Precedential No. 20: TTAB Says Partial Cancellation for Abandonment Governed by Section 14, not Section 18
In this procedural skirmish, Petitioner J&J moved to dismiss Applicant's OsO's counterclaim for partial cancellation of a J&J registration on the ground of abandonment as to some of the identified goods. Applicant invoked Section 18 in its counterclaim; J&J argued that the counterclaim lacked the necessary allegation that the cancellation would avoid a likelihood of confusion. The Board ruled that Section 18 does not apply at all, and that this "straightforward" counterclaim for partial abandonment falls under Section 14, where no such allegation of avoidance is needed. Johnson & Johnson and Roc International S.A.R.L. v. Obschestvo s Ogranitchennoy; Otvetstvennostiu WDS, 104 USPQ2d 2037 (TTAB 2012) [precedential].
The Board concluded that the parties missed the real issue because "the counterclaim of abandonment is sufficient without reference to Section 18." A counterclaim for partial abandonment "does not require any reference to avoidance of a likelihood of confusion." Such an allegation is needed only when the claim seeks to modify or restrict the identification of goods or services, and not when, as here, a party seeks to have discrete goods or services deleted on a theory of abandonment.
[W]hile Section 18 allows the Board to consider claims it could not entertain in an opposition under Section 13 or a cancellation under Section 14, for example, a restriction in a concurrent use case, or the entry of a modification to an identification of goods where the modification would avoid a likelihood of confusion, it does not change the statutory basis for cancellation where a valid ground for cancellation exists, such as a partial abandonment under Section 14, as is the case here.
And so the Board denied J&J's motion to dismiss the counterclaim.
TTABlog comment: The requirement that a party seeking a modification or restriction of a registration under Section 18 must allege that avoidance of a likelihood of confusion will result, stems from the TTAB's decision in Eurostar, Inc. v. "Euro-Star" Reitmoden GmbH, 34 USPQ2d 1266, 1271 n.3 (TTAB 1994).
Note that cancellation of all or part of a registration under Section 14 on the ground of abandonment requires both proof of both non-use and an intent not to resume use. A Section 18 claim for restriction or modification of a registration does not have to meet those requirements, but it does have to meet the "avoidance of a likelihood of confusion" requirement.
Text Copyright John L. Welch 2012.