Don’t Do It Unless You Mean It — Voluntary Surrender of a Trademark Registration is Irreversible

Steven A. Abreu

By Steven Abreu. A member of our Trademark Practice Group

October 2013 IP Update

Think twice before filing a voluntary surrender of a US trademark registration or expressly abandoning an application, because, like the decision to burn a bridge, the choice is irreversible. Registrant International Expeditions Inc. found this out the hard way as chronicled in the recent precedential Trademark Trial and Appeal Board (TTAB) decision, Christiane E LLC v International Expeditions Inc. (Cancellation No 92055645, May 24, 2013).

A cancellation petition was filed by Christiane E LLC against International Expedition’s registration for the mark INTRAV on May 22, 2012. Rather than file an answer, the registrant voluntarily surrendered its registration for cancellation on June 29, 2012. Nearly four months later, but before the TTAB had taken action on the surrender, new counsel made an appearance on the registrant’s behalf and filed motions for leave to file a late answer and to withdraw the voluntary surrender.

Whether or not to allow a party in an inter partes proceeding to withdraw a voluntary surrender of its registration prior to official action on the surrender was an issue of first impression at the TTAB. However, the TTAB took some guidance from the In re Glaxo Group Ltd decision from 1993 which held that only in an “extraordinary situation” could a withdrawal of an express abandonment of an application be allowed in an ex parte proceeding (In re Glaxo Group Ltd (33 USPQ2d 1535 (CCPA 1993))).

Three reasons were given for the decision in Glaxo:

  1. third parties have a vested interest in relying on an express abandonment in planning their own prosecution strategy;
  2. administrative requirements of the Trademark Office are implicated by withdrawing an abandonment; and
  3. trademark examiners must be able to rely on the express abandonment or voluntary surrender of potentially blocking pending applications and registrations.

Continuing the logic in Glaxo, the TTAB agreed that once a party has expressly and voluntarily relinquished an interest, members of the public and employees of the Trademark Office may have relied on the filing to their detriment. Further, the TTAB felt that such reliance should be protected absent an extraordinary situation.

In the current case, the registrant’s two cited reasons for withdrawing their voluntary surrender were at the time of the surrender it did not know that the petitioner, Christiane E LLC, was formed by a founder of one of the registrant’s predecessors, and that the petitioner had hired away one of the registrant’s employees. The TTAB found this anecdotal evidence irrelevant and unpersuasive.

It remains to be seen what would qualify as an extraordinary situation. Perhaps the filing of the voluntary surrender by mistake – due to typographical errors in the withdrawal – would suffice.

Clients can and do change their minds. As the withdrawal of one’s registration (and in this case the entry of judgment against the registrant with prejudice) is an important and final action, it should not be done lightly. Thus, it is incumbent on trademark counsel to advise clients that voluntary surrender of one’s registration or an express abandonment of an application cannot be undone, and the decision to do so should only be taken after a thorough contemplation of the reasons and frank discussion of the irreversible consequences.

 

This article first appeared on WTR Daily, part of World Trademark Review, in June 2013. For further information, please go to www.worldtrademarkreview.com.