Trademark Trial and Appeal Board of the U.S.P.T.O., Decision of 25 September 2012, Cancellation No. 92055493, SaddleSprings, Inc. v. Mad Croc Brands, Inc.
The "use in commerce" standard has been applied to abandonment claims for U.S. marks granted based on the Madrid Protocol.
SaddleSprings sought to cancel Mad Croc’s registration for CROC-TAIL & design for beverages by filing cancellation proceedings at the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent Trademark Office (U.S.P.T.O.).
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Mad Croc argued that it had rights to the mark through the end of the term of the international filing unless the Director of the U.S.P.TO. cancelled the registration sooner. SaddleSprings argued that because Mad Croc had not provided any evidence of use in commerce in the United States for at least three years, the mark is presumed to be abandoned in the same manner as any other U.S. trademark.
The TTAB considered "whether abandonment is an available claim with respect to a registration based on [the Madrid Protocol] for which the underlying international registration is valid and subsisting[?]" The Board concluded that abandonment is an available claim against registrations that are based on a Madrid Protocol filing.
This decision is consistent with the importance of use generally in U.S. trademark law. For non-treaty U.S. filings, an applicant must show use prior to the registration of a mark. The owner of the mark must then continue to use the mark or risk abandonment.
As a result of this decision, it is more likely that registrations filed as Madrid Protocol extensions will be challenged on the basis of abandonment – both in cancellation proceedings and in TTAB and court proceedings attempting to enforce such a registration.