In SaddleSprings, Inc. v. Mad Croc Brands, Inc., the key litigated issue before the Trademark Trial and Appeal Board (TTAB) was whether abandonment may be asserted as a ground for cancelling a US trademark registration that is based on the extension of protection under Section 66(a) of the Lanham Act to an underlying valid and subsisting international registration under the Madrid Protocol.

Mad Croc Brands, Inc., the respondent in this cancellation proceeding, owns a US registration under Section 66(a) of the Lanham Act (15 U.S.C. § 1141f(a)), for the mark "CROC-TAIL" for various alcoholic and non-alcoholic beverages. The petitioner, SaddleSprings, Inc. filed with the TTAB a petition for cancellation alleging that the USPTO examiner refused to register its pending intent-to-use application to register "CROCTAIL" for wine and spirits based on Mad Croc Brands' existing US registration. The asserted grounds for cancellation were that Mad Croc Brands had abandoned its mark in the US either because it never used the mark in commerce or ceased using the mark in commerce for at least three consecutive years.

In response, Mad Croc Brands filed a motion to dismiss the petition under FRCP 12(b)(6) for failure to state a claim. It argued that its registration was shielded against cancellation by Section 71 of the Lanham Act (15 U.S.C. § 1141k), which provides that a Section 66(a) US trademark registration (an "extension of protection") issued to the holder of an international trademark registration remains in force for the term of the underlying international registration.

Mad Croc Brands claimed that the petitioner's abandonment allegations were insufficient to plead a case for the cancellation of a Section 66(a) registration without facts alleging the invalidity of the international registration or the registrant's failure to file an affidavit of use under Section 71.

In its September 25, 2012 decision, the TTAB denied Mad Croc Brands' motion to dismiss SaddleSprings' petition for cancellation, ruling that Section 69(b) of the Lanham Act (15 U.S.C. § 1141i(b)) makes clear that a US registration under Section 66(a) has the same effect as a registration on the Principal Register and is subject, therefore, to the same grounds for cancellation as registrations issued under Section 1 or Section 44(e) of the Lanham Act. The TTAB reasoned that because the Lanham Act requires that trademark rights can only be maintained by bona fide use in commerce, a Section 66(a) registrant must use the registered mark in commerce to avoid abandonment, which is an express ground for cancellation under Section 14 (15 U.S.C. § 1064). The TTAB ruled, therefore, that in the absence of justifiable non-use, Section 66(a) registrations of marks that have never been used or whose use has been discontinued without intent to resume, may be cancelled for abandonment even if the international registration remains valid and subsisting.

Explaining its reasoning, the TTAB stated that there was no support in the text of Section 71 or the Lanham Act's logic or structure to support the respondent's argument that cancellation of Section 66(a) registrations is limited or precluded by the continued existence of the international registration upon which the Section 66(a) registration is based. The TTAB further noted that its statutory interpretation was consistent with Article 5(6) of the Madrid Protocol, which expressly acknowledges that a request for extension of protection may be subject to cancellation.

This TTAB decision counsels that the owner of an international trademark registration who obtains Section 66(a) registration of its mark should be prepared to meet the Lanham Act's use in commerce requirements or show that its failure to do so is justifiable. Parties failing to meet these or other Lanham Act requirements risk the cancellation of their Section 66(a) registrations for abandonment or other applicable grounds under Section 14 (15 U.S.C. § 1064).