309.03(d) Remedy Under Trademark Act § 18, 15 U.S.C. § 1068, (Partial Opposition or Partial Cancellation)
Trademark Act § 18, 15 U.S.C. § 1068 In such proceedings the Director may refuse to register the opposed mark, may cancel the registration, in whole or in part, may modify the application or registration by limiting the goods or services specified therein, may otherwise restrict or rectify with respect to the register the registration of a registered mark, may refuse to register any or all of several interfering marks, or may register the mark or marks for the person or persons entitled thereto, as the rights of the parties under this chapter may be established in the proceedings....
37 C.F.R. § 2.111(b) Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part. ...
37 C.F.R. § 2.133(b) If, in an inter partes proceeding, the Trademark Trial and Appeal Board finds that a party whose application or registration is the subject of the proceeding is not entitled to registration in the absence of a specified restriction to the involved application or registration, the Board will allow the party time in which to file a motion that the application or registration be amended to conform to the findings of the Board, failing which judgment will be entered against the party.
37 C.F.R. § 2.99(h) The Trademark Trial and Appeal Board will consider and determine concurrent use rights only in the context of a concurrent use registration proceeding.
37 C.F.R. § 2.133(c) Geographic limitations will be considered and determined by the Trademark Trial and Appeal Board only in the context of a concurrent use registration proceeding.
Under Trademark Act § 18, 15 U.S.C. § 1068, the Board has the authority to cancel registrations in whole or in part, to restrict the goods or services identified in an application or registration, or to "otherwise restrict or rectify...the registration of a registered mark." [ Note 1.] However, geographic limitations will be considered and determined by the Board only within the context of a concurrent use proceeding. [ Note 2.] For information concerning concurrent use proceedings, see TBMP Chapter 1100.
Relief under § 18 may be sought separately and apart from, or in addition to, any other ground. [ Note 3.] A claim under § 18 is in the nature of an equitable remedy and does not require pleading and proof of specific grounds for cancellation or opposition, such as abandonment. [ Note 4.]
Please Note:A claim in which the plaintiff seeks to delete specific items on the grounds that the defendant is no longer using, and has no intent to resume use of its mark on those goods or services, is not a claim under § 18 but is essentially a "straightforward" pleading of abandonment. [ Note 5.]
A claim to restrict or limit the goods or services under Trademark Act § 18, 15 U.S.C. § 1068. A plaintiff may seek to partially cancel a registration, or partially oppose registration only as to specific items in the identification of goods or services, or only to the extent of restricting the goods or services in a particular manner in terms of type, use, customers, trade channels, etc. [ Note 6.] In such case, essentially a plaintiff is seeking either to delete specific items or limit the identification in some way. For example, a plaintiff may seek to restrict or modify the goods or services in a particular manner, that is, by the addition of wording that identifies the goods or services with greater particularity in terms of type, use, channels of trade, etc.
However, the Board will not permit an action to restrict or modify the goods or services in this manner where such a claim is divorced from the question of likelihood of confusion. [ Note 7.] Thus, a party seeking to restrict an opponent’s broadly worded identification of goods or services, in a case involving likelihood of confusion, must plead and prove that (i) the entry of a proposed restriction to the goods or services in its opponent’s application or registration will avoid a finding of likelihood of confusion and (ii) the opponent is not using its mark on those goods or services that will be effectively excluded from the application or registration if the proposed restriction is entered. [ Note 8.]
In considering a restriction of a registration, the Board will look to the nature of the use made by registrant as of the time the restriction is sought, not as of the time registration was sought. [ Note 9.]
A petition to partially cancel a registration by restricting the goods or services in a particular manner in terms of type, use, channels of trade, etc., in order to avoid a likelihood of confusion can be made against registrations over five years old as well as those less than five years old. [ Note 10.] This is so because such a claim is in the nature of an equitable remedy and does not constitute an attack on the validity of a registration. [ Note 11.]
A claim to restrict or rectify with respect to the register the registration. A petition to restrict or clarify the description of a mark in a registration would fall under the provision giving the Board authority to "restrict or rectify" the register. [ Note 12.] As in the case of a petition to restrict goods or services, a proper pleading to restrict the description of a mark could include allegations that, for example, the description of the mark in the registration is ambiguous or overly broad and not specific to the mark actually used by the defendant, and that the limitation would avoid a finding of a likelihood of confusion. [ Note 13.]
That same provision, along with the authority to "register the mark...for the person...entitled thereto," allows the Board to correct, respectively, a registration or application to identify the true owner, if such correction is warranted. [ Note 14.]
Similarly, under this provision, a plaintiff may seek relief in the nature of entry of a disclaimer of an assertedly generic term forming only a portion of the mark, provided that the registration is less than five years old. [ Note 15.]
