[E-trademarks] Relation Back

[reidl at sbcglobal.net]

That’s an excellent question.

 

I think the Plaintiff could file a cancellation petition but not on 2 (d) grounds.  The Board would likely view 15 USCS § 1064 as quasi-jurisdictional because it specifically refers to a “petition to cancel a registration,” which is a Board proceeding not a Federal Court action. If the 2 (d)  petition was filed after the five year period, the Board could not hear it.  The Federal action should be irrelevant in the analysis.

 

Remember, there is no independent cause of action in Federal Court for cancellation; it results from the Court’s authority to cancel registrations “in any action” under 15 USC § 1119.  

 

Paul

 

 

Paul W. Reidl

Dickenson, Peatman & Fogarty

1455 1st St #301

Napa, CA 94559

707-261-7010 x 7210

 <mailto:preidl at dpf-law.com> preidl at dpf-law.com

@TMGuy

 

 

 

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Marc Randazza via E-trademarks
Sent: Saturday, February 3, 2024 8:34 AM
To: e-trademarks <e-trademarks at oppedahl-lists.com>
Cc: Marc Randazza <mjr at randazza.com>
Subject: [E-trademarks] Relation Back

 

Grounds on which cancellation action may be brought under 15 USCS § 1064 are limited for registration that has been in existence for five years.

 

Plaintiff files infringement and cancellation action within the five year period in district court.  

 

District court dismisses claim with leave to amend.  

 

Five year period has run.  

 

Can Plaintiff file just the cancellation proceeding at the TTAB?  It is outside the 5 year period, but would the district court action be a proper event to relate back to, or does the TTAB start the clock ticking today?  

-- 

______________________________________

Marc John Randazza, JD, MAMC, LLM* | Randazza Legal Group
4974 South Rainbow Boulevard, Suite 100, Las Vegas, NV 89118 
30 Western Avenue, Gloucester, MA 01930
2 S Biscayne Boulevard, Suite 2680, Miami, FL 33131
Tel: 702-420-2001 | Email:  <mailto:mjr at randazza.com> mjr at randazza.com 
Firm Offices - Las Vegas | Miami | New England
______________________________________

* Licensed to practice law in Arizona, California, Florida, Massachusetts, and Nevada 

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