The opinion
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
THIS OPINION 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
mbm
April 25, 2024
Cancellation No. 92083267
Retrobrands America LLC
v.
Molson Coors Beverage Company USA LLC1
Before Lynch, Acting Deputy Chief Administrative Trademark Judge,
and Kuhlke and Shaw, Administrative Trademark Judges.
By the Board:
This proceeding now comes before the Board for consideration of Respondent’s
motion (filed January 25, 2024) to dismiss the petition to cancel without prejudice as
moot based on Respondent’s failure to file a declaration of continued use or excusable
nonuse under Section 8 of the Trademark Act, 15 U.S.C. § 1058(a)(1) (hereinafter
“Section 8 declaration”) and to suspend proceedings pending disposition of the motion
to dismiss. The motion is fully briefed.
1Respondent’s change of correspondence address, filed December 26, 2023, is noted. 9
TTABVUE.
Citations to the record or briefs in this order include citations to the publicly available
documents on the Board’s electronic docketing system, TTABVUE. The number preceding
“TTABVUE” corresponds to the docket entry number; the number(s) following “TTABVUE”
refer to the page number(s) of that particular docket entry, if applicable.
Cancellation No. 92083267
The owner of a registration issued under Trademark Act Section 1, 15 U.S.C.
§ 1051, is required to file a Section 8 declaration in the year immediately preceding
the sixth-year anniversary of the date of registration. 15 U.S.C. § 1058(a)(1); see also
Trademark Rule 2.160(a)(1)(i), 37 C.F.R. § 2.160(a)(1)(i). Trademark Act Section
8(a)(3) provides that the Section 8 declaration may also be filed and considered timely
within a six-month grace period immediately following expiration of the six-year
deadline upon payment of an additional fee. 15 U.S.C. § 1058(a)(3); see also
Trademark Rule 2.160(a)(3), 37 C.F.R. § 2.160(a)(3). Where no Section 8 declaration
is timely filed, “a registration expires by operation of law as of the last day of its [sixth
year following registration], and no rights in the registration exist after that date.”
Men’s Wearhouse, LLC v. WKND NYC LLC, 2024 USPQ2d 86, at *2 (TTAB 2024)
(citing Taylor v. Motor Trend Grp., LLC, 2023 USPQ2d 1051, at *2 (TTAB 2023)).
Therefore, where a petition to cancel is filed during the six-month grace period, and
the respondent ultimately fails to timely file a Section 8 declaration by the end of the
grace period, judgment cannot be entered against the respondent based on such
failure, because the registration is cancelled by operation of law prior to the filing
date of the petition to cancel. Id. at *3. Under such circumstances, the petition to
cancel is dismissed as moot. Id.
Here, Respondent’s involved Registration No. 5272216 issued on the Principal
Register on August 22, 2017, under Trademark Act Section 1, 15 U.S.C. § 1051. The
Section 8 declaration was due by August 22, 2023. See 15 U.S.C. § 1058(a)(1); see also
Trademark Rule 2.160(a)(1)(i), 37 C.F.R. § 2.160(a)(1)(i). Respondent did not file its
2
Cancellation No. 92083267
Section 8 declaration by August 22, 2023. The six-month grace period permitted
Respondent to file the declaration on or before February 22, 2024. See 15 U.S.C.
§ 1058(a)(3); see also Trademark Rule 2.160(a)(3), 37 C.F.R. § 2.160(a)(3).
On September 21, 2023, Petitioner filed a petition to cancel Respondent’s involved
registration on the sole ground of abandonment. Thus, the petition to cancel was filed
after the deadline for filing the Section 8 declaration, but prior to the expiration of
the six-month grace period. Respondent filed its motion to dismiss the petition to
cancel as moot on January 25, 2024, prior to the expiration of the six-month grace
period. In support of its motion, Respondent argues that, because it does not plan to
file a Section 8 declaration within the six-month grace period, “the registration is
effectively cancelled by operation of law prior to the petition for cancellation ….” 10
TTABVUE 3. Respondent moves, in the alternative, to suspend proceedings pending
the expiration of the six-month grace period and then to dismiss the petition to cancel
as moot after the expiration of the six-month grace period. 12 TTABVUE 4-5.