As in the case of any other claim, a claim for partial opposition or partial cancellation ordinarily should be asserted prior to trial in order to give the defendant fair notice thereof. [ Note 16.] In addition, the claim must be specific in nature so that the defendant has fair notice of the specific restriction being sought. [ Note 17.] Any claim that is not pleaded in the complaint, as originally filed or as amended (or deemed amended) pursuant to Fed. R. Civ. P. 15(a) or 15(b), will not be entertained by the Board. [ Note 18.] See also TBMP § 309.03, TBMP § 314 and TBMP § 507.
A defense which seeks to restrict a plaintiff’s pleaded registration will not be entertained in the absence of a timely counterclaim, or separate petition, to cancel the registration in whole or in part. [ Note 19.] See TBMP § 309.03(c), TBMP § 311.01(c) and TBMP § 313.01.
For information on a request by defendant to restrict its identification of goods or services under Trademark Act § 18, 15 U.S.C. § 1068, see TBMP § 311.02(b); TBMP § 507 and TBMP § 514. For information on asserting a counterclaim to partially cancel a registration, see TBMP § 313.01.
For information concerning the extent of default for failure to file an answer to a claim for partial opposition or cancellation, see TBMP § 312.01.
NOTES:
1. Trademark Act § 18, 15 U.S.C. § 1068. See also 37 C.F.R. § 2.111(b) and 37 C.F.R. § 2.133 (b); Embarcadero Technologies Inc. v. RStudio Inc., 105 USPQ2d 1825, 1828 (TTAB 2013) (Board has equitable power to restrict the goods and services under Section 18); Montecash LLC v. Anzar Enterprises, Inc. 95 USPQ2d 1060, 1063 (TTAB 2010); Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479 (TTAB 1998); and Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1270 (TTAB 1994). Cf. ProQuest Information and Learning Co. v. Island, 83 USPQ2d 1351, 1354 (TTAB 2007) (proposed amendment denied); Seculus Da Amazonia S/A v. Toyota Jidosha Kabushiki Kaisha, 66 USPQ2d 1154, 1156 (TTAB 2003) (opposition based on applicant’s alleged misconduct and unclean hands in its dealing with the U.S. Customs Service fails to constitute a claim that is cognizable under Trademark Act § 18, 15 U.S.C. § 1068).
2. See 37 C.F.R. § 2.99(h) and 37 C.F.R. § 2.133(c); Snuffer & Watkins Management Inc. v. Snuffy’s Inc., 17 USPQ2d 1815, 1816 (TTAB 1990). Cf. Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1106 n.3 (TTAB 2007) (proposed counterclaim to partially cancel petitioner’s pleaded registrations by further limiting their geographic scope denied).
3. Embarcadero Technologies Inc. v. RStudio Inc., 105 USPQ2d 1825, 1829 (TTAB 2013) (Section 18 relief may be sought in the alternative); Montecash LLC v. Anzar Enterprises, Inc., 95 USPQ2d 1060, 1063 (TTAB 2010); Dak Industries, Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995); Eurostar, Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 (TTAB 1995).
4. See Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 n.3 (TTAB 1994). See also DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995) ("…a claim for partial cancellation by restriction or modification of the goods or services listed in a plaintiff’s pleaded registration is an equitable remedy under Section 18 of the Trademark Act, not tied to a ground to cancel.").
5. Johnson & Johnson v. Obschestvo s Ogranitchennoy, 104 USPQ2d 2037, 2038 n.2, 2039 (TTAB 2012) (counterclaim seeking partial cancellation as to only three of the items identified in the class based on abandonment due to nonuse without an intent to resume use is a counterclaim of abandonment sufficiently stated notwithstanding reference to Section 18); DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995) (because applicant sought to strike from opposer’s registration goods specifically listed therein, such as "open reel audio tape," on the grounds that opposer was no longer using and had no intent to resume use of its mark on such goods, it was proper to plead abandonment and applicant did not need to plead that a finding of likelihood of confusion will be avoided by the restriction it sought). See also Milliken & Co. v. Image Industries Inc., 39 USPQ2d 1192, 1195 & n.9 (TTAB 1996) (respondent’s counterclaim alleging that respondent may have prior use of the mark in the trade channels sought to be excluded in petitioner’s registration, was legally insufficient pleading of either likelihood of confusion or abandonment because likelihood of confusion is not available ground for cancellation of registration over five years old and because counterclaim lacked pleading of allegation that petitioner had not, as of the filing date of the counterclaim, commenced using its mark in connection with the goods which counterclaimant sought to have deleted from registration).
6. See Board of Regents, University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182, 1196-97 (TTAB 2014); DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995); and Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1270 (TTAB 1994). Cf. IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, 1954 (TTAB 2009) (amendment denied).
