602.02 Withdrawal by Respondent
602.02(a) Surrender or Voluntary Cancellation of Registration
37 C.F.R. § 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 C.F.R. § 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 A surrender for cancellation may not subsequently be withdrawn.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 C.F.R. § 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 C.F.R. § 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 C.F.R. § 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 Trademark Act § 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 C.F.R. § 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’s cancellation proceeding, 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 C.F.R. § 2.172; TMEP § 1403.07 (Surrender or Amendment in Multiple-Class Registrations); TMEP § 1608 (Surrender of Registration for Cancellation).
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 C.F.R. § 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 C.F.R. § 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 C.F.R. § 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 C.F.R. § 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 C.F.R. § 2.126(a) and 37 C.F.R. § 2.126(b).
16. See 37 C.F.R. § 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 (5th ed. March 2022 update).
602.02(b) Cancellation Under Section 8 or 71; Expiration Under Section 9 or 70
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.
37 C.F.R. § 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.
37 C.F.R. § 7.36 Affidavit or declaration of use in commerce or excusable nonuse required to avoid cancellation of an extension of protection to the United States.
- (a) Subject to the provisions of section 71 of the Act, a registered extension of protection shall remain in force for the term of the international registration upon which it is based unless the international registration expires or is cancelled under section 70 of the Act due to cancellation of the international registration by the International Bureau.
- (b) During the following time periods, the holder of an international registration must file an affidavit or declaration of use or excusable nonuse, or the registered extension of protection will be cancelled under section 71 of the Act:
- (1) On or after the fifth anniversary and no later than the sixth anniversary after the date of registration in the United States; and
- (2) Within the year before the end of every ten-year period after the date of registration in the United States.
- (3) The affidavit or declaration may be filed within a grace period of six months after the end of the deadline set forth in paragraphs (b)(1) and (b)(2) of this section, with payment of the grace period surcharge per class required by section 71(a)(3) of the Act and § 7.6.
- (c) For the requirements for the affidavit or declaration, see § 7.37.
37 C.F.R. § 7.41 Renewal of international registration and extension of protection.
- (a) Any request to renew an international registration and its extension of protection to the United States must be made at the International Bureau in accordance with Article 7 of the Madrid Protocol.
With respect to registrations issued under Trademark Act §§ 1 or 44, 15 U.S.C. § 1051 and 15 U.S.C. § 1126, if it comes to the attention of the Board, during the course of a proceeding, that respondent has permitted its involved registration to be cancelled under Trademark Act § 8, 15 U.S.C. § 1058, or has failed to renew its involved registration under Trademark Act § 9, 15 U.S.C. § 1059, the Board may issue an order allowing respondent time to show cause why the cancellation, or the failure to renew, should not be deemed to be the equivalent of a cancellation by request of respondent without the consent of petitioner and should not result in entry of judgment against respondent. [ Note 1.]
Similarly, in the case of a § 66(a) registration, if it comes to the attention of the Board during the course of a proceeding that respondent has allowed its extension of protection to the United States to be cancelled under Trademark Act § 71, 15 U.S.C. § 1141k, [ Note 2.] or has failed to renew its extension of protection under Trademark Act § 70, 15 U.S.C. § 1141j, such that it has expired [ Note 3.], the Board may issue an order allowing respondent time to show cause why the cancellation should not be deemed to be the equivalent of a cancellation by request of respondent without the consent of petitioner and should not result in entry of judgment against respondent.
In a cancellation proceeding against any registration having multiple classes, if the respondent permits an entire class which is the subject of the cancellation proceeding to be cancelled under Trademark Act §§ 8 or 71, or fails to renew the registration under Trademark Act § 9 with respect to that class, or has allowed its registered extension of protection to expire under Trademark Act § 70(b), the cancellation or failure to renew with respect to that class is governed by 37 C.F.R. § 2.134(b). [ Note 4.]
In a cancellation proceeding against any registration having multiple goods and/or services within a single class, if the respondent permits one or some of the goods or services which is the subject of the cancellation proceeding to be cancelled under Trademark Act §§ 8 or 71 by failing to include a statement of continuing use, or fails to renew the registration under Trademark Act § 9, or has allowed its extension of protection to expire under Trademark Act § 70(b), the cancellation or failure to renew with respect to that good(s) or service(s) is governed by 37 C.F.R. § 2.134(b). [ Note 5.]
