602.02(a) Surrender or Voluntary Cancellation of Registration
37 CFR § 2.134(a) Surrender or Voluntary Cancellation of Registration. After the commencement of a cancellation proceeding, if the respondent applies for cancellation of the involved registration under section 7(e) of the Act of 1946 without the written consent of every adverse party to the proceeding, judgment shall be entered against the respondent. The written consent of an adverse party may be signed by the adverse party or by the adverse party’s attorney or other authorized representative.
37 CFR § 2.172 Surrender for cancellation. Upon application by the owner, the Director may permit any registration to be surrendered for cancellation. The application for surrender must be signed by the owner of the registration, someone with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter. When a registration has more than one class, one or more entire class(es) but fewer than the total number of classes may be surrendered. Deletion of fewer than all the goods or services in a single class constitutes amendment of the registration as to that class (see § 2.173), not surrender. A surrender for cancellation may not subsequently be withdrawn.
37 CFR § 7.30 Effect of cancellation or expiration of international registration. When the International Bureau notifies the Office of the cancellation or expiration of an international registration, in whole or in part, the Office shall cancel, in whole or in part, the corresponding pending or registered extension of protection to the United States. The date of cancellation of an extension of protection or relevant part shall be the date of cancellation or expiration of the corresponding international registration or relevant part.
A registered extension of protection to the United States of an international registration also is referred to as a "§ 66(a) registration."
A registrant that wishes to voluntarily surrender its registration for cancellation may file in the Office a written application, signed by the registrant, or an attorney as defined in 37 CFR § 11.1 who has an actual or implied written or verbal power of attorney from the owner. [ Note 1.] There is no fee for a voluntary surrender for cancellation. [ Note 2.] A registrant that wishes to voluntarily cancel its § 66(a) registration may do so by filing such request with either the USPTO or the International Bureau (IB). [ Note 3.] However, after the commencement of a cancellation proceeding, if the respondent applies for surrender of its subject registration under Trademark Act § 7(e), 15 U.S.C. § 1057(e), without the written consent of every adverse party to the proceeding, judgment will be entered against the respondent. [ Note 4.] The written consent of an adverse party may be signed by the adverse party itself, or by the adverse party’s attorney or other authorized representative. [ Note 5.]
Once a respondent has filed a voluntary surrender, it may not later withdraw that surrender. [ Note 6.]
For information concerning the effect of a judgment of this type, see TBMP § 602.01.
Deletion of an entire class in multiple-class registrations. In a cancellation proceeding against any registration having multiple classes, if the respondent files a request to amend the registration to delete an entire class sought to be cancelled, the request for amendment is, in effect, a voluntary surrender of the registration with respect to that class, and is governed by 37 CFR § 2.134(a). [ Note 7.]
Deletion of only some goods and services in a single class is an amendment for Trademark Act §§ 1 and 44 registrations. For a registration under Trademark Act §§ 1 or 44, deletion of some of the goods or services in a single class constitutes an amendment, not a voluntary surrender, of the registration as to that class. [ Note 8.] For information about amendments to registrations involved in Board proceedings, see TBMP § 514.
Deletion of only some goods and services in a single class affecting only the registered extension of protection is an amendment for a Trademark Act § 66(a) registration. In a cancellation proceeding against a § 66(a) registration, if the respondent requests a deletion of some of the goods or services in a single class, and such deletion will affect only the registered extension of protection to the United States, the deletion is considered an amendment and may be filed with the USPTO. [ Note 9.] The USPTO will notify the IB about the change in the registered extension of protection to the United States. [ Note 10.] Similarly, if the USPTO is notified by the IB that a limitation of the list of goods and services affects the registered extension of protection to the United States, but not the international registration, and such limitation results in a deletion of only some of the goods and services in a single class, the deletion is considered an amendment to the § 66(a) registration. [ Note 11.]
