Intellectual Property Law

New Matter SUMMER 2017, Volume 41, Number 3

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.

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