An order to show cause under 37 C.F.R. § 2.134(b) may be issued by the Board upon motion by the petitioner, or (if the failure to file a § 8 or § 9 affidavit or a § 70 renewal or § 71 affidavit comes to the attention of the Board in another manner) upon the Board’s own initiative. [ Note 6.] Depending on the particular circumstances, the Board has discretion not to issue an order to show cause. [ Note 7.]
For information concerning motions for an order to show cause under 37 C.F.R. § 2.134(b), see TBMP § 535.
The purpose of 37 C.F.R. § 2.134(b), and the policy underlying the issuance of a show cause order, is to prevent a cancellation proceeding respondent whose subject registration comes due, during the course of the proceeding, for a § 8 or § 9 affidavit, or in the case of a § 66(a) registration, a § 71 affidavit or § 70 renewal, from being able to moot the proceeding, and avoid judgment, by deliberately failing to file the required affidavits or renewal applications. [ Note 8.] The Board’s policy governing application of 37 C.F.R. § 2.134(b) is as follows:
"The paragraph has been modified to provide an opportunity for the respondent in such situation to ‘show cause’ why judgment should not be entered against it. If respondent submits a showing that the cancellation or expiration was the result of an inadvertence or mistake, judgment will not be entered against it. 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 two-year period of nonuse which commenced well before respondent learned of the existence of the proceeding, judgment will be entered against it only and specifically on the ground of abandonment." [ Note 9.]
If, in response to an order to show cause a respondent submits a showing that the cancellation of its registration or registered extension of protection under Trademark Act §§ 8 or 71, respectively, or failure to renew the registration under Trademark Act § 9, or that the expiration of the registered extension of protection under Trademark Act § 70(b), was the result of inadvertence or mistake, judgment will not be entered against it by reason of the cancellation. [ Note 10.]
If respondent submits a showing that it permitted its registration or registered extension of protection to be cancelled under Trademark Act §§ 8 or 71, respectively, or failed to renew the registration under Trademark Act § 9, or that it allowed the registered extension of protection to expire under Trademark Act § 70(b), because its registered mark had been abandoned, and that the abandonment was not made for purposes of avoiding the proceeding, judgment will be entered against it only and specifically on the ground of abandonment (if abandonment has not been pleaded as a ground for cancellation, petitioner will be allowed to amend its pleading appropriately). [ Note 11.]
In those cases where the Board finds that respondent has shown good and sufficient cause why judgment should not be entered against it, petitioner may be given time to decide whether it wishes to go forward with the cancellation proceeding, or to have the cancellation proceeding dismissed without prejudice as moot. [ Note 12.] In those cases where the Board enters judgment against the respondent only and specifically on the ground of abandonment, petitioner may be given time to decide if 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. [ Note 13.]
As noted above, 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 Trademark Act §§ 8 or 71, or renewal application under Trademark Act § 9, or by permitting the registered extension of protection to expire under Trademark Act § 70(b). The rule does not provide that an order to show cause "shall" be issued, but rather that an order "may" be issued. Normally, the Board, in the exercise of its discretion under the rule, does not issue a show cause order in those cases where the failure to file a required affidavit under §§ 8 or 71, or renewal application under § 9, or failure to renew the registered extension of protection under § 70(b), occurs after the filing of a petition for cancellation, but before respondent has been notified by the Board. [ Note 14.] Rather, the Board issues an action notifying respondent of the filing of the proceeding, advising both parties that the registration has been cancelled under §§ 8 or 71, or has expired under §§ 9 or 70, and allowing petitioner time to elect whether it wishes to go forward with the cancellation proceeding, or to have the cancellation proceeding dismissed without prejudice as moot. Cf. TBMP § 602.01 (Withdrawal by Applicant). However, on the rare occasion that a petitioner believes that the respondent had knowledge of the filing of the petition to cancel (notwithstanding the fact that respondent had not been notified by the Board of the commencement of the proceeding and service of the petition to cancel by web link or web address), and that respondent deliberately failed to file a required affidavit of use under §§ 8 or 71, or renewal application under § 9, or permitted the registered extension of protection to expire under Trademark Act § 70(b), in an effort to moot the proceeding, and avoid judgment, the petitioner may file a motion for an order to show cause under 37 C.F.R. § 2.134(b) stating the reasons for its belief. See TBMP § 535.