7. See DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995) ("the Board will not exercise its authority under Section 18 to permit an action for partial cancellation by restriction or modification of the goods listed in an application or registration where such a claim is divorced from the question of likelihood of confusion."); Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 (TTAB 1994) (discretion to limit a registration will only be exercised when such partial cancellation or restriction will avoid the finding of likelihood of confusion). Cf. Embarcadero Technologies Inc. v. RStudio Inc., 105 USPQ2d 1825, 1828 (TTAB) (a defendant may assert an affirmative defense by moving to restrict its own goods and/or services in order to avoid any likelihood of confusion alleged by plaintiff).
Please Note: To the extent that cases decided prior to Eurostar permitted a restriction in the absence of a pleading that the restriction sought will avoid a likelihood of confusion, and to the extent that those cases required the pleading and proof of a separate ground of nonuse or abandonment, those cases were expressly overruled by Eurostar.
8. See Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 (TTAB 1994). See also, e.g., Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (applicant’s attempt to restrict opposer’s registration for computer programs to "computer programs except computer programs for maintenance management" was rejected as it did not serve to avoid likelihood of confusion since proposed restriction failed to delineate different users or different channels of trade).
9. See Milliken & Co. v. Image Industries Inc., 39 USPQ2d 1192 (TTAB 1996).
10. See Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 n.3 (TTAB 1994).
11. See Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 n.3 (TTAB 1994). See also, e.g., Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (counterclaim to partially cancel pleaded registration to restrict scope of goods therein did not preclude opposer’s reliance on pleaded registration to establish priority in the opposition).
12. See IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, 1953 (TTAB 2009); Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479 (TTAB 1998).
13. See Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479-80 (TTAB 1998). See also Covidien LP v. Masimo Corp., 109 USPQ2d 1696, 1699 (TTAB 2014) (sufficient to allege that a feature of the description of the mark renders the description not specific to the mark as actually used and that the proposed amendment of the description to the color actually used would avoid a likelihood of confusion).
14. See Piano Wellness, LLC v. Williams, 126 USPQ2d 1739, 1741 (TTAB 2018) (under Trademark Act § 18, the Board may, upon motion of any party before it, amend the ownership of an application in order to give effect to a district court judgment ordering transfer of a trademark application); 8440 LLC v. Midnight Oil Co., 59 USPQ2d 1541, 1541 (TTAB 2001) (where the record showed that plaintiff, rather than defendant, was the true owner of the marks in the challenged application and registration and where the parties filed a joint motion that registration be issued in the name of plaintiff and that the register be rectified to show plaintiff as the owner of the existing registration, Board exercised authority under Trademark Act § 18, and granted motion). See also Chapman v. Mill Valley Cotton, 17 USPQ2d 1414, 1415 (TTAB 1990) (Section 18 is broad enough to authorize the Board to amend ownership of the registration upon request of the parties).
15. See Montecash LLC v. Anzar Enterprises, Inc., 95 USPQ2d 1060, 1063 (TTAB 2010) (petitioner, seeking entry of a disclaimer of a purportedly generic term that formed a portion of a mark that is not generic in its entirety, and that resided on the Principal Register for more than five years, failed to state a claim upon which relief may be granted); Kellogg Co. v. Pack’em Enterprises, Inc., 14 USPQ2d 1545, 1549 (TTAB 1990) (counterclaim plaintiff seeking, in the alternative, that an amendment be entered to disclaim a purportedly descriptive portion of an asserted mark registered for less than five years stated a claim upon which relief may be granted).
16. See Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1287 (TTAB 1998) (restriction proposed for first time in reply brief untimely); Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1272 (TTAB 1994); Reflange Inc. v. R-Con International, 17 USPQ2d 1125, 1131 n.10 (TTAB 1990) (petitioner’s request to restrict channels of trade for respondent’s goods denied when raised at end of rebuttal period). Cf. ProQuest Information and Learning Co. v. Island, 83 USPQ2d 1351, 1353 (TTAB 2007) (applicant’s proposed restriction to application denied; Board will only exercise this authority where the issue of restriction has been raised in either the pleadings or by motion or has been tried by the parties, and the possible restriction has been stated with precision). But see Board of Regents, University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182, 1186 (TTAB 2014) (motion to amend, filed prior to opening of opposer’s testimony period, to add counterclaim to restrict the goods and services identified in opposer’s pleaded registrations granted).
17. See Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1272 (TTAB 1994) (party that seeks to restrict a registration or application should state with as much precision as possible the restriction it seeks, so that the issue is properly framed for trial); Aries Systems Corp. v. World Book Inc., 23 USPQ2d 1742, 1749 (TTAB 1992) (counterclaim failed to specify the least restrictive language applicant would accept); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1218 (TTAB 1990) (counterclaim that opposer’s registration should be amended "to accurately describe the services" was vague); Pegasus Petroleum Corp. v. Mobil Oil Corp., 227 USPQ 1040, 1044 (TTAB 1985).
18. See Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1272 (TTAB 1994); Reflange Inc. v. R-Con International, 17 USPQ2d 1125, 1131 (TTAB 1990) (petitioner’s request to restrict channels of trade for respondent’s goods denied when raised at end of rebuttal period).