Deletion of only some goods and services in a single class affecting the international registration is a voluntary surrender of those goods and services for a Trademark Act § 66(a) registration. However, if the respondent requests a cancellation with the IB as to some of the goods and services in a single class in the international registration without the written consent of every adverse party to the proceeding, the request is, in effect, a voluntary cancellation of the § 66(a) registration with respect to those goods or services and judgment will be entered against the registrant as to the deleted goods or services. [ Note 12.] In this latter situation, the respondent is not deleting goods and services that affect only the registered extension of protection to the United States but is, instead, deleting goods and services that affect its international registration and all reliant extensions of protection, including the one to the United States that is the subject matter of the cancellation proceeding. For further information about amendments to applications and registrations, see 37 CFR § 2.133; TBMP § 514 and TBMP § 605.03(b).
A partial restriction of an international registration may be due to the "ceasing of effect" of the basic registration. This occurs when the home country registration is limited by the country of origin. The USPTO will restrict any § 66(a) registration when notified by the IB of a partial restriction. The § 66(a) registrant has the option of transforming the deleted goods, services and/or classes into a national application. [ Note 13.] Should a respondent involved in a Board cancellation proceeding opt to transform the goods, services and/or classes that are the subject matter of the partial restriction, and that are involved in the Board’s cancellation proceeding, the Board proceeding may go forward with respect to the new national registration resulting from the transformation. Alternatively, the Board may dismiss the cancellation without prejudice to the petitioner to bring an opposition against the new national application resulting from the transformation or to petition to cancel the new national registration resulting from the transformation. Should a respondent elect not to transform the goods, services and/or classes that are the subject matter of the partial restriction, and that are involved in the Board proceedings, the partial restriction is treated as a cancellation of the international registration with respect to the deleted goods, services and/or classes. In the latter case, the partial restriction is, in effect, a voluntary cancellation of the § 66(a) registration with respect to those goods, services and/or classes. Where the partial restriction occurs without the written consent of every adverse party, judgment will be entered against the registrant as to the deleted goods, services and/or classes. [ Note 14.]
An application for voluntary surrender of a registration that is the subject of a Board inter partes proceeding should be electronically filed with the Board, and should bear at the top of its first page both the registration number and the inter partes proceeding number and title. Registrants must use ESTTA for filing a voluntary surrender where the registration is subject to a petition to cancel. [ Note 15.] For further information regarding ESTTA, see TBMP § 110. Use of the TEAS system is not appropriate for filing a voluntary surrender of a registration subject to a petition to cancel. The application for voluntary surrender should include proof of service upon every other party to the proceeding. [ Note 16.] See TBMP § 113.
Other exemplary situations involving a surrender or voluntary cancellation of a registration.
If a registrant whose registration is the subject of a petition for cancellation files a surrender or voluntary cancellation of the registration with the written consent of the petitioner, the petition for cancellation will be dismissed without prejudice, and the registration will be cancelled.
If the registrant files a surrender or voluntary cancellation of the registration with the written consent of the petitioner, and the petitioner files a withdrawal of the petition for cancellation, the petition for cancellation will be dismissed without prejudice, and the registration will be cancelled.
If the registrant files a surrender or voluntary cancellation of the registration with prejudice with the written consent of the petitioner, the petition for cancellation will be dismissed without prejudice (the registration will be cancelled with prejudice to registrant’s right to reregister the same mark for the same goods or services), unless the parties specify otherwise in writing.
If the registrant files a surrender or voluntary cancellation of the registration with prejudice with the written consent of the petitioner, and the petitioner files a withdrawal of the petition for cancellation with prejudice with the written consent of the registrant, the petition for cancellation will be dismissed with prejudice, and the registration will be cancelled with prejudice to registrant’s right to re-register the same mark for the same goods or services. [ Note 17.]
NOTES:
1. See TMEP § 1608 (Surrender of Registration for Cancellation).
2. See Trademark Act § 7(e), 15 U.S.C. § 1057(e); 37 CFR § 2.172; TMEP § 1403.07 (Surrender or Amendment in Multiple-Class Registrations); TMEP § 1608 (Surrender of Registration for Cancellation). The requirement for a statement that the original certificate has been lost or destroyed has been eliminated.
