United States: Expedited Cancellation Procedures At The TTAB

Recently the Trademark Trial and Appeal Board (the "TTAB") decided TV Azteca, S.A.B. de C.V. v. Jeffrey E. Martin, Can. No. 92068042 (TTAB Dec. 7, 2018) using the expedited cancellation procedure that is the subject of a current pilot program at the TTAB. The rationale for exploring the expedited procedure is to protect the integrity of the US PTO register. In that sense, the expedited cancellation procedure is akin to the "streamlined cancellation proceeding" the TTAB explored a year or two ago (and which we discussed here). Consideration of the streamlined cancellation proceeding is on hold pending exploration of the pilot program for the expedited cancellation procedure.

Unlike the streamlined cancellation proceeding, the TTAB initiates the process for expedited cancellation procedure. To do this, the TTAB identifies cancellation cases that have not concluded in default and in which the only claims are abandonment and/or non-use. Once candidate cases are identified, TTAB board members participate in the parties' discovery conference and encourage the parties to agree to use one of the TTAB's accelerated case resolution ("ACR") procedures.

The TTAB makes ACR procedures available to parties with cases pending before the TTAB who seek a final determination in their matter without the time and expense of a full trial. Parties are urged to discuss the option of ACR procedures during their settlement conference, though they may decide whether to use ACR procedures later, for example after some disclosures and discovery (though the further the parties proceed into discovery, the less time and resources they save through ACR). Key to an ACR proceeding is the parties' stipulation that the TTAB may resolve any genuine issues of material fact in lieu of trial.

In TV Azteca, the parties agreed to exchange initial disclosures and forego formal discovery. In this case, Azteca sought to register MYST for use with entertainment services related to theater productions and variety television shows. Registration was refused because of Mr. Martin's registration for the mark for use with live performances by a musical group. To remove the obstacle to registration of its mark, Azteca sought to cancel Mr. Martin's registration alleging non-use of the mark for at least three years prior to the petition to cancel without intent to resume use.

In an effort to prove abandonment, Azteca focused on a flyer Mr. Martin included in his disclosures promoting a March 25 performance at Pennant East. Azteca produced numerous news articles discussing Pennant East's closure and the fact Pennant East's liquor licenses were not renewed to suggest the March 25 performance must have occurred more than three years prior to the petition filing date because the articles indicated Pennant East had closed by then and the liquor licenses had not been renewed. But the TTAB declined to admit the news articles into evidence because they are hearsay and did not fall within the residual hearsay exception. The TTAB declined to infer that Pennant East closed just because its liquor license had not been renewed. This left Azteca with no proof that Mr. Martin had discontinued use of his mark during the three year period preceding the filing date of the petition.

Although the TTAB expressed sympathy for Azteca's predicament of having to prove a negative (non-use) and recognized that proper inferences may be necessary to enable a plaintiff to succeed in such a claim, it maintained the requirement that inferences be based on proven foundational facts. Here, even with all reasonable inferences available, Azteca could not prove non-use. On top of that, the TTAB noted in a footnote that even if the parties had stipulated to all the evidence in the record, the outcome would have been no different because of an article published close enough to the filing date of the petition to support an inference that Mr. Martin planned to resume use.

TV Azteca highlights the risks of the expedited cancellation procedure, or at least the risks of forfeiting discovery while bearing the burden of proof. Considering how much expediting a procedure depends on removing or reducing discovery (since discovery can take so much time¹), this case may illustrate why relatively few cases have been resolved using expedited cancellation procedures or ACR generally. According to statistics about TTAB filings and performance measures posted by the PTO here, only 19 ACR cases were decided during fiscal year 2018 (up from 17 during the previous fiscal year). It is not clear how many of these were expedited cancellation proceedings. On the other hand, if the circumstances are appropriate (for example, if the parties are able to stipulate to most facts and/or there are not many witnesses), the parties may want to give ACR serious consideration because it could result in meaningful savings. The TTAB statistics indicate that total pendency for ACR trial cases during fiscal year 2018 was 106.3 weeks whereas total pendency for trial cases during the same period was 140.3 weeks. Whether an expedited cancellation procedure (or ACR more generally) is appropriate will depend a lot on the circumstances of each case and should be considered carefully by the parties.


1 Indeed, as the TTAB points out, the further the parties go into discovery, the less likely ACR is to save them time and resources.

The lawyers at Trademarkology provide trademark registration services backed by the experience and service of one of the nation's oldest law firms. Click here to begin the process of protecting your brand name with a federally registered trademark.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions