Shakespeare Company v. Silstar Corporation of America, Incorporated

9 F.3d 1091, 28 U.S.P.Q. 2d (BNA) 1765, 1993 U.S. App. LEXIS 29583, 1993 WL 467498

• Court: Court of Appeals for the Fourth Circuit
• Decided: November 15, 1993
• Docket: 92-2311
• Status: Published

Opinions

OPINION

CHAPMAN, Senior Circuit Judge:

This appeal presents an issue of first impression for this court: whether a district court considering cancellation, pursuant to § 37 of the Lanham Act (15 U.S.C. § 1119 (1988)), of a trademark that has been registered more than five years, and is incontestable pursuant to 15 U.S.C. § 1065 (1988), can order cancellation on the ground that the trademark is found to be functional, even though functionality is not one of the grounds set forth in 15 U.S.C. § 1064. We hold that Congress adopted 15 U.S.C. § 1119 to give the district court power concurrent with, but not in excess of, the Patent and Trademark Review Board and that the district court is also limited by the language of the statutes controlling the Board. We therefore hold that the district court improperly canceled the registration on the ground of functionality because functionality is not one of the statutorily enumerated grounds upon which a trademark registered more than five years may be canceled.

FACTS

Shakespeare, a manufacturer of fishing rods, is located in Columbia, S.C. In 1976 Shakespeare inaugurated its immensely successful line of “Ugly Stik” fishing rods for both salt and fresh water fishing. About 80-90% of these rods, as well as some of Shakespeare’s other rods, feature a section of solid fiberglass near the tip which appears clear or translucent. The “clear tip,” as Shakespeare calls it, is the subject of this litigation.

The clear tip rods are manufactured in a two-stage process, which was perfected in the 1970’s. First, a fiberglass cloth is wrapped around a hollow graphite tube. Second, fiberglass fibers are stretched lengthwise from the handle of the rod to the tip. Some of these fibers extend beyond the end of the graphite tube and form the solid fiberglass tip. This composition represented the culmination of a series of techniques developed by Shakespeare and it resulted in a superior rod that is both lightweight and very strong.

Before Shakespeare began production of the clear tip it had used polyester resin compatible fiberglass in its fishing rods. This type of fiberglass naturally solidifies into a whitish-frosty (not clear) color. In producing the clear tip rods, however, Shakespeare began to use epoxy resin compatible fiberglass because they found it to be the most compatible for use with the graphite tube. This second type of fiberglass solidifies naturally into a clear or translucent col- or. The Ugly Stiks, and other Shakespeare rods using epoxy resin compatible fiberglass, therefore, feature a clear or translucent tip and a darker-colored rod.

On May 5, 1978 Shakespeare filed for registration of Trademark Registration number 1,261,786. That registration states:

[Shakespeare] claims no proprietary right in the configuration of the fishing rod itself as a trademark when it lacks the whitish, translucent tip portion feature. The mark is used by applying it to the goods in that the mark is the color configuration of the fishing rod as shown in the drawing in which the tip portion of the shaft between the tip and the second line guide elements consists of a whitish, translucent material in contrast to the opaque remainder of the shaft.

J.A. at 544.

Initially, the request for registration of the clear tip as a trademark was denied by the United States Patent and Trademark Office (“PTO”), which reasoned that the “mark appears to be in the nature of an ornamental design and, as such, does not serve the purpose of indicating origin of the goods in applicant.” The PTO offered Shakespeare the opportunity to submit evidence that the clear tip was viewed in the marketplace as an indication that Shakespeare was the source of the rod. Shakespeare submitted copies of advertisements and catalogs as evidence that the clear tip had been promoted as a trademark of the company. It also submitted seven identical affidavits of buyers and retailers who testified that the clear tip “automatically” identified the rods as coming from Shakespeare.

The trademark was placed on the Principal Register on December 20, 1983.

On November 13, 1989, after it had been on the register for five years and other conditions had been satisfied, the trademark became “incontestable” pursuant to 15 U.S.C. § 1065 (1988).¹ Incontestability is “conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce.” 15 U.S.C. § 1115(b) (1988).

In July 1990 Silstar Corporation (“Sil-star”), a Korean-owned manufacturer of fishing rods, with its principal place of business in Lexington, South Carolina, introduced a line of fishing rods called the Silstar Power Tip Crystal rods. Shakespeare representatives testified they first became aware of this line through Silstar’s advertisement in the July 1990 issue of Fishing Tackle Retailer. The Silstar rods featured a color combination, with a clear fiberglass section, similar to that of the Shakespeare clear-tip line.

