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Deleting Goods From Registration Subject To Cancellation During Audit May Result In Adverse Judgment – Trademark


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The Trademark Trial & Appeal Board (Board) addressed, for
the first time, whether the deletion of goods and services as a
result of a post-registration audit during a cancellation
proceeding triggers Trademark Rule 2.134 and found that it does.
The Board required the respondent to show cause as to why its
deletion of certain goods from the challenged registration should
not result in an adverse judgment. Ruifei (Shenzhen) Smart
Technology Co., Ltd. v. Shenzhen Chengyan Science and Technology
Co., Ltd.
, Cancellation No. 92077931 (TTAB Jan. 12, 2023)
(Lykos, Lynch, Larkin, ATJ)

Ruifei (Shenzhen) Smart Technology petitioned to cancel a
trademark that was registered to Shenzhen Chengyan Science and
Technology Co., Ltd. (Chengyan) based on abandonment and fraud.
Ruifei thereafter filed a motion for leave to amend its pleadings
and concurrently filed a motion for partial summary judgment.
Finding that Chengyan did not contest the motion for leave to
amend, the Board granted Ruifei’s motion and accepted the
proposed amended petition to cancel. The summary judgment motion,
however, was deferred, pending Chengyan’s response to the
instant order.

After the cancellation proceeding was initiated, Chengyan filed
a Section 8 Declaration of Use in connection with the contested
registration and received a post-registration office action audit.
In response to the audit, Chengyan deleted some of the goods from
the contested registration’s identification.

Ruifei mentioned the amendment to the contested registration in
its motion for partial summary judgment. The Board, having been
made aware of the deletion of goods, held that the amendment raised
new issues requiring Chengyan’s input before it could
consider the motion for partial summary judgment.

Without the written consent of a petitioner, a
respondent’s deletion of goods or services from a
registration subject to a pending cancellation action typically
would result in judgment against the respondent under Trademark
Rule 2.134. The purpose of this rule is to prevent respondents in
cancellation proceedings from avoiding judgment by cancelling
certain goods or services to render the cancellation action

Trademark Rule 2.134(b) provides respondents with the
opportunity to explain why certain goods or services were cancelled
under Section 8 to avoid judgment being entered against them:

After the commencement of a cancellation proceeding, if it comes
to the attention of the . . . Board that the respondent has
permitted its involved registration to be cancelled under section 8
. . . an order may be issued allowing respondent . . . to show
cause why such cancellation . . . should not be deemed to be the
equivalent of a cancellation by request of respondent without the
consent of the adverse party and should not result in entry of
judgment against respondent.

The Board had not previously considered a situation in which
goods or services were deleted as a result of a post-registration
audit but held that the “same concerns . . . and [] policies
underlying Trademark Rule 2.134(b) apply.” Accordingly, the
Board granted Chengyan 20 days to file a response showing why its
deletion of certain goods should not result in judgment against it
on Ruifei’s claim of abandonment as to the deleted goods.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.

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