Petitioner argues that Respondent’s motion is, in effect, an attempt to cancel its
involved registration under Section 7(e) of the Trademark Act, 15 U.S.C. § 1057(e),
without Petitioner’s consent in an attempt to avoid judgment. 11 TTABVUE 2-4.
Petitioner therefore argues that the Board should enter judgment against
Respondent. Id.
When the grace period for filing the Section 8 declaration expires, the registration
is cancelled by operation of law as of the last day of the registration’s sixth year
following registration. Men’s Wearhouse, LLC, 2024 USPQ2d 86, at *1. This applies
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Cancellation No. 92083267
even where the USPTO records may not yet be ministerially updated to reflect the
cancellation of a registration for failure to file a timely Section 8 declaration. 2 When
Respondent filed its motion to dismiss, the six-month grace period had not yet expired
and therefore it was not yet known if the registration would be cancelled by operation
of law as of August 22, 2023. Respondent’s motion to dismiss the proceeding as moot
was therefore premature. Respondent’s assertion that it will not take future action,
i.e., that it will not file a Section 8 declaration prior to the expiration of the six-month
grace period, does not serve to effect cancellation of the registration prior to the
expiration of the grace period. 3 Respondent’s motion to dismiss is denied as
premature.
We do not, however, construe Respondent’s request to dismiss the petition to
cancel as moot as a voluntary surrender of the registration under Section 7(e) of the
Trademark Act, 15 U.S.C. § 1057(e), without Petitioner’s consent. Respondent’s
motion did not seek cancellation of the involved registration, but instead, sought
premature dismissal of the proceeding based on Respondent’s representation that it
would not file a Section 8 declaration prior to the expiration of the grace period.
Petitioner’s request for entry of judgment based on Respondent’s motion is therefore
denied.
2 If the Section 8 declaration is not filed before the expiration of the six -month grace period,
USPTO records are not automatically updated to reflect the cancellation of the registration
for at least ten days to avoid inadvertent cancellation due to a delay in entering a timely filed
Section 8 declaration. Men’s Wearhouse, LLC, 2024 USPQ2d 86, at *1 (citing TRADEMARK
MANUAL OF EXAMINING PROCEDURE (TMEP) § 1611 (Nov. 2023)).
3 In effect, the grace period cannot be waived by a statement of an intent not to f ile a Section
8 declaration prior to the expiration of the grace period.
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Cancellation No. 92083267
Notwithstanding the foregoing, where a petition to cancel has been filed after the
six-year deadline for filing a Section 8 declaration but prior to the expiration of the
six-month grace period, suspension of the proceedings pending expiration of the grace
period may be appropriate. See Trademark Rule 2.117(c), 37 C.F.R. § 2.117(c) (Board
may suspend proceedings sua sponte or upon motion for good cause). Accordingly,
Respondent’s motion is granted to the extent that we consider this case suspended
retroactive to the filing date of Respondent’s motion.
The six-month grace period expired on February 22, 2024, during the pendency of
the motion to dismiss, and Respondent did not file a Section 8 declaration by the
expiration of the grace period. Accordingly, although Respondent’s motion to dismiss
was premature when filed, Respondent’s involved registration is now cancelled by
operation of law, effective as of August 22, 2023, the last day of the registration’s
sixth year following registration. The registration expired by operation of law prior
to the filing of the petition to cancel and the petition to cancel is therefore dismissed
without prejudice as moot.4
4 In light of the above, even if Respondent’s motion to dismiss the petition to cancel had not
been premature, the dismissal of the petition to cancel renders it moot.
5