Where, during the course of a proceeding, respondent’s registration or registered extension of protection expires or is cancelled, and respondent demonstrates that the cancellation or expiration was not occasioned by respondent’s intent to moot the proceeding, and petitioner elects to go forward with the proceeding, "[t]he expiration of the registration does not extinguish either actual notice or constructive notice [of the registration] during the term of the registration." [ Note 15.]
NOTES:
1. See Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1154, 1155 (TTAB 1989); C.H. Guenther & Son Inc. v. Whitewing Ranch Co., 8 USPQ2d 1450 (TTAB 1988); Abraham’s Seed v. John One Ten, 1 USPQ2d 1230, 1232 (TTAB 1986). Cf. In re Checkers of North America Inc., 23 USPQ2d 1451, 1454 (Comm’r 1992), aff’d sub nom., Checkers Drive-In Restaurants, Inc. v. Comm’r of Patents and Trademarks, 51 F.3d 1078, 34 USPQ2d 1574, 1580 n.7 (D.C. Cir. 1995); Global Maschinen GmbH v. Global Banking Systems, Inc., 227 USPQ 862, 863 n.1 (TTAB 1985).
2. A § 66(a) registration is subject to the § 71 requirements for affidavits of continued use (or excusable nonuse). A § 71 affidavit is filed with the USPTO, not the IB. See Trademark Act § 71, 15 U.S.C. § 1141k; TMEP § 1613 and TMEP § 1904.10.
3. A renewal under Trademark Act § 70, 15 U.S.C. § 1141j, refers to a renewal of the international registration underlying a § 66(a) registration. A § 66(a) registration will be cancelled under § 70 for failure to renew the international registration on which it is based. Renewals of international registrations are filed directly with the International Bureau (IB), not the USPTO. If the IB does not renew the underlying international registration, the IB will notify the USPTO that the international registration has expired. The corresponding extension of protection to the U.S. will expire as of the expiration date of the international registration and the § 66(a) registration will be cancelled by the Office. See Trademark Act § 70, 15 U.S.C. § 1141j; TMEP § 1614 and TMEP § 1905.
4. Cf. Orange Bang, Inc. v. Olé Mexican Foods, Inc., 116 USPQ2d 1102, 1110 (TTAB 2015).
5. Orange Bang, Inc. v. Olé Mexican Foods, Inc., 116 USPQ2d 1102, 1110 (TTAB 2015) ("We recognize that Trademark Rule 2.134(b) refers to the cancellation of a registration. Here Plaintiff is not attempting to cancel each registration in its entirety, but to cancel only specific items in Defendant’s registrations, and these items are among those that Defendant requested to have deleted as part of its Section 8 filings. Nonetheless, the purpose behind Rule 2.134(b) is to prevent a defendant from mooting a cancellation action. Therefore, we find that Rule 2.134(b) applies to the present situation, where the cancellation proceeding is to cancel only certain goods from a registration, and the defendant deletes those specific goods from its registration as part of its filing a Section 8 affidavit in order to moot the proceeding.").
6. See C.H. Guenther & Son Inc. v. Whitewing Ranch Co., 8 USPQ2d 1450, 1452 (TTAB 1988) (motion for order to show cause); Abraham’s Seed v. John One Ten, 1 USPQ2d 1230, 1232 (TTAB 1986) (show cause order issued where respondent’s failure to file § 8 affidavit came to Board’s attention following receipt of petitioner’s final brief but before final decision).
7. Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *2 (TTAB 2020) (Board found it unnecessary to issue show cause order under Trademark Rule 2.134(b) where respondent’s sole owner and member testified during trial that the mark in the expired registration is no longer used and that he does not intend to use it again in the future); Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd., 126 USPQ2d 1526, 1531 (TTAB 2018) (Board exercised discretion not to issue show cause order under Trademark Rule 2.134(b) where respondent’s registration expired after petitioner filed its brief on the merits; Board issued final decision on the merits); Orange Bang, Inc. v. Olé Mexican Foods, Inc., 116 USPQ2d 1102, 1110 (TTAB 2015) (where the deletions requested by respondent of the involved goods from the Section 8 declarations were deliberate, and not the result of mistake or inadvertence, and respondent mistakenly believed that such deletion would moot or partially moot the subject actions, Board exercised discretion not to issue an order to show cause); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1471 (TTAB 2014) (Board exercised discretion not to issue show cause order because the parties had litigated and briefed whether the mark is merely descriptive; sufficient cause to decide the issue on the merits); Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080, 1083, n.7 (TTAB 2014) (same), aff'd, 112 F.Supp.3d 439, 115 USPQ2d 1524 (E.D. Va. 2015), vacated and remanded on other grounds, No. 15-1874 (4th Cir. Jan. 18, 2018).
