In a precedential decision, the Trademark Trial and Appeal Board (“TTAB”) held that the filing of a cancellation petition before the five-year anniversary mark of a registration tolls Trademark Act Section 14 for purposes of adding claims to a proceeding. Ashland Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp., Cancellation No. 92057294, 2016 TTAB LEXIS 219 (T.T.A.B. June 7, 2016) [precedential].

On June 17 and June 24, 2008, Sunpoint International Group USA Corporation (“Sunpoint”) received two registrations for the mark MAXVOLINE. On June 6, 2013, less than five years after the issuance of Sunpoint’s registrations, Ashland Licensing & Intellectual Property LLC (“Ashland”) petitioned to cancel these two registrations for likelihood of confusion and abandonment. Following Ashland’s petition, discovery took place. On January 30, 2015, seven years after Sunpoint’s registrations were issued, Ashland filed a motion to amend its petition in order to add a claim of non-use. The TTAB was asked to determine whether Ashland’s non-use claim was timely under Section 14 of the Trademark Act.

Section 14 of the Trademark Act allows parties to petition the TTAB to seek cancellation of a registration on the basis that they will be damaged if the registration is allowed to stand. Prior to the five-year anniversary mark of a registration, a party may plead any ground as the basis for its petition to cancel. If a petition to cancel is filed after the fifth anniversary, a party is restricted to certain grounds. Section 14 lists the possible grounds for cancellation after the five-year anniversary mark, which include: (1) abandonment; (2) fraud; (3) non-use; and (4) misrepresentation.

The TTAB relied on past precedent by the Court of Customs and Patent Appeals (“CCPA”) to determine whether Ashland’s non-use claim was timely under Section 14. The TTAB found that as long as the cancellation proceeding commences within five years of the date of registration, the five-year limit under Section 14 of the Trademark Act tolls at the filing of the cancellation proceeding for purposes of amending the petition to include new claims. Specifically, the TTAB looked to a 1966 case where the CCPA allowed a cancellation counterclaim brought after the five-year period under Section 14 because the proceeding began before the fifth anniversary of the registration.

Although the CCPA case involved a counterclaim, the TTAB determined that the CCPA’s reasoning was applicable to new claims. The TTAB found that: (1) TTAB proceedings are unique; (2) the TTAB is not bound by case law defining the application of statutes of limitations; and (3) the Federal Rules of Civil Procedure are not applicable to amendment pleadings brought in TTAB proceedings pursuant to Section 14 of the Trademark Act. Further, the TTAB recognized that this new rule has the potential to prevent foot-dragging in discovery. By extending the five-year limit, Plaintiffs will no longer be barred from bringing additional claims due to discovery delays.

Ultimately, the TTAB held that Ashland learned of additional grounds for cancellation during discovery and acted without undue delay in bringing forth a new claim. Therefore, Ashland was granted leave to amend its petition to add the non-use claim.

Takeaway: If your petition to cancel a registration is filed within the five-year anniversary mark of a registration, the filing should toll the five-year window set forth in Section 14 of the Trademark Act, 15 U.S.C. § 1064, for purposes of adding a new claim.


*Meghan Mahder is a law clerk in Sheppard Mullin’s New York office.