Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 SNUFFER & WATKINS MANAGEMENT, INC.
v.
SNUFFY'S INC.
Cancellation No. 19,104
December 19, 1990
Kenneth R. Glaser for Snuffer & Watkins Management, Inc.
Arthur G. Yeager for Snuffy's Inc.
Before Sams, Rice and Simms
Members
By the Board:
J.D. Sams, J.E. Rice and R.L. Simms
Members, Trademark Trial and Appeal Board
Snuffer & Watkins Management, Inc. filed, on July 25, 1990, a petition to cancel the registration for the mark SNUFFY'S for restaurant and bar services. [FN1] As grounds for the petition for cancellation, petitioner alleges that respondent has made no use of the mark SNUFFY'S outside of Gainesville, Florida and that respondent has abandoned the use of SNUFFY'S outside the geographical area of Gainesville, Florida. Petitioner alleges that since at least as early as 1978, petitioner has used the mark SNUFFER'S for restaurant and bar services and that Registration No. 1,137,688 was cited as a Section 2(d) bar to the registration of petitioner's application for registration. Petitioner seeks the cancellation of Registration No. 1,137,688 with respect to the geographical area outside Gainesville, Florida.
Respondent filed, on October 25, 1990, a motion to dismiss the petition for cancellation under Fed.R.Civ.P. 12(b)(6) on the grounds that the petition for cancellation fails to state a claim upon which relief can be granted. Respondent argues, in essence, that a registration may not be geographically restricted except in the context of a concurrent use proceeding.
In response to the motion to dismiss, petitioner argues that the amendment to Section 18 in the Trademark Law Revision Act of 1988, effective November 16, 1989, grants the Board the authority to partially cancel a registration and specifically overrules Selfway, Inc. v. Travelers Petroleum, Inc., 579 F.2d 75, 198 USPQ 271 (CCPA1978), aff'g 195 USPQ 578 (TTAB1977).
Respondent's motion to dismiss the petition for cancellation is well taken. Section of 18 of the Lanham Act (15 U.S.C. 1068), as amended by the Trademark Law Revision Act of 1988, spells out the Commissioner's authority, exercised by the Trademark Trial and Appeal Board, in inter partes cases. That section, as amended, provides as follows:
In such proceedings [interference, opposition to registration, application to register as a lawful concurrent user, or application to cancel the registration of a mark] the Commissioner may refuse to register the opposed mark, may cancel the registration, in whole or in part, may modify the application or registration by limiting the goods or services specified therein, may otherwise restrict or rectify with respect to the register the registration of a registered mark, may refuse to register any of all of several interfering marks, or may register the mark or marks for the person or persons entitled thereto, as the rights of the parties hereunder may be established in the proceedings...
*2 In spite of the broad language of Section 18, the Commissioner has elected to exercise his authority to geographically restrict a registration only in the context of a concurrent use proceeding. Trademark Rule 2.133(c), amended effective November 16, 1989, provides that geographic limitations will be considered and determined only in the context of a concurrent use proceeding. Accordingly, an allegation of abandonment in a specific geographic location is an insufficient pleading in a cancellation proceeding. See also Trademark Rule 2.99(h).
In view thereof, respondent's motion to dismiss the petition for cancellation is granted.
The petition for cancellation is dismissed without prejudice.
J. D. Sams
J. E. Rice
R. L. Simms
Members, Trademark Trial and Appeal Board
FN1. Registration No. 1,137,688, registered on July 8, 1980. A Section 8 affidavit was accepted and a Section 15 affidavit was acknowledged.