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TTAB Makes Sound Decision from a Bunch of ‘Croc’

In its decision on Sept. 25, 2012, in SaddleSprings Inc. v. Mad Croc Brands, Inc., the Trademark Trial and Appeal Board (correctly) determined that an international trademark registration which served as extended protection in the United States under the Madrid Protocol Implementation Act of 2002 may be the subject of a cancellation proceeding regardless of whether the underlying international registration remains valid and subsisting. The decision resolves a perceived conflict between two provisions of the Trademark Act.

International registration goes toe-to-toe with U.S. trademark rival

On Dec. 15, 2011, SaddleSprings Inc. filed an intent-to-use U.S. trademark application for the mark CROCTAIL for use in connection with “wine and spirits.” Upon review, an examining attorney at the United States Patent and Trademark Office refused registration of this application based on a likelihood of confusion with a prior registration for CROC-TAIL & Design, owned by Mad Croc Brands Inc., covering a variety of beverages including wine and distilled spirits.

In its effort to eliminate this obstacle to registration, SaddleSprings sought to cancel Mad Croc’s trademark registration, arguing that Mad Croc had abandoned its mark by either never using its mark in the U.S. or failing to use its mark in the U.S. for the previous three years. Mad Croc countered that, under Section 71 of the Trademark Act, use did not matter because the continued existence of its underlying international registration insulated the U.S. registration from this type of challenge. As a result, the TTAB found itself chewing on an interesting question: Can a foreign trademark that has extended protection in the U.S. under the Madrid Protocol be the subject of a U.S. cancellation proceeding even if the underlying international registration remains active?

Reconciling two trademark provisions

Mad Croc initially received protection for its trademark in a foreign country. However, due to the United States’ participation in the Madrid Protocol, Mad Croc was able to extend protection of its mark in the U.S. under Section 66(a) of the Trademark Act. Section 71 of the Act provides that such “an extension of protection [in the U.S.] remains in force for the term of the international registration, except that the Director [of the Trademark Office] may cancel the extension if the affidavit required by Section 1141k is not timely filed.” Relying upon this language, Mad Croc argued that the TTAB may not cancel its registration because its international registration was still in force and the Section 1141k deadline had not yet arrived.

SaddleSprings argued that international registrations should not be given preferential treatment over trademarks registered through traditional domestic channels. If the mark, regardless of its origin, has been abandoned, then it is vulnerable to cancellation. In support of its argument, SaddleSprings cited Section 69 of the Trademark Act which states that an “extension of protection shall have the same effect and validity” as a U.S. registration on the Principal Register. In other words, an international registration with extended protection in the U.S. is subject to the same challenges (including abandonment) as any other U.S. trademark registration.

Faced with these seemingly contradictory provisions, the TTAB reconciled the two. It asserted that Section 71 “sets out the normal duration or term of a registration, but [does not contain] language that expressly limits the right of others to petition for cancellation during that term…” In other words, Mad Croc’s reliance on Section 71 is without merit. Section 71 merely defines how long an acceptable international registration remains in force in the U.S. It does not insulate such registrations from traditional cancellation challenges. Consequently, Mad Croc’s Motion to Dismiss was denied and SaddleSprings may proceed with its cancellation action.

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