IP Law Daily, TRADEMARK—TTAB: Section 8 declaration deadline was statutory and could not be waived, (Jan 29, 2024)

By Kevin M. Finson, J.D.

A petition to cancel was dismissed as moot because the registration at issue had already been canceled for failure to file a Section 8 declaration within the statutorily prescribed time.

A registrant’s failure to file a Section 8 declaration within the six-month grace period allowed by statute precluded filing belated declaration and mooted a cancellation proceeding filed during the grace period, the Trademark Trial and Appeal Board has held in a precedential opinion. The deadline was statutory and not within the power of the Board to alter (The Men’s Wearhouse, LLC v. WKND NYC LLC, January 16, 2024, By the Board).

WKND NYC LLC (WKND) was the owner of Registration No. 5161723 on the Principal Register, which issued on March 14, 2017. WKND did not file a Section 8 declaration of continued use within the six-month grace period allowed after the six-year anniversary of the registration. After the six-year anniversary, but before the expiration of the grace period, The Men’s Warehouse, LLC (Men’s Warehouse) petitioned to cancel the registration on the ground of abandonment. During the pendency of the petition to cancel, the USPTO’s records were updated to indicate cancellation for failure to file a Section 8 declaration. The Trademark Trial and Appeal Board then issued a show cause order directing WKND to explain why the prior cancellation should not be considered equivalent to the relief sought in the Men’s Warehouse’s cancellation proceeding.

Late-filed Section 8 declaration. WKND argued that its failure to file a Section 8 declaration was the result of inadvertence or mistake related to counsel incorrectly believing the declaration had been filed prior to their engagement. WKND requested that the registration be revived and it be allowed to file a belated Section 8 declaration. The Board held that the deadline to file a Section 8 declaration was statutory and could not be waived. Because the cancellation for failure to file within the six-month grace period was, by operation of law, backdated to the six-year anniversary of the registration, the registration had effectively been canceled before the instant petition to cancel it had been filed.

The Board dismissed Men’s Warehouse’s petition as moot because it was filed against a registration that had already been canceled.

The Case is Cancellation No. 92081842.

Attorneys: Donna F. Schmitt (Armstrong Teasdale LLP) for Men’s Wearhouse, LLC. Patricia M. Flanagan (Fox Rothschild LLP) for WKND NYC LLC.

Companies: Men’s Wearhouse, LLC; WKND NYC LLC

Cases: Trademark USPTO