3. See TMEP § 1608. Cf. TMEP § 1906.01(e) (a request to cancel the international registration, however, must be filed with the IB).
4. See 37 CFR § 2.134(a). See Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1423 (TTAB 2014) (judgment entered against opposers who voluntarily surrendered pleaded registration without applicant’s consent where such registration was the subject of a counterclaim to cancel); Christiane E LLC v. International Expedition Inc., 106 USPQ2d 2042, 2044 (TTAB 2013) (judgment entered against respondent where petitioner’s written consent to voluntary surrender not of record and where respondent did not show an extraordinary situation in support of its motion to withdraw its voluntary surrender). Cf. 37 CFR § 2.135; Goodway Corp. v. International Marketing Group Inc., 15 USPQ2d 1749, 1750 (TTAB 1990); Grinnell Corp. v. Grinnell Concrete Pavingstones Inc., 14 USPQ2d 2065, 2067 (TTAB 1990) (consent required for abandonment without prejudice regardless of motivation for abandonment, i.e., a concession by applicant that it is not the owner of the mark and that judgment would be unfair to the real owner, a non-party to the case); In re First National Bank of Boston, 199 USPQ 296, 301 (TTAB 1978) (where abandonment of application and notice of opposition were filed on the same day, consent was not required because there was no application to oppose).
5. See 37 CFR § 2.134(a).
7. See G&W Laboratories, Inc. v. GW Pharma Ltd., 89 USPQ2d 1571, 1574 (TTAB 2009) ("The request to delete a class of goods or services sought to be cancelled is, in effect, a voluntary cancellation of the registration as to the class under Section 7(e) of the Trademark Act.").
8. 37 CFR § 2.172. See also TMEP § 1403.07 and TMEP § 1609.03.
9. See TMEP § 1609.03 and TMEP § 1904.13(a). See also TMEP § 1904.02(c) and TMEP § 1904.02(c)(ii), explaining the USPTO requirement that identifications in international registrations that provide the basis for a § 66(a) application, and ensuing registered extension of protection, must meet the same standards of specificity as §§ 1 and 44 applications; and explaining the USPTO’s policy where the identification in the international registration is indefinite, respectively.
10. See TMEP § 1904.13(a).
11. See TMEP § 1904.02(e)(ii), TMEP § 1904.02(e)(iii), and TMEP § 1904.15.
12. See 15 U.S.C. § 1141j(a); TMEP § 1609.03. Cf. G&W Laboratories, Inc. v. GW Pharma Ltd., 89 USPQ2d 1571, 1574 (TTAB 2009) ("The request to delete a class of goods or services sought to be cancelled is, in effect, a voluntary cancellation of the registration as to the class under Section 7(e) of the Trademark Act.").
13. See TMEP § 1904.09.
15. See 37 CFR § 2.126(a) and 37 CFR § 2.126(b).
16. See 37 CFR § 2.119(a).
17. Cf. Montana v. United States, 440 U.S. 147, 159 (1979) (changes in controlling facts essential to a judgment will render collateral estoppel inapplicable in a subsequent action raising the same issues); Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 424 F.3d 1229, 76 USPQ2d 1310, 1313 (Fed. Cir. 2005) ("A change in trademark usage can constitute a change in transactional facts that avoids preclusion based on the earlier noninfringement decision."); Bingaman v. Dep’t of the Treasury, 127 F.3d 1431, 1437 (Fed. Cir. 1997) ("Collateral estoppel is subject to exceptions when the circumstances dictate. … Courts have crafted an exception to the collateral estoppel principle when there has been a change in the applicable law between the time of the original decision and the subsequent litigation in which collateral estoppel is invoked."). See generally J. Thomas McCarthy, 6 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 32:88 (2018).