The TTAB’s Periodic Reminder that Deadlines Matter

In a decision earlier this year, the Trademark Trial and Appeal Board (“Board”) dismissed as moot a cancellation proceeding filed by Men’s Wearhouse, LLC against WKND NYC LLC for the mark

(hereinafter, “MW MRWKND”) because Men’s Wearhouse filed the cancellation proceeding after MW MRWKND was already cancelled by operation of law for lack of a Section 8 declaration. Men’s Wearhouse, LLC v. WKND NYC LLC, 2024 TTAB LEXIS 9 (TTAB Jan. 16, 2024). The registration for MW MRWKND issued on March 14, 2017. A Section 8 declaration is due “[w]ithin the 1-year period immediately preceding the expiration of 6 years following the date of registration,” unless it is filed in the 6-month grace period immediately following the 6-year anniversary of the registration. Therefore, the Section 8 declaration was due by March 14, 2023, with an extension to September 14, 2023 for the 6-month grace period.

Men’s Wearhouse filed the cancellation proceeding on March 15, 2023, one day after the 6-year anniversary of the registration, but well before the expiration of the grace period. WKND NYC failed to file a Section 8 declaration during the grace period. At the time of the filing of the cancellation proceeding and until approximately 10 days after the grace period concluded, the USPTO’s records did not reflect that WKND NYC was cancelled, which is why the Board instituted the proceeding. The USPTO’s records were updated on September 29, 2023 to reflect the cancellation causing the Board to issue an order allowing Respondent “to show cause why … cancellation [of its registration under Section 8] 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 as provided by Trademark Rule 2.134.” WKND NYC responded to the Order, explaining the failure to file was a result of “inadvertence or mistake” and providing the circumstances of the inadvertence and mistake. The question for the Board was whether its order requesting WKND NYC to show cause was controlling or whether the failure to file a Section 8 declaration was determinative.

The Board explained that “it is well settled that the deadline for filing a Section 8 declaration is statutory and cannot be waived.” Therefore, even though the Board requested WKND NYC to show cause, there was nothing WKND NYC could do or say that could have revived its registration. In fact, by not filing a Section 8 declaration by the end of the 6-month grace period, and regardless of what the USPTO records showed, the registration for MW MRWKND was cancelled on March 14, 2023. Given that Men’s Wearhouse filed the cancellation proceeding on March 15, 2023, it had filed to cancel a registration that was already cancelled. Therefore, the cancellation proceeding was dismissed without prejudice as moot. This serves as another reminder that both mark owners and potential challengers need to pay very close attention to relevant deadlines.