Precedential No. 20: Cancellation Respondent Can't Undo Voluntary Surrender of Registration

Respondent International Expeditions, rather than answer Christiane E's petition for cancellation on the ground of abandonment, filed a voluntary surrender of the challenged registration without Petitioner’s consent pursuant to Trademark Rule 2.134(a). In such circumstances, the Rule provides that "judgment shall be entered against the respondent." About four months later, and before the Board had acted on the surrender, Expeditions moved to withdraw the surrender. The Board said no dice. Christiane E, LLC v. International Expeditions, Inc., 106 USPQ2d 2042 (TTAB 2013) [precedential].

Although this case presented an issue of first impression for the Board, it found instructive In re Glaxo Group Ltd., 33 USPQ2d 1535 (Comm’r 1993), involving abandonment of an application during ex parte examination. There, when the applicant petitioned to withdraw the abandonment, the Commissioner denied the petition, "noting that such a withdrawal would be allowed 'only in an extraordinary situation' in view of 'the interests of third parties and the administrative requirements of the Office' and determined that '[n]either the applicant's reevaluation of the importance of the mark, nor the fact that the petition was filed before the Office had formally processed the express abandonment is deemed to be an extraordinary situation.'"

The Board found that the principles underlying Glaxo applied here as well. Expeditions voluntarily relinquished an interest and that relinquishment became part of the public record available for inspection by the public and by employees of the PTO, "some of whom may have relied to their detriment on the filing." Furthermore, the voluntary surrender of the challenged registration during the proceeding "directly implicates the concrete rights of petitioner." The Board saw no reason to apply a less stringent standard than that applied in Glaxo.

Expeditions, in justification of its change-of-mind, stated that "it did not know that Petitioner was … formed by a founder of one of the Registrant's predecessors [and that] Petitioner has hired at least one of the Registrant’s employees." That was, the Board observed, not only irrelevant but unsupported by any evidence.

In short, the Board did not find this to be an "extraordinary situation" that would warrant the granting of Expeditions' request to withdraw its surrender.

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Text Copyright John L. Welch 2013.

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