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 as to the pleaded registration 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, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 20:67 (5th ed. March 2022 update). 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 five years following the amendment of the registration, the petition is not limited to Trademark Act § 14(3), Trademark Act § 14(5), or Trademark Act § 14(6), 15 U.S.C. § 1064(3), 15 U.S.C. § 1064(5) , or 15 U.S.C. § 1064(6) grounds, to the extent that the amendment has in any way enlarged the registrant’s rights. Rather, during the five 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), Trademark Act § 14(5), or Trademark Act § 14(6), 15 U.S.C. § 1064(3), 15 U.S.C. § 1064(5), or 15 U.S.C. § 1064 grounds] for the cancellation indicating how he believes he is or will be damaged by the modified registration." [ Note 1.] A registration that has been amended, however, may not be challenged for nonuse under Trademark Act § 14(6), 15 U.S.C. § 1064(6), until three years from the date of the amendment. See TBMP §307.03.
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).
307.02(c)(3) Amendment of Petition for Cancellation
If a petitioner files a cancellation against a registration and the five-year period has not yet expired when the cancellation is filed, the five-year time limit specified in Trademark Act § 14, 15 U.S.C. § 1064, does not bar any claims that may be raised by an amended pleading, subject to the provisions of Fed. R. Civ. P 15(a). This is so even if the five-year period has expired by the time an amended petition for cancellation is filed. In such cases, the filing of the cancellation tolls, during the pendency of the proceeding, the running of the five-year period for purposes of determining the grounds on which a cancellation may be based. [ Note 1.] See TBMP § 507 regarding motions to amend the pleadings.
NOTES:
1. See Ashland Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp., 119 USPQ2d 1125, 1128-30 (TTAB 2016) (the commencement of a cancellation proceeding prior to the fifth-year anniversary of the registration tolls Trademark Act Section 14 for the purpose of petitioner adding claims against the registration during the pendency of the Board proceeding).