Madrid Protocol registrations not insulated from petition to cancel based on abandonment

United States of America
In SaddleSprings Inc v Mad Croc Brands Inc (Cancellation 92055493, September 25 2012), the Trademark Trial and Appeal Board (TTAB) has held that a Section 66(a) registration obtained via a Madrid Protocol extension of protection is subject to cancellation on the same grounds, including abandonment, as any other trademark registration in the United States.

SaddleSprings Inc filed a petition to cancel Mad Croc Brands Inc’s registration for the following mark:

Mad Croc had registered the CROC-TAIL (and design) mark on February 20 2007 based on Section 66(a) of the Trademark Act, which allows the owner of an international registration pursuant to the Madrid Protocol to request an extension of protection to the United States. A Section 66(a) applicant is not required to show use of its mark in the US commerce prior to registration, but it must still declare its intention to use the mark in US commerce.

Once a request for extension of protection has been approved and has cleared the opposition period, the USPTO will issue a certificate of extension of protection, which carries the same effect, validity and rights as a registration on the Principal Register. However, a Section 66(a) registration always remains dependent on the underlying international registration.

Maintenance of a Madrid Protocol registration under Section 66(a) requires the registrant to file a Section 71 declaration of continued use or excusable non-use between the fifth and sixth anniversary following issuance of the registration. This is parallel to the requirements under Section 8 of the Trademark Act for a non-Madrid Protocol registration to file a declaration of continued use or excusable non-use between the fifth and sixth anniversary following issuance of the registration.

In the subject case, SaddleSprings filed a petition to cancel Mad Croc’s Madrid Protocol registration, alleging abandonment of the mark. Specifically, SaddleSprings alleged that Mad Croc had “either never used the registered mark in commerce or completely ceased using the registered mark… for a period of at least three consecutive years”. 

In response to the petition to cancel, Mad Crock filed a motion to dismiss the petition, arguing that the cancellation provisions of the Trademark Act dealing with abandonment of a registration do not apply to a Section 66(a) Madrid Protocol registration.

SaddleSprings relied on the following wording of Section 71 on the Trademark Act for its contentions:      

" (a) An extension of protection for which a certificate... has been issued... shall remain in force for the term of the international registration upon which it is based, except that the extension of protection of any mark shall be cancelled by the director -

(1). . . unless within the one-year period preceding the expiration of [the] six-year period the holder of the international registration files... an affidavit [of continued use or excusable non-use]."

Section 71, 15 USC §1141(k) (emphasis added).

SaddleSprings essentially argued that the USPTO had no authority to cancel the subject registration, unless SaddleSprings failed to file the Section 71 affidavit during the initial or the grace period for filing the same, or unless the underlying international registration is no longer in force. Therefore, SaddleSprings argued that abandonment was not an available claim for cancellation of a Madrid Protocol registration based on Section 66(a) of the Trademark Act.

In denying the motion to dismiss, the TTAB noted that the maintenance requirements and authority of the USPTO to cancel Madrid Protocol registrations found in Section 71 of the Trademark Act are analogous to those found in Section 8 of the act, which applies to non-Madrid Protocol registrations.

Section 8 states:

" (a) Each registration shall remain in force for 10 years, except that the registration of any mark shall be cancelled by the director unless the owner of the registration files affidavits [of continued use or excusable non-use] within the following time periods:

(1) Within the one-year period immediately preceding the expiration of six years following the date of registration under this act or the date of the publication under section 12(c)."

Section 8, 15 USC §1058 (emphasis added).

The TTAB concluded that the wording of the two sections was intentionally similar and that Section 71 should be applied towards Section 66(a) Madrid Protocol registrations in the same manner as Section 8 is applied towards non-Madrid Protocol registrations. 

Therefore, the TTAB stated that, contrary to SaddleSprings argument, Section 71 of the Trademark Act is clearly not a limitation on cancellation of a Section 66(a) Madrid Protocol registration any more than Section 8 of the act is with respect to non-Madrid Protocol registrations.

The TTAB noted that, if SaddleSprings interpretations of Section 71 were correct, to prohibit the cancellation of Madrid Protocol registrations, except as provided in Section 71 for failure to file maintenance documents, the TTAB would be bound interpret the similar provisions of Section 8 to prohibit cancellation of non-Madrid Protocol registrations except as provided in Section 8. Such interpretations would prohibit the cancellation of any registration on the claims of abandonment, fraud, genericness or prior rights under Section 14 of the Trademark Act, rendering such provisions of the act meaningless. 

To this end, the TTAB stated that both sections (Section 71 and Section 8) of the Trademark Act set out the normal duration or term of registration, but neither section contains language that expressly limits the right of others to petition to cancel registrations under Section 14 of the act during that term. The TTAB noted that the USPTO has long interpreted Section 14 of the act to permit the cancellation of registrations under Section 14, notwithstanding compliance by the registrant with the provisions of Section 8. Accordingly, the court found that Section 71 should clearly also not bar cancellation proceedings under Section 14 (including on the ground of abandonment) against Section 66(a) Madrid Protocol registrations. 

The TTAB further reasoned that trademark rights are maintained in the United States through use in commerce, and that marks registered under Section 66(a) must similarly be used in commerce in the United States to avoid abandonment. An owner of a Section 66(a) registration is subject to the same treatment and conditions as any other registrant, including the potential for cancellation by a third party on the ground of abandonment. On this reasoning, the TTAB denied the respondent’s motion to dismiss.

While the case at hand concerned cancellation specifically based on the theory of abandonment, the TTAB held that cancellation of a Section 66(a) registration may be made on any available ground.

Susan M Natland and Charlene Azema, Knobbe Martens, Irvine

Unlock unlimited access to all WTR content