8. See In re Checkers of North America Inc., 23 USPQ2d 1451, 1454 (Comm’r 1992), aff’d sub nom. Checkers Drive-In Restaurants, Inc. v. Comm’r of Patents and Trademarks, 51 F.3d 1078, 34 USPQ2d 1574 (D.C. Cir. 1995) (petitioner should not be deprived of a judgment in its favor by a respondent who lets its registration lapse during a cancellation proceeding); Orange Bang, Inc. v. Olé Mexican Foods, Inc., 116 USPQ2d 1102, 1110 (TTAB 2015); Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1154, 1156 (TTAB 1989) (although judgment entered on ground of abandonment in view of concession that failure to file § 8 affidavit was due to discontinued use of mark, judgment was not entered on ground of likelihood of confusion where respondent showed that failure to file § 8 affidavit with respect to that ground was result of deliberate business decision made prior to commencement of proceeding and not for purposes of avoiding proceeding).
9. Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1154, 1156 (TTAB 1989) (where registrant stated that failure to file § 8 affidavit, with respect to ground of likelihood of confusion, was result of deliberate business decision made prior to commencement of proceeding and not to avoid judgment, judgment was not entered as to that ground); C.H. Guenther & Son Inc. v. Whitewing Ranch Co., 8 USPQ2d 1450, 1452 (TTAB 1988) (failure to renew was unintentional and not due to abandonment); Abraham’s Seed v. John One Ten, 1 USPQ2d 1230, 1232 (TTAB 1986) (respondent’s belief that it was improper to file a § 8 affidavit since "the cancellation action had priority," while erroneous, was treated as sufficient showing of cause to avoid entry of judgment).
10. See C.H. Guenther & Son Inc. v. Whitewing Ranch Co., 8 USPQ2d 1450, 1452 (TTAB 1988) (failure to renew was unintentional and not due to abandonment); Abraham’s Seed v. John One Ten, 1 USPQ2d 1230, 1232 (TTAB 1986) (respondent’s belief that it was improper to file a § 8 affidavit since "the cancellation action had priority," while erroneous, was treated as sufficient showing of cause to avoid entry of judgment). Cf. Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1422 (TTAB 2014) (judgment against opposers on counterclaim for failure of opposer to respond to order to show cause regarding expiration of registration).
11. See Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1154, 1156 (TTAB 1989) (where registrant stated that failure to file § 8 affidavit, with respect to ground of likelihood of confusion, was result of deliberate business decision made prior to commencement of proceeding and not to avoid judgment, judgment was not entered as to that ground and petitioner was allowed time to advise whether it wished to go forward on that ground).
12. See Abraham’s Seed v. John One Ten, 1 USPQ2d 1230, 1232 (TTAB 1986) (opted for decision on merits). Cf. C.H. Guenther & Son Inc. v. Whitewing Ranch Co., 8 USPQ2d 1450, 1452 (TTAB 1988) (where petitioner moved for show cause order and respondent filed response showing good cause along with uncontested motion to dismiss petition as moot, petition was dismissed as moot).
13. See Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1154, 1156 (TTAB 1989). Cf. United Rum Merchants Ltd. v. Distillers Corp. (S.A.), 9 USPQ2d 1481, 1484 n.3 (TTAB 1988); Bank of America National Trust & Savings Association v. First National Bank of Allentown, 220 USPQ 892, 894 n.6 (TTAB 1984) (where application was held void ab initio, opposer elected to adjudicate pleaded issues); Daggett & Ramsdell, Inc. v. Procter & Gamble Co., 119 USPQ 350, 350 (TTAB 1958), rev’d on other grounds, 275 F.2d 955, 125 USPQ 236 (CCPA 1960).
14. See Global Maschinen GmbH v. Global Banking Systems Inc., 227 USPQ 862, 863 n.1 (TTAB 1985).
15. Fishking Processors, Inc. v. Fisher King Seafoods Ltd., 83 USPQ2d 1762, 1765 (TTAB 2007) (where, after expiration of the registration during the course of the proceeding, petitioner elected to go forward on its claims, respondent was not precluded from asserting a laches defense).