Shakespeare instituted this action July 20, 1990 in the United States District Court for the District of South Carolina, Columbia Division. It asserted three claims against Sil-star: trademark infringement under Section 32(1) of the Lanham Trademark Act of 1946 (“the Lanham Act”), 15 U.S.C. § 1114(1) (1988); unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (West 1982 & Supp.1993); and common law trademark infringement and unfair competition.

Silstar answered and defended on the grounds that its use of the clear tip was a “fair use” under § 1115(b)(4). Silstar also counter-claimed seeking cancellation of Shakespeare’s trademark on the grounds that the mark was both functional and generic.

On July 20, 1990 Shakespeare also filed a motion for a temporary restraining order and for a preliminary injunction against Silstar’s distribution of the Power Tip Crystal rods. These motions were heard by then District Judge Clyde H. Hamilton, who found the motion for TRO moot but granted Shakespeare a preliminary injunction.

After a bench trial March 19-20, 1992, 802 F.Supp. 1386, before Judge Dennis Shedd, the court dissolved the preliminary injunction, ruled in favor of Silstar on each of Shakespeare’s claims, and canceled Shakespeare’s trade-mark on the clear tip.

The District Court’s reasoning may be summarized as follows: that there was no dispute that Shakespeare’s trademark on the clear tip had become “incontestable” pursuant to § 1065; that such status was conclusive evidence of Shakespeare’s ownership of the trademark and its right to control it, pursuant to § 1115(b); that Silstar could defend by proving that its use of the mark was a fair use because the mark was merely descriptive of its product; that Silstar’s use of the clear tip was a fair use because the court found the clear tip was merely descriptive of the contents of the product, namely fiberglass; that Silstar was not using the clear tip as a trademark or in bad faith; and that this determination rendered the trademark merely prima facie evidence of Shakespeare’s right to own and control the clear tip. The court then found Silstar was entitled to raise equitable defenses to the infringement action under § 1115(a).

The court held that an element of a product that is functional is not subject to trademark protection, and that fiberglass was selected to compose the tip because it is the strongest, most practical material for the tip of a fishing rod. It found the clear tip to be functional because its very appearance communicates to the consumer that it is composed of fiberglass. Finding the clear tip to be functional and not intended to communicate a brand of origin, the district court concluded that it was required to cancel the trademark.

The district court’s determination that there was no trademark infringement resulted in the dismissal of the dependent statutory claim for unfair competition, and the common law claims for trademark infringement and unfair competition.

I.

The issue is whether a district court, pursuant to its power under § 1119, can cancel the registration of a trademark on grounds not enumerated in § 1064, namely “functionality,” if the registration is more than five years old.

A.

Federal trademark protection was overhauled and consolidated with the passage of the Trademark Act of 1946 (Lanham Act), 60 Stat. 427, as amended, 15 U.S.C. § 1051 (1988), et seq. It was adopted to establish consistent nationwide protection for trademarks by creating a system of registration, by instituting safeguards for those trademarks registered for a period of time, and by setting forth an administrative process for infringement actions. Park ‘N’ Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 193, 105 S.Ct. 658, 661, 83 L.Ed.2d 582 (1985).

As previously noted, Shakespeare’s trademark on the clear tip was placed on the principal register in 1983, and by the time of this lawsuit it had achieved incontestable status, pursuant to 15 U.S.C. § 1065. A registered trademark becomes incontestable after it has been registered and in continuous use for five years and meets four other requirements.²

Incontestability conferred on the registration is conclusive evidence of its validity and of Shakespeare’s ownership of and exclusive right to use the trademark. 15 U.S.C. § 1115(b).³ This section states that the con-elusive evidence is subject to certain defenses: “... equitable principles, including lach-es, estoppel, and acquiescence are applicable.” Id. “If one of the defenses is established, registration constitutes only prima fa-cie and not conclusive evidence of the owner’s right to exclusive use of the mark.” Park ‘N’ Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 199 n. 6, 105 S.Ct. 658, 664 n. 6, 88 L.Ed.2d 582 (1985).

If a party attacking the validity of a registration seeks cancellation through the Trademark Trial and Appeal Board (“the Board”) it is explicitly limited by §§ 1115 and 1064.⁴ An administrative attack on a registered trademark more than five years after the date of publication of its initial registration, regardless of whether it is incontestable, may only be brought on grounds enumerated under 15 U.S.C. § 1064. Id. Therefore, § 1064 has been described as a kind of statute of limitations for actions seeking cancellation of marks registered for more than five years. 2 J. Thomas McCarthy McCarthy on Trademarks and Unfair Competition § 20.-15[1] at 20-91 (3rd Ed.1992).

