The Trademark Trial and Appeal Board (“TTAB”) in the U.S. Patent and Trademark Office (“USPTO”) held that a voluntary surrender of a federal trademark registration cannot be withdrawn absent an extraordinary situation. Christiane E, LLC v. International Expeditions, Inc., Cancellation No. 92055645 (TTAB May 24, 2013) (available here). Petitioner Christiane E, LLC (“Christiane”) sought cancellation of Respondent International Expeditions, Inc.’s (“IE”) federally registered trademark on the ground of abandonment. IE filed a voluntary surrender of its registration without Christiane’s consent. Prior to any action taken on the surrender, IE obtained new counsel and filed a motion to withdraw the earlier-filed voluntary surrender. Christiane opposed the request to withdraw the surrender, arguing that based on the Trademark Rule 2.134, once IE filed a voluntary surrender without Christiane’s consent, the TTAB had to enter a judgment against the IE.
The TTAB had never considered this issue in an earlier case, making this a precedential decision. The TTAB examined the interests to the public and the USPTO. IE filed the voluntary surrender, which “became part of the public record and therefore available for inspection by members of the public and by employees of the [USPTO], some of whom may have relied to their detriment on the filing.” Christiane, Slip Op. P. 4. In addition to this factor, the TTAB noted that the IE’s voluntary relinquishment of rights implicated the concrete rights of Christiane. Finding nothing extraordinary warranting the withdrawal of the voluntary surrender, the TTAB entered a judgment against IE and cancelled the IE’s trademark registration.