Thomas C Taylor v. Motor Trend Group, LLC

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

THIS ORDER IS A P.O. Box 1451

PRECEDENT OF THE Alexandria, VA 22313-1451

TTAB General Contact Number: 571-272-8500

General Email: TTABInfo@uspto.gov

WDJ

September 8, 2023

Cancellation No. 92081731

Thomas C Taylor

v.

Motor Trend Group, LLC

Before Bergsman, Shaw, and Coggins,

Administrative Trademark Judges.

By the Board:

A registration issued under Section 1 of the Trademark Act of 1946, as amended,

15 U.S.C. § 1051, remains in force for ten years, provided that the owner files an

affidavit or declaration of use or excusable nonuse under Section 8 of the Act, 15

U.S.C. § 1058 (Section 8 declaration) between the fifth and sixth anniversary (or

within a six-month grace period from the sixth anniversary) of the registration date.

The registration may then be renewed for periods of ten years from the end of the

expiring period by filing a Section 8 declaration and an application for renewal under

Section 9 of the Trademark Act (combined Sections 8 and 9 declaration). 15 U.S.C. §§

1058 and 1059; 37 C.F.R. § 2.181(a). If no combined Sections 8 and 9 declaration is

filed within the year before the end of every ten-year period after the date of

Cancellation No. 92081731

registration, the registration expires and will be cancelled. See 15 U.S.C. §§ 1058 and

1059; Trademark Rule 2.160(a)(2), 37 C.F.R. § 2.160(a)(2).

There is, however, a six-month grace period after the expiration of the ten-year

period for which a registration was issued or renewed in which a registrant may file

a combined Sections 8 and 9 declaration. See 15 U.S.C. §§ 1058(a)(3) and 1059(a);

Trademark Rules 2.160(a)(3) and 2.182, 37 C.F.R. §§ 2.160(a)(3) and 2.182. The effect

of the statutory grace period is to allow additional time for the filing of the required

registration maintenance documents without a lapse in the registration. Because of

this sixth-month grace period, the USPTO generally waits until 10 days after the

expiration of that grace period before updating its records to show that the

registration is cancelled or expired. See TRADEMARK MANUAL OF EXAMINING

PROCEDURE (TMEP) §§ 716.02(e) and 1611 (July 2022). The grace period, however,

does not have a bearing on the expiration date of the registration if no combined

Sections 8 and 9 declaration is filed within the grace period.

Registration No. 2638676, owned by Motor Trend Group, LLC (Respondent),

issued on the Principal Register on October 22, 2002, based on an application under

Section 1(a) of the Act, and was due for its second combined Sections 8 and 9

declaration by October 22, 2022.1 The present petition for cancellation was filed

against Registration No. 2638676 on March 1, 2023, a date after the October 22, 2022,

renewal deadline, but prior to the expiration of the sixth-month grace period (here,

1 Registration No. 2638676 was previously renewed by a combined Sections 8 and 9

declaration filed October 22, 2012.

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Cancellation No. 92081731

until April 22, 2023). Inasmuch as USPTO records did not show on March 1, 2023,

that the registration was cancelled or expired, the Board instituted the cancellation

proceeding against the registration. Thereafter, in accordance with Office policy and

because Respondent did not file a combined Sections 8 and 9 declaration during the

grace period, the USPTO’s automated records were updated on May 5, 2023, to

indicate that the registration expired and was cancelled.

Trademark Rule 2.134, 37 C.F.R. § 2.134, provides in part:

(a) 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.

(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 . . . of the Act of 1946, or has failed to renew its involved

registration under section 9 of the Act of 1946, . . . an order may be issued

allowing respondent . . . [time] 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.

The purpose of Rule 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 Section 8 affidavit

or Section 9 renewal (or in the case of a Section 66(a) registration, a Section 71

affidavit or Section 70 renewal), from being able to moot the proceeding, and avoid

judgment, by deliberately failing to file the required affidavits or renewal

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Cancellation No. 92081731

applications. Orange Bang, Inc. v. Olé Mexican Foods, Inc., 116 USPQ2d 1102, 1109

(TTAB 2015). See also TRADEMARK APPLICATIONS AND EXAMINATION PROCEEDINGS;

TRADEMARK INTERFERENCE, CONCURRENT USE, OPPOSITION AND CANCELLATION

PROCEEDINGS; TRADEMARK POST-REGISTRATION PROCEEDINGS, 48 Fed. Reg. 23126

(May 23, 1983) (“Section 2.134(b) is added to avoid situations where a respondent in

a cancellation proceeding may moot the case and avoid judgment because of the

fortuitous circumstance that his registration happens to reach its sixth anniversary

or [tenth] anniversary while a proceeding is pending and the respondent exploits this

situation by simply failing to file an affidavit under section 8 of the Act or a renewal

application under section 9 of the Act.”).

