A recent petition to cancel a trademark registration is a good lesson in what constitutes a well-drafted cause of action.

In Bonehead Brands, LLC v. Direct Impulse Design, Inc.,  Petitioner sought to cancel Reg. No. 3182681 of the mark BONE HEAD OUTFITTERS and Design for various apparel items in International Class 25.   The Respondent thereafter filed a motion for summary judgment on Petitioner’s pleaded claim of abandonment. The history leading up to the motion for summary judgment and the Board’s decision deserves comment.

On May 11, 2016, the Respondent filed a combined Section 8 and Affidavit together with a specimen of use that purported to show the mark in continuous commerce.  The USPTO accepted the Section 9 renewal portion of the affidavit, but rejected the specimen submitted in support of the Section 8 affidavit of continuous use.   The USPTO required a substitute specimen be submitted.   The Respondent failed to submit a response to the Office Action within the six (6) month period for doing so.

Shortly thereafter, the Examiner issued a second office action.  There, the Examiner stated that the trademark registration would be cancelled if the Respondent failed to furnish an acceptable substitute specimen of use within an extended six (6) month period.  Approximately one week later, the Petitioner filed a petition for cancellation of the registration.  Petitioner indicated that its basis was on the grounds of abandonment.  Two days later, the Respondent filed a combined Section 8 and 9 declaration with a substitute specimen.  The combined Section 8 and 9 declaration was accepted and the registration was renewed.

In its motion for summary judgment, Petitioner contended that the BONE HEAD OUTFITTERS registration should be cancelled on the grounds of abandonment. Section 45 of the Trademark Act governs the rule regarding cancellation of a trademark registration due to abandonment.  It states in pertinent part:

Abandonment of a Mark.  A mark shall be deemed to be “abandoned” if…the following occurs: (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment.

The Board ruled that while Petitioner stated that the petition was for abandonment, it failed to properly plead the predicate grounds for cancellation of a registration on the grounds of abandonment.   The failure to timely file a Section 8 or 9 Declaration is not a recognized ground for abandonment.  There is no mechanism for a third-party to bring a petition for cancellation due to failure to properly or timely file a Section 8 or 9 Affidavit.  Rather, in the absence of the Director of Trademarks issuing its own cancellation of a registration, a Petitioner can only seek cancellation on one of the grounds enumerated under Section 14 of the Trademark Act.  Here, the Petitioner failed to plead that the Registrant had abandoned its mark due to discontinued use with an intent not to resume use.  Accordingly, the Registrant’s motion for summary judgment was granted.

Author’s Note:   If you or your company requires additional information on a petition to cancel on the grounds of abandonment, contact us.