On Summary Judgment, TTAB Dismisses Cancellation Petition Predicated On Respondent's Untimely Section 8 Declaration

The Board dismissed this petition for cancellation on summary judgment, ruling that the USPTO's acceptance of an untimely Section 8 Declaration is not a ground for cancellation. Respondent Direct Impulse missed the deadline to respond to a post-registration office action rejecting its Section 8 Declaration, but the Office then accepted a later, corrected filing well after the renewal grace period had expired. Bonehead Brands, LLC v. Direct Impulse Design, Inc., Cancellation No. 92068333 (February 13, 2019) [not precedential].

Petitioner Bonehead contended that the subject registration was automatically cancelled when Direct Impulse failed to file a proper Section 8 Declaration prior to expiration of the grace period for renewal. The Board, however, ruled that "[a]n allegation that a registrant made an untimely or deficient declaration under Section 8, or that the USPTO should not have renewed a registration, is not an available ground for cancellation under Section 14(3)."

Respondent's 10-year Section 8 Declaration of Use (and its Renewal Application) was due on December 12, 2016. On May 11, 2016, Respondent filed a combined declaration under Sections 8 and 9. On August 2, 2016, the Post Registration branch issued an Office Action accepting the Section 9 portion of the combined filing but rejecting the specimen submitted in support of the Section 8 declaration on the ground that it was a printer's proof and therefore did not show use of the registered mark in commerce. Respondent was give six months to file a substitute specimen and verification, but it did not file a response to this Office Action

On April 3, 2018, and well beyond the six-month renewal grace period that expired on June 12, 2017, the Post Registration Branch issued another Office Action , reiterating its rejection. On April 11, 2018, Bonehead filed its petition to cancel Respondent's registration on the ground of abandonment, based on Respondent's failure to file a timely, acceptable Section 8 declaration. Two days later, on April 13, 2018, Respondent filed a combined Section 8 and 9 declaration with a substitute specimen and verification, which the USPTO accepted on April 17, 2018, issuing a notice of renewal for the involved registration.

Bonehead's petition for cancellation was predicated on the allegation that the registration had been technically cancelled due to Respondent's failure to file a timely response to the August 2, 2016 Office Action or to otherwise file an...