535 Motion For Order to Show Cause Under 37 C.F.R. § 2.134(b)
37 C.F.R. § 2.134(b) After the commencement of a cancellation proceeding, if it comes to the attention of the Trademark Trial and Appeal Board that the respondent has permitted its involved registration to be cancelled under section 8 or section 71 of the Act of 1946, or has failed to renew its involved registration under section 9 of the Act of 1946, or has allowed its registered extension of protection to expire under section 70(b) of the Act of 1946, an order may be issued allowing respondent until a set time, not less than fifteen days, in which to show cause why such cancellation, failure to renew, or expiration 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 paragraph (a) of this section. In the absence of a showing of good and sufficient cause, judgment may be entered against respondent as provided by paragraph (a) of this section.
It is generally the responsibility of a petitioner for cancellation to keep track of the status of the respondent’s subject registration, and to file a motion for an order to show cause under 37 C.F.R. § 2.134(b) if such registration is cancelled under Trademark Act § 8, 15 U.S.C. § 1058 or Trademark Act § 9, 15 U.S.C. § 1059, after the commencement of the proceeding. However, if the cancellation of the registration under Section 8 or 9 of the Trademark Act comes to the attention of the Board in another manner, the Board may issue an order to show cause upon its own initiative.
The purpose of 37 C.F.R. § 2.134(b) is to prevent a cancellation proceeding respondent from being able to moot the proceeding and avoid judgment by deliberately failing to file a required affidavit of use under § 8 or renewal application under § 9. [ Note 1.]
In those cases where the Board finds that respondent has not acted deliberately to avoid judgment and thereby has shown good and sufficient cause why judgment should not be entered against it under 37 C.F.R. § 2.134(b), petitioner will be given time in which to elect whether it wishes to go forward with the cancellation proceeding, or to have the cancellation proceeding dismissed without prejudice as moot. If respondent submits a showing that the cancellation or expiration was occasioned by the fact that its registered mark had been abandoned and that such abandonment was not made for purposes of avoiding the proceeding, but rather was the result, for example, of a three-year period of non-use which commenced well before registrant learned of the existence of the proceeding, judgment will be entered against it only and specifically on the ground of abandonment. [ Note 2.] In those cases where the Board enters judgment against the respondent only and specifically on the ground of abandonment, petitioner will be given time in which to elect whether it wishes to go forward to obtain a determination of the remaining issues, or to have the cancellation proceeding dismissed without prejudice as to those issues. TBMP § 602.02(b).
For further information concerning orders to show cause under 37 C.F.R. § 2.134(b), and related orders to show cause in the case of Trademark Act § 66(a), 15 U.S.C. § 1141f(a), applications or registrations, see TBMP § 602.01 and TBMP § 602.02(b).
NOTES:
1. See, e.g., Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1154, 1156 (TTAB 1989) (failure to file Section 8 affidavit occurred prior to commencement of proceeding and therefore not to avoid judgment.)
2. See C.H. Guenther & Son, Inc. v. Whitewing Ranch Co., 8 USPQ2d 1450, 1452 n.4 (TTAB 1988). Nonuse for 3 consecutive years shall be prima facie evidence of abandonment is required currently. Trademark Act § 45, 15 U.S.C §1127.