In our case, however, Silstar sought cancellation in a responsive pleading in the district court, rather than through the Board. Pursuant to another provision of the Lanham Act, 15 U.S.C. § 1119, the district court is empowered to cancel registrations,⁵ but § 1119 lists no grounds upon which a registration may be canceled and simply states the district “court may determine the right to registration.... ” This raises the issue of whether the district court’s authority to cancel under § 1119 is circumscribed by the same limitations that restrain the Board in an administrative cancellation proceeding.

B.

This is a novel question and we have not found a case that squarely addresses this precise issue. However, the Supreme Court has given some guidance in the only case in which it has discussed § 1119, Park ‘N’ Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985). Though the central issue in Park ‘N’ Fly differs from that of the case at bar, we consider it to be analogous and therefore worthy of consideration.

In Park W Fly Petitioner operated, under the name, Park ‘N’ Fly, a chain of parking lots located in close proximity to airports in Cleveland, Houston, Boston, Memphis and San Francisco. 469 U.S. at 191,105 S.Ct. at 660. Its trademarked name was registered and had attained incontestable status. Id. Respondent operated, under the name Dollar Park and Fly, parking services near the airport in Portland, Oregon. 469 U.S. at 192, 105 S.Ct. at 660. Petitioner brought this infringement action in the United States District Court for the District of Oregon, seeking to permanently enjoin respondent from use of the name Dollar Park and Fly. Id. In its response, respondent, inter alia, sought cancellation, pursuant to § 1119, of petitioner’s trademark on two grounds: that it was a generic term and that it was merely descriptive. Id.

The district court found that the mark was not generic and that an incontéstable mark was not susceptible to challenge on the basis of being merely descriptive. The court granted the permanent injunction against respondent’s use of the phrase “Park and Fly.” Id.

The U.S. Circuit Court of Appeals for the Ninth Circuit reversed, holding that incontestability cannot be used as an offensive weapon in an infringement action. Park ‘N’ Fly, Inc. v. Dollar Park & Fly, Inc., 718 F.2d 327, 331 (9th Cir.1983). The court acknowledged its view was in direct conflict with that of the Seventh Circuit, as expressed in Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366 (7th Cir.), cert. denied, 429 U.S. 830, 97 S.Ct. 91, 50 L.Ed.2d 94 (1976). The circuit court held that in order to enjoin another’s use of a trademark, the holder of even an incontestable mark must show that it would continue to qualify for registration. Park ‘N’ Fly, 718 F.2d at 331. After determining that petitioner’s mark was merely descriptive, the circuit court held that petitioner’s mark would not be entitled to continued registration but for its incontestable status. Id. The court held that “a party can defend against the effect of federal registration by a showing that would suffice to cancel the mark in question were it not incontestable.” Id. The circuit court therefore affirmed the district court’s decision not to cancel the mark but reversed its decision to enjoin respondent from use of the mark. 718 F.2d at 332.

On appeal the Supreme Court recognized the split in the circuits over whether incontestability can be used offensively. Writing for the majority, Justice O’Connor stated that the Lanham Act clearly reflected that Congress contemplated that incontestability would be invoked by a registrant in an infringement action. 469 U.S. at 196,105 S.Ct. at 662.

The incontestability provisions ... provide a means for the registrant to quiet title in the ownership of his mark_ This function of the incontestability provisions would be utterly frustrated if the holder of an incontestable mark could not enjoin infringement by others so long as they established that the mark would not be registrable but for its incontestable status.

469 U.S. at 198, 105 S.Ct. at 663.

The Court held that a district court, entertaining an action for cancellation of a mark, is obliged to consider the limits of the Lan-ham Act.

[T]he power of the courts to cancel registrations and “to otherwise rectify the register,” § 37, 15 U.S.C. § 1119, must be subject to the specific provisions concerning incontestability. In effect, both respondent and the dissent argue that these provisions offer insufficient protection against improper registration of a merely descriptive mark, and therefore the validity of petitioner’s mark may be challenged notwithstanding its incontestable status. Our responsibility, however, is not to evaluate the wisdom of the legislative determinations reflected in the statute, but instead to construe and apply the provisions that Congress enacted.

Park ‘N’ Fly, 469 U.S. at 203, 105 S.Ct. at 666.

