Christiane E, LLCv.International Expeditions, Inc.

Trademark Trial and Appeal Board

May 24, 2013

No. 92055645 (T.T.A.B. May. 24, 2013)

RK
Mailed: May 24, 2013

Cancellation No. 92055645

Christiane E, LLC

v.

International Expeditions,
Inc.

Before Mermelstein, Ritchie and Wolfson,
Administrative Trademark Judges

By the Board:

This matter comes up on respondent’s motion (filed
October 22, 2012) to withdraw an earlier-filed surrender of
its registration.1 The motion is contested.
A petition seeking cancellation of Registration No.
855,720 on the ground of abandonment was filed on May 22,
2012. The Board issued an institution order on May 23,
2012, wherein respondent’s time to answer was set for July
2, 2012. However, rather than file an answer, on June 29,
2012, respondent, through counsel, filed a voluntary

1 Respondent’s revocation and substitution of counsel (filed
October 22, 2012) is noted and the record herein has been
accordingly updated.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
This Decision is a
Precedent of the TTAB
Cancellation No. 92055645
2

surrender of its registration without petitioner’s consent
pursuant to Trademark Rule 2.134(a).2
On October 22, 2012, and prior to any action taken on
the surrender, respondent, through new counsel, filed a
motion to withdraw the earlier-filed surrender, arguing that
at the time of surrender, it did not know that petitioner
was “formed by a founder of one of the Registrant’s
predecessors” and that petitioner “has hired at least one of
the Registrant’s employees.” Request to Withdraw Voluntary
Surrender, p. 1. Respondent later filed a motion for leave
to file a late answer. Petitioner opposes the request to
withdraw the surrender on the ground that pursuant to the
“unequivocal and mandatory” language of Trademark Rule
2.134, “once a voluntary surrender is filed, and if the
petitioner’s consent is not of record, the Board shall enter
judgment against the registrant.” Petitioner’s Response,
pp. 1-2 (emphasis in original).
Discussion & Decision
While the Board has not had occasion to decide whether
to allow a party, during an inter partes proceeding, to
withdraw a voluntary surrender of its registration prior to

2 Trademark Rule 2.134(a) reads as follows:

After the commencement of a cancellation proceeding, if the
respondent applies for cancellation of the involved registration
under section 7(e) of the Act of 1946 without the written consent
of every adverse party to the proceeding, judgment shall be
entered against the respondent. The written consent of an
Cancellation No. 92055645
3

any official action taken on the surrender, an analogous
situation was presented in In re Glaxo Group Ltd., 33 USPQ2d
1535 (Comm’r 1993), and proves instructive here.
In Glaxo, the applicant directed its counsel to abandon
its application during ex parte examination. Several weeks
later, the applicant decided to reverse course and directed
counsel, via correspondence, to maintain the application.
This change in instructions, however, did not come to
counsel’s attention until after counsel had executed and
filed an express abandonment of the application. On
petition to the Commissioner’s Office, the applicant sought
to withdraw its previously filed abandonment. The
Commissioner’s Office denied the petition, noting that such
a withdrawal would be allowed “only in an extraordinary
situation” in view of “the interests of third parties and
the administrative requirements of the Office” and
determined that “[n]either the applicant’s reevaluation of
the importance of the mark, nor the fact that the petition
was filed before the Office had formally processed the
express abandonment is deemed to be an extraordinary
situation.” Id.
While we recognize that Glaxo involved the abandonment
of an application rather than the surrender of a
registration, we find the underlying considerations that

adverse party may be signed by the adverse party or by the
Cancellation No. 92055645
4

informed the decision in Glaxo to be equally applicable to
the circumstances of this proceeding.
As in Glaxo, respondent relinquished an interest (here,
its registration) and that relinquishment was made expressly
and voluntarily. The relinquishment, when filed, became
part of the public record and therefore available for
inspection by members of the public and by employees of the
Office,3 some of whom may have relied to their detriment on
the filing. Moreover, and in addition to the interests of
the public and the USPTO, the voluntary surrender of
respondent’s registration during this inter partes
proceeding directly implicates the concrete rights of
petitioner. As such, we see no reason to apply a less
stringent standard than that of Glaxo, and respondent has
not suggested an alternative.4
As the basis for its motion to withdraw, respondent
simply claims that “it did not know that Petitioner was …

adverse party’s attorney or other authorized representative.
3 See Trademark Rule 2.27(d).

4 Although not precedential, we are aware of at least one case
in which a registrant requested the withdrawal of an earlier-
filed voluntary surrender of its registration. See, e.g., In re
Platypus Wear, Inc., Registration No. 2971097 (Comm’r 2007) (non-
precedential) (“There is no provision in the Trademark Act or the
Rules of Practice in Trademark cases allowing registrants to
nullify or reverse a voluntarily submitted application to
surrender for cancellation a registration filed pursuant to 15
U.S.C. § 1057(e) and 37 C.F.R. § 2.172. Such a request to
forbear action … would likely [] be granted … only in an
extraordinary situation, given the risk of prejudice to the
rights of third parties.”) (citing In re Glaxo Group Ltd., 33
USPQ2d 1535).
Cancellation No. 92055645
5

formed by a founder of one of the Registrant’s predecessors
[and that] Petitioner has hired at least one of the
Registrant’s employees.” Request to Withdraw Voluntary
Surrender, p. 1. How this information is relevant to this
proceeding and why it should justify relieving respondent of
its decision to surrender its registration are neither
apparent nor explained by respondent. We also point out
that there is no evidence supporting this statement, and
mere attorney statements in briefs or motions are not
evidence. See, e.g., Galen Med. Assocs., Inc. v. U.S., 369
F.3d 1324, 1339 (Fed. Cir. 2004); Peeler v. Miller, 535 F.2d
647, 190 USPQ 117, 123 (CCPA 1976). Thus, on this record,
we do not find respondent’s situation to be so extraordinary
as to warrant a withdrawal of respondent’s surrender of its
registration. Accordingly, respondent’s motion is hereby
DENIED.
Because petitioner’s written consent to the voluntary
surrender is not of record, judgment is hereby entered
against respondent, the petition to cancel is granted, and
Registration No. 855,720 will be cancelled in due course.5
* * *

5 In view thereof, respondent’s motion and amended motion to
file a late answer are moot and will be given no further
consideration.