition is filed by the "Priority Mail Express® Post Office to Addressee" service of the United States Postal Service ("USPS") in accordance with 37 CFR § 2.198, then the filing date of the petition is the date the petition was deposited with the USPS. [ Note 11.] For information on filing fees, see TBMP § 308. The Certificate of Mailing procedure described in 37 CFR § 2.197 and the Priority Mail Express® procedure described in 37 CFR § 2.198 are available for the filing of a petition to cancel. [ Note 12.] Where a timely filed petition to cancel is served on the registrant’s attorney instead of the registrant directly, the Board may not dismiss the petition to cancel and the petitioner may be granted a new petition filing date if the petitioner makes subsequent service on the registrant within five years of the issuance date of the challenged registration and amends the proof of service to show such subsequent service on the registrant. [ Note 13.]
NOTES:
1. See Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007) (claim under Trademark Act § 2(d), 15 U.S.C. § 1052(d) is time-barred under Trademark Act
§ 14(3), 15 U.S.C. § 1064(3)); Tri-Star Marketing LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1913 (TTAB 2007) (same);Arman’s Systems, Inc. v. Armand’s Subway, Inc., 215 USPQ 1048, 1050 (TTAB 1982) (the filing date of the petition is the operative date in determining whether the cancellation is time barred, not the date that the notice of the proceeding is mailed to the parties). Cf. British-American Tobacco Co. Limited v. Philip Morris Inc., 55 USPQ2d 1585, 1590 (TTAB 2000) (Trademark Act § 14,15 U.S.C. § 1064 does not limit Board’s authority to entertain an action under Article 8 of the Pan American Convention against a registration over five years old).
2. See Trademark Act § 14(1) and Trademark Act § 14(2), 15 U.S.C. § 1064(1) and 15 U.S.C. § 1064(2); 37 CFR § 2.111(b).
3. See Person’s Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1479 (Fed. Cir. 1990); International Mobile Machines Corp. v. International Telephone and Telegraph Corp., 800 F.2d 1118, 231 USPQ 142, 142 (Fed. Cir. 1986); International Order of Job’s Daughters v. Lindeburg and Co., 727 F.2d 1087, 220 USPQ 1017, 1020 (Fed. Cir. 1984); and Kellogg Co. v. Pack’Em Enterprises Inc., 14 USPQ2d 1545, 1549 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).
4. See Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1862-63 (TTAB 2007) (Trademark Act§ 2(d), 15 U.S.C. § 1052(d) not a legitimate basis for petition to cancel a registered mark where the registration is more than five years old). Cf. Liberty Trouser Co. v. Liberty & Co., 222 USPQ 357, 358 (TTAB 1983) (claim of likelihood of confusion accepted as proper allegation of petitioner’s standing with respect to pleaded grounds of fraud and abandonment).
5. See The Equine Touch Foundation Inc. v. Equinology, Inc.,91 USPQ2d 1943, 1945(TTAB 2009) (petition to cancel a registration on the Principal Register on a claim that the mark is descriptive may be filed at any time within five years of the date of registration). Cf. Montecash LLC v. Anzar Enterprises Inc., 95 USPQ2d 1060, 1061(TTAB 2010) (registration more than five years old may not be cancelled based on claim that a portion of the mark is generic term); Finanz St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1480 (TTAB 2007) (same; motion to strike claim granted).
6. See Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1862-63 (TTAB 2007).
7. See Finanz St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1480 (TTAB 2007) (decision to strike counterclaim as time-barred does not affect respondent’s ability to argue that a portion of the mark is generic and should be accorded less weight in a likelihood of confusion analysis).
8. See Strang Corp. v. Stouffer Corp., 16 USPQ2d 1309, 1310 (TTAB 1990) (fifth-year anniversary falling on a weekend or holiday).
9. Cf. Strang Corp. v. Stouffer Corp., 16 USPQ2d 1309, 1310 (TTAB 1990);TMEP § 1604.04 and TMEP § 1606.03.
10. See 37 CFR § 2.111(c)(4).
11. See 37 CFR § 2.198.
12. See 37 CFR § 2.197(a) and 37 CFR § 2.198(a).
13. The Equine Touch Foundation Inc. v. Equinology, Inc., 91 USPQ2d 1943 (TTAB 2009) (since petitioner acted promptly to cure its failure of service well within the five year period for filing petition to cancel, Board will not dismiss the petition as a nullity but rather grant a new filing date as of the date petitioner filed its amendment of proof of service).
307.02(b) Trademark Act § 14, 15 U.S.C. § 1064, Limitation is Independent of Trademark Act § 15, 15 U.S.C. § 1065, Affidavit
The five-year time limit specified in Trademark Act § 14, 15 U.S.C. § 1064, barring certain attacks on a Principal Register registration, "is not dependent on the filing of a declaration under Section 15 which provides incontestable rights of use to a limited extent (15 U.S.C. § 1065 )." [ Note 1.]
NOTES:
1. Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1392 n.5 (Fed. Cir. 1990) (emphasis in original). See also Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 1139 (TTAB 1990); Strang Corp. v. Stouffer Corp., 16 USPQ2d 1309, 1311 (TTAB 1990) (concept of incontestability of a registration is irrelevant to a cancellation proceeding under Trademark Act § 14, 15 U.S.C. § 1064).
307.02(c) Factors Affecting the Five-Year Period
307.02(c)(1) Reliance on Registration By Plaintiff
If an opposer relies on a Principal Register registration of its pleaded mark, and the five-year period has not yet expired when the opposition is filed, the limitation does not apply to any counterclaim to cancel such pleaded registration, filed in response to the notice of opposition. This is so even if the five-year period has expired by the time the counterclaim is filed. In such cases, the filing of the opposition tolls, during the pendency of the proceeding, the running of the five-year period for purposes of determining the grounds on which a counterclaim may be based. [ Note 1.]
Similarly, the limitation would not apply to a counterclaim to cancel such a Principal Register registration relied on by the petitioner in a cancellation proceeding, if the five-year period had not yet expired with respect to the registration at the time of the filing of the petition to cancel.
NOTES:
1. See, e.g., Williamson-Dickie Manufacturing Co. v. Mann Overall Co., 359 F.2d 450, 149 USPQ 518, 522 (CCPA 1966); UMC Industries, Inc. v. UMC Electronics Co., 207 USPQ 861, 862 n.3 (TTAB 1980) (grounds not limited where petition to cancel registration pleaded in opposition was not filed until after fifth anniversary date of registration, because opposition wherein opposer relied on registration was filed before anniversary date); Humble Oil & Refining Co. v. Sekisui Chemical Co. Ltd. of Japan, 165 USPQ 597, 598 n.4 (TTAB 1970) (grounds were not limited where, although counterclaim to cancel pleaded registration was not properly filed until after fifth anniversary date of registration, opposition wherein opposer relied on said registration was filed before anniversary date); Sunbeam Corp. v. Duro Metal Products Co., 106 USPQ 385, 386 (Comm’r 1955). See also 3 J. THOMAS MCCARTHY, MCCARTHYON TRADEMARKS AND UNFAIR COMPETITION, § 20:67 (2015). Cf. regarding concurrent use proceedings, Arman’s Systems, Inc. v. Armand’s Subway, Inc., 215 USPQ 1048, 1050 (TTAB 1982) (five-year period tolled where applicant, prior to expiration of five-year period, files a proper concurrent application or an amendment converting an unrestricted application to one seeking concurrent use naming registrant as exception to applicant’s right to exclusive use).
307.02(c)(2) Amendment of Registration
When a Principal Register registration has been amended, the registration is subject to attack under Trademark Act § 14, 15 U.S.C. § 1064, to the extent that the amendment of the registration has in any way enlarged registrant’s rights, as though the registration had issued on the date of the amendment. That is, even though the Trademark Act § 14, 15 U.S.C. § 1064 five-year period following issuance of the registration, or publication under Trademark Act § 12(c), 15 U.S.C. § 1062(c), may have expired, if a petition to cancel the registration is filed within the 5 years following the amendment of the registration, the petition is not limited to Trademark Act §14(3) or Trademark Act § 14(5), 15 U.S.C. § 1064(3) or 15 U.S.C. § 1064(5) grounds, to the extent that the amendment has in any way enlarged the registrant’s rights. Rather, during the 5 years after the amendment, "the modified registration, not having been in existence for 5 years, may be challenged in a cancellation proceeding as long as petitioner states grounds [not limited to Trademark Act § 14(3) or Trademark Act § 14(5), 15 U.S.C. § 1064(3) or 15 U.S.C. § 1064(5) grounds] for the cancellation indicating how he believes he is or will be damaged by the modified registration." [ Note 1.]
NOTES:
1. Stanspec Co. v. American Chain & Cable Co., 531 F.2d 563, 189 USPQ 420, 423 (CCPA 1976). See Continental Gummi-Werke AG v. Continental Seal Corp., 222 USPQ 822, 824-25 (TTAB 1984) (counterclaim would be proper where defendant pleads that the amendment to the mark in the subject registration resulted in a mark materially different from originally registered mark, representing enlargement of rights conferred by original certificate of registration; that defendant used its mark prior to opposer’s first use of amended mark; and that confusion with amended mark is likely).