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).