On May 11, 2023, two months after the cancellation proceeding was instituted (on

March 1, 2023), and six days after the USPTO’s automated records were updated (on

May 5, 2023) to indicate that the registration expired and was cancelled, the Board

issued an order under Trademark Rule 2.134(b) for Respondent to show cause why

its failure to renew the involved registration should not be deemed 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 Trademark

Rule 2.134(a).2 In response to the Board’s order, Respondent requests that the Board

2 12 TTABVUE. In this order, the Board cites to the proceeding record by the TTABVUE

docket entry number and TTABVUE page number, in accordance with the guidance provided

in TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) §§ 106.03, 702.05

and 801.01 (2023). Specifically, the number preceding TTABVUE corresponds to the docket

entry number, and any numbers following TTABVUE refer to the page numbers of the docket

entry where the cited materials appear.

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Cancellation No. 92081731

dismiss the proceeding without prejudice as moot.3 Petitioner, however, opposes the

request and argues that dismissal is premature.4

While Trademark Act Sections 8(a)(3) and 9(a) provide for a six-month grace

period in which to file the respective declaration of use and renewal application, the

date of expiration of a registration is not based on the expiration of the grace period

or the date on which the USPTO takes the ministerial action of entering the

expiration and cancellation of the registration into the USPTO trademark database.

Land O’ Lakes, Inc. v. Hugunin, 88 USPQ2d 1957, 1959 (TTAB 2008). Rather, if a

combined Sections 8 and 9 declaration is not filed by the end of the grace period, a

registration expires by operation of law as of the last day of its ten-year term, and no

rights in the registration exist after that date. See id.

As we noted in Orange Bang, Trademark Rule 2.134(b) applies when a subject

registration comes due for a Section 8 affidavit or Section 9 renewal during the course

of the proceeding. See Orange Bang, 116 USPQ2d at 1109. In the present case,

Respondent’s registration was in the renewal grace period (ending April 24, 2023)

when the petition was filed on March 1, 2023. However, because Respondent did not

file a combined Sections 8 and 9 declaration during the grace period, Respondent’s

registration expired by operation of law as of October 22, 2022, a date before

Petitioner filed his petition to cancel. See Land O’ Lakes Inc., 88 USPQ2d at 1959

(“[T]he date of expiration of [a] registration is not dependent on the date the Office

3 14 TTABVUE.

4 15 TTABVUE.

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Cancellation No. 92081731

undertook the ministerial function of entering the cancellation into the USPTO

database.”). In other words, Respondent’s registration expired prior to the filing of

the petition to cancel because there was no renewal filing made within the statutory

period (including the grace period), even though Office records were not updated until

later to show the expiration. As a result, Petitioner’s petition to cancel for

abandonment was filed after the expiration date of the registration and is therefore

moot. Thus, Trademark Rule 2.134(b) is inapplicable to the present case. Under the

circumstances, Petitioner may not obtain judgment against Respondent with a moot

petition for cancellation merely because his petition was filed during the grace period

for renewal.5

Because of this sequence of events, in which the registration expired before the

petition to cancel was filed, we vacate the show cause order and dismiss the petition

to cancel without prejudice as moot.

5 In cases construing Trademark Rule 2.134(b) where judgment was entered on the grounds

of abandonment, the renewal application deadline/use affidavit deadline for the registration

fell after the filing date of the petition to cancel; the petition was not filed during the grace

period. See, e.g., Marshall Field & Co., 11 USPQ2d at 1155 (Registrant’s subject registrations

issued on June 1, 1982, August 24, 1982, and September 7, 1982, so Section 8 affidavits were

due on June 1, 1988, August 24, 1988 and September 7, 1988; Petitioner filed petitions to

cancel on June 3, 1987, and August 3, 1987, registrations were cancelled in 1988 for failure

to file Section 8 affidavits and judgment was entered on the ground of abandonment only

pursuant to Trademark Rule 2.134(b)); C.H. Guenther & Son Inc. v. Whitewing Ranch Co., 8

USPQ2d 1450, 1451-52 (TTAB 1988) (subject mark registered December 26, 1967, petition to

cancel filed October 1986, and registration expired December 27, 1987; failure to renew

subject registration unintentional and motion for an order to show cause under Trademark

Rule 2.134(b) denied); Abraham’s Seed v. John One Ten, 1 USPQ2d 1230, 1231-32 (TTAB

1986) (Registrant’s mark registered November 28, 1978, petition to cancel filed on November

25, 1983, a few days prior to the fifth anniversary of the registration; Board treated

Registrant’s explanation as to why it did not file a Section 8 affidavit as a sufficient showing

of cause to avoid entry of judgment against it pursuant to Trademark Rule 2.134(b)).

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