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January 2010


This article questions why some courts that have already found a federally registered trademark invalid refuse to cancel the registration despite having the authority to do so under § 37 of the Lanham Act. Examination of cases involving judicial cancellations reveals that a failure to assert cancellation as a claim, as opposed to a variety of other methods of requesting cancellation, is the reason courts refuse to exercise their power under § 37 - referred to as the missing-claim rule. This article criticizes the missing-claim rule as illogical and frustrating trademark law's purpose and proposes the missing-claim rule be abolished, that courts should invoke their power under § 37 sua sponte, and that on appeal, a failure to cancel under § 37 when invalidity has been established would be considered a per se abuse of discretion. These proposals complement trademark law's underlying policy, appropriately balance the burdens on the courts and U.S. Patent & Trademark Office, and do not present the typical objections to sua sponte action. In addition, these proposals can be adopted without amending the text of § 37, although an amendment is suggested if the courts refuse to adopt such practices.

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Texas Intellectual Property Law Journal

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