Time Limit for Adding Claims is Tolled by Commencement of Trademark Cancellation Proceeding: TTAB | Practical Law

Time Limit for Adding Claims is Tolled by Commencement of Trademark Cancellation Proceeding: TTAB | Practical Law

In Ashland Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp., the Trademark Trial and Appeal Board (TTAB) ruled that a five-year limitation for adding claims in a cancellation action is tolled by the commencement of the action.

Time Limit for Adding Claims is Tolled by Commencement of Trademark Cancellation Proceeding: TTAB

by Practical Law Intellectual Property & Technology
Published on 21 Jun 2016 • USA (National/Federal)
In Ashland Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp., the Trademark Trial and Appeal Board (TTAB) ruled that a five-year limitation for adding claims in a cancellation action is tolled by the commencement of the action.
On June 7, 2016, the Trademark Trial and Appeal Board (TTAB) ruled in Ashland Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp. that:
  • The five-year limitations period for asserting claims challenging a trademark registration that begins on the date of the mark's registration is tolled by the commencement of a cancellation proceeding brought within that limitations period.
  • The party seeking cancellation may therefore file additional claims in the proceeding beyond this five-year period.
(Cancellation No. 92057294 (T.T.A.B. 2016).)
Sunpoint International Group USA Corp.'s predecessor received two registrations for the mark MAXVOLINE on June 17 and 24, 2008. Ashland Licensing & Intellectual Property, LLC filed to cancel both registrations for likelihood of confusion and abandonment on June 6, 2013.
Ashland sought to add a claim for nonuse in 2015, seven years after the registration of Sunpoint's MAXVOLINE mark. Ashland asserted that the claim was timely because the five-year time limit in Section 14 of the Trademark Act (15 U.S.C. § 1064) for cancellation claims was tolled by the filing of the TTAB proceeding. Sunpoint asserted that the nonuse claim was time barred because the limitations period began when the trademark registration issued.
The TTAB ruled that the five-year limit tolls at the beginning of the cancellation proceeding, so long as the proceeding commences within five years of the registration's issuance.
In so deciding, the TTAB specially noted a similar case in which the US Court of Customs and Patent Appeals (CCPA) ruled that Section 14 did not bar a cancellation counterclaim filed more than five years after the issuance of the registration in an opposition proceeding, when the proceeding began before the fifth anniversary of the registration (Williamson-Dickie Mfg. Co. v. Mann Overall Co., 359 F.2d 450 (C.C.P.A. 1966)).
The TTAB said it consistently has followed the CCPA ruling and that the ruling was applicable to this case even though it involved a new claim instead of a counterclaim.
The TTAB also found:
  • TTAB proceedings are sui generis and not bound by court case law defining the application of statutes of limitations.
  • The Federal Rules of Civil Procedure are not applicable to the amendment of pleadings in TTAB proceedings.
  • Running the limitations period from the time of registration without tolling for proceedings brought within that period would:
    • discourage early settlement discussions that suspend discovery; and
    • create an incentive for foot-dragging in discovery, because plaintiffs would be barred from bringing additional claims if discovery delays caused proceedings to exceed the five-year limit, even though discovery responses may reveal bases for new claims.
The TTAB therefore ruled that Ashland properly sought to add the new nonuse claim some seven years after the registrations at issue but less than five years after the beginning of Ashland's filing of the cancellation proceeding.