TTAB Decisions and Developments
Jane Shay Wald
Irell & Manella LLP
OK TO ADD NEW CLAIM TO PENDING PETITION TO CANCEL INCONTESTABLE REGISTRATION
Petition to cancel was filed before the subject registration was five years old. After the registration was five years old, the Petition was still pending. Petitioner, owner of the Valvoline trademark, sought to amend the petition to cancel Respondent’s two Maxoline marks to add a new count, non-use of the trademark. Respondent urged that since "non-use" was not one of the Section 14 exceptions to cancel an incontestable trademark registration, the Petitioner could no longer amend the Petition to Cancel. The Board, after a thorough analysis of the case law and public policy, disagreed.