If the power of the district court under § 1119 is implicitly constrained by the specific provisions of one subsection of the Lanham Act, § 1115(b), it is reasonable to conclude that it is limited by another related subsection, § 1064. The Court states that § 1064 does limit cancellation of a registration more than five years old, 469 U.S. at 197, 105 S.Ct. at 663, and this would be cancellation pursuant to § 1119 because the Court’s inquiry was rooted in that context.

We are persuaded that the rationale enunciated by Justice O’Connor in Park ‘N’ Fly would apply so as to limit cancellation under § 1119 to the grounds set forth in § 1064. Functionality is not one of such grounds and it may not be used as a basis for cancellation of a registration more than five years old.

We have considered the possibility that functionality invalidates a trademark at any stage of the process, and that registration offers no protection whatsoever to an invalid mark that should never have been registered in the first place. This is the position taken by Justice Stevens in his dissent in Park ‘N’ Fly, 469 U.S. at 206, 105 S.Ct. at 667. Justice Stevens argued that mere descriptiveness, the quality at issue in that case, invalidated the registration, 469 U.S. at 206-07, 105 S.Ct. at 667-68, and that incontestability could not be used as a shield behind which an invalid mark could hide. 469 U.S. at 211,105 S.Ct. at 670. We find these arguments unpersuasive.

Perhaps the provisions of the Lanham Act apply only to valid trademarks, and that a functional trademark is invalid, but it would seem anomalous for Congress to enumerate specific grounds for cancellation for a five-year-old registration, as it has done in § 1064, and not list functionality, if it intended functionality to serve as such a ground. As Justice O’Connor stated, “[o]ur responsibility ... is not to evaluate the wisdom of the legislative determinations reflected in the statute, but instead to construe and apply the provisions that Congress enacted.” 469 U.S. at 203, 105 S.Ct. at 666.

Prior to Park ‘N’ Fly the Eighth Circuit applied the same rule in Wrist-Rocket Manufacturing Co. v. Saunders Archery Co., 516 F.2d 846, 852, (8th Cir.), cert. denied, 423 U.S. 870, 96 S.Ct. 134, 46 L.Ed.2d 100 (1975), and held that the district court was not empowered, under § 1119, to cancel an incontestable trademark on the ground that the original registration was obtained with false statements. 516 F.2d at 852. The court stated that the grounds for removing incontestable status are listed in § 1115(b). It also observed that one of the grounds listed in § 1115(b) is that the registration was obtained fraudulently. The court held that, although false statements were used, the registration was not made with the intent to defraud and was therefore not made fraudulently. In concluding that the district court canceled improperly, the court held the “specific language [of § 1115] limits the power of the District Court pursuant to ... § 1119.” Id,

In another line of cases this court and others have suggested an inclination to limit § 1119 with § 1064 in discussions of the purpose of § 1119. In Durox Co. v. Duron Paint Mfg. Co., 320 F.2d 882 (4th Cir.1963), we stated, “[t]he authority given by [§ 1119] to the courts over the respective rights of parties to trademark registrations is concurrent with the authority of the Patent office to conduct opposition and cancellation proceedings, and the remedies are not mutually exclusive.” We explained that the purpose of § 1119 is to make it possible for trademark actions that include cancellation proceedings to be consolidated in the district court. More recently, the Third Circuit reiterated its position in a former case stating, “There the court said that proceedings in the patent office and [§ 1119] are concurrent remedies. We, of course, agree.” Ditri v. Coldwell Banker Residential Affiliates, Inc., 954 F.2d 869, 874 (3rd Cir.1992) (citing Simmonds Aerocessories v. Elastic Stop Nut Corp., 257 F.2d 485 (3rd Cir.1958)).

C.

Our conclusion that the power of cancellation given to the district court by § 1119 is limited by § 1064, has support among the commentators.

In his treatise McCarthy on Trademarks and Unfair Competition, J. Thomas McCarthy states:

Some courts have held that the civil courts are bound by the same grounds for cancellation as is the Patent and Trademark Office. There has been doubt expressed whether a court, pursuant to its inherent equity power, has the right to order cancellation of a registration over five years old for some ground other than that specified in the Act. The Supreme Court has observed that the power of federal courts under [§ 1119] to cancel registrations “must be subject to the specific provisions concerning incontestability,” which in turn incorporate the criteria of [§ 1064] by reference. By implication, this means that a court in litigation is bound by the grounds for cancellation in [§ 1064] (citing Park ‘N’ Fly).

J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 30.32[4] at 30-162 (3rd Ed.1992) (citations omitted).

