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The Death of a Trademark Registration Kills All Statutory Evidentiary Presumptions

August 28, 2017Trademark Registration

Picture of Registration Symbol Being Destroyed

The last four posts covered the importance of obtaining a trademark registration by pointing out how difficult it is to prove common law rights in trademark litigation. On the heels of those posts, I decided to write this short post on the importance of not letting your trademark registration lapse or be cancelled. It dovetails nicely because, once the registration is cancelled, the statutory presumptions are extinguished and a trademark owner will find itself back in the same situation discussed in the preceding four posts.

Statutory Presumptions Die with the Registration

When a trademark registration lapses - whether it's because the registrant failed to maintain or renew the registration or because a third party succeeded in cancelling it, the trademark owner loses all statutory evidentiary presumptions that registration had provided. The law is well-established on this point - both by federal courts and the Trademark Trial and Appeal Board:

The statutory evidentiary presumptions attendant to a registration disappear when the registration lapses, including a lapse caused by the failure to file a timely Section 8 affidavit. See Advance Magazine Publ'rs, Inc. v. Norris, 627 F. Supp. 2d 103, 114 n.2 (S.D.N.Y. 2008) (finding in infringement suit that the presumption of validity evaporated upon expiration of registration two years after suit was filed and "affording neither presumptions nor evidentiary advantages to any party"); see also Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 1248 (C.C.P.A. 1973); cf. Patsy's Italian Restaurant, Inc. v. Banas, 658 F.3d 254, 267 (2d Cir. 2011) (noting that cancellation of a federal registration "simply precludes appellants from utilizing the statutory presumptions and other benefits conferred to a mark owner through federal registration."); Action Temp. Servs. v. Labor Force, Inc., 870 F.2d 1563, 1566 & n.9 (Fed. Cir. 1989) (finding that, while "a registration provides constructive notice for all use during the existence of the registration," a "canceled registration does not provide constructive notice of anything," so "[a] canceled registration cannot prevent a party from being a 'lawful user' of a mark when that party's use is subsequent to the cancellation of the federal registration."). In Anderson, a registration applicant sought to overcome an opposition by citing a prior registration that had been "canceled because of a failure to file the appropriate evidence of continued use as required by section 8 of the Trademark Act of 1946, 15 U.S.C. § 1058." 478 F.2d at 1248. The court rejected the argument that the canceled registration still gave the opposer constructive knowledge that the registrant had superior rights based on the lapsed registration, holding instead that "[w]hatever benefits a registration conferred upon [the registrant] were lost by him when he negligently allowed his registration to become canceled." Id.

The Trademark Trials and Appeals Board routinely rejects expired registrations as probative of anything in Board proceedings "other than for what it shows on its face, i.e., that the registration issued." Sunnen Prods. Co. v. Sunex Int'l Inc., 1987 TTAB LEXIS 92, 1 U.S.P.Q.2d 1744, 1746—47 (T.T.A.B. 1987) (precedential); see also Time Warner Entm't Co. v. Jones, 2002 TTAB LEXIS 462, 65 U.S.P.Q.2d 1650, 2002 WL 1628168, at *1 n.6 (T.T.A.B. 2002) (precedential); U.S. Shoe Corp. v. Kiddie Kobbler Ltd., 231 U.S.P.Q. 815, 1986 T.T.A.B. Lexis 19, at *9 n.7 (T.T.A.B. 1986) (precedential); Trademark Trial and [*20] Appeal Board Manual of Procedure ("TBMP") § 704.03(b)(1)(A) & n.24. That includes the presumptions under § 1057(b), which "die with [a] registration" that has lapsed for failure to comply with Section 8. In re William Coden, 2012 TTAB LEXIS 99, 2012 WL 1267928, at *7 (T.T.A.B. March 26, 2012) (nonprecedential). Therefore, "[o]nce a registration has been cancelled under the provisions of Section 8 of the Trademark Act . . . it cannot serve as evidence of any existing rights in the mark." In re Compania Tabacalera Santiaguense, S.A., 1999 TTAB LEXIS 319, 1999 WL 546830, at *3 (T.T.A.B. July 21, 1999) (nonprecedential).

Spin Master, Ltd. v. Zobmondo Entm't, LLC, 2012 U.S. Dist. LEXIS 188512, *17-21 (C.D. Cal. 2012). This may seem obvious, but I'm also setting the stage for my next point below.

The Presumptions Don't Apply When the Registration Was Live Either

One interesting question was raised and answered in Spin Master v. Zobmondo. Even if the statutory presumptions die with the trademark registration when it is cancelled, shouldn't the statutory presumptions apply during the time period between when the registration issued and when it was cancelled? The Central District of California answered that question with an emphatic "no." Spin Master, 2012 U.S. Dist. LEXIS 188512,  at *17-23. Rejecting Spin Master's argument that its cancelled trademark registration created a presumption of validity during the time period before it lapsed, the court explained

When a registration lapses, the "applicant is now in much the same position it would have been had the prior registration never issued, and it makes no difference at all whether its failure to renew the registration was intentional due to applicant's abandonment . . . or the result of mistake or negligence . . . ."

Id. at 21 (citations omitted). It's like it never ever happened and it was all a dream.

The Last Word

OK - so once your trademark registration gets cancelled, you lose all statutory presumptions attendant to a trademark registration. That makes sense intuitively. However, when you think about the consequences of losing those presumptions, it's quite sobering. If you end up in a trademark infringement lawsuit, you'll end up having to go through proving seniority, market penetration, natural zone of expansion, and reputation theory. You won't have that presumption of nationwide constructive use or the constructive priority date as of the date of filing. And it doesn't matter if you had that trademark registration for 5, 10, 15, or 20 years. You're out of luck - especially if you didn't achieve market penetration nationwide while your registration was alive and kicking. Even if the trademark owner starts the whole process over in the hopes of getting another trademark registration, most trademark owners will have lost significant priority rights for the time period between the filing dates of the two registrations (not to mention other statutory presumptions like validity and perhaps other benefits like incontestability under Section 15). That's why it is super important to keep your trademark registration alive if possible.

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