The commentator Siegrun D. Kane states, “[t]here is some dispute as to whether the limits placed on Patent and Trademark Office cancellation proceedings also apply to court proceedings. A coherent reading of the statute suggests that the grounds for cancellation should be the same in both forums.” Siegrun D. Kane, Trademark Law 281 (2d Ed.1991).

Jerome Gilson, author of Trademark Protection and Practice, expressed the following view:

The broad grant of judicial power in [§ 1119] is not unlimited, however. First, the court is still required to exercise reasonable judicial discretion. Thus, a trial court was found to have abused its discretion when it failed to order cancellation of a trademark which it had found to be generic. Second, a court exercising its power under [§ 1119] is bound by the presumptions which accompany incontestability under [§ 1065].

Jerome Gilson, Trademark Protection and Practice § 4.10[2] at 4-63 (revised 1989).

In conclusion, we hold that the district court erred in canceling, pursuant to 15 U.S.C. § 1119, the trademark held by Shakespeare on the grounds that it is functional, because that is not an authorized ground for cancellation under 15 U.S.C. § 1064. Since no other ground enumerated under § 1064 was alleged by Silstar, the mark is valid as a matter of law. We therefore reverse the district court and remand the case for further consideration of Shakespeare’s statutory and common law infringement and unfair competition claims. We further instruct the district court that any inquiry into an alleged “fair use” of the clear tip must be accompanied by an analysis of the likelihood of confusion among consumers that may be created by Silstar’s use of the clear tip.

REVERSED.

1 . § 15 the Trademark Act of 1946 (Lanham Act), 60 Stat. 427, as amended, 15 U.S.C. § 1051 et seq. (1988). Citations to the sections of the Lan-ham Act have been deleted. All statutes cited can be found in the Lanham Act, Title 15 U.S.C. § 1051 et seq. (1988).

2 . That provision requires:

(1) there has been no final decision adverse to registrant's claim of ownership of such mark for such goods or services, or to registrant's right to register the same or to keep the same on the register; and

(2) there is no proceeding involving said rights pending in the Patent and Trademark Office or in a court and not finally disposed of; and

(3) an affidavit is filed with the Commissioner within one year after the expiration of any such five-year period setting forth those goods or services stated in the registration on or in connection with which such mark has been in continuous use for such five consecutive years and is still in use in commerce and the other matters specified in paragraphs (1) and (2) of this section; and

(4) no incontestable right shall be acquired in a mark which is the generic name of the goods or services or a portion thereof, for which it is registered.

15 U.S.C. § 1065.

3 . § 1115(b) states:

(b) Incontestability; defenses

To the extent that the right to use the registered mark has become incontestable under section 1065 of this title, the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce. Such conclusive evidence shall relate to the exclusive right to use the mark on or in connection with the goods or services specified in the affidavit filed under the provisions of section 1065 of this title, or in the renewal application filed under the provisions of section 1059 of this title if the goods or services specified in the renewal are fewer in number, subject to any conditions or limitations in the registration or in such affidavit or renewal application. Such conclusive evidence of the right to use the registered mark shall be subject to proof of infringement as defined in section 1114 of this title, and shall be subject to the following defenses or defects:

(1) That the registration or the incontestable right to use the mark was obtained fraudulently; or

(2) That the mark has been abandoned by the registrant; or

(3) That the registered mark is being used, by or with the permission of the registrant or a person in privity with the registrant, so as to misrepresent the source of the goods or services on or in connection with which the mark is used; or

(4) That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin; or

(5) That the mark whose use by a party is charged as an infringement was adopted without knowledge of the registrant's prior use and has been continuously used by such party or those in privity with him from a date prior to (A) the date of constructive use of the mark established pursuant to section 1057(c) of this title, (B) the registration of the mark under this chapter if the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988, or (C) publication of the registered mark under subsection (c) of section 1062 of this title: Provided, however, That this defense or defect shall apply only for the area in which such continuous prior use is proved; or

(6) That the mark whose use is charged as an infringement was registered and used pri- or to the registration under this chapter or publication under subsection (c) of section 1062 of this title of the registered mark of the registrant, and not abandoned: Provided, however, That this defense or defect shall apply only for the area in which the mark was used prior to such registration or such publication of the registrant’s mark; or

(7) That the mark has been or is being used to violate the antitrust laws of the United States; or

(8) That equitable principles, including lach-es, estoppel, and acquiescence, are applicable.

15 U.S.C. § 1115(b).

4 . 15 U.S.C. § 1064 states:

§ 1064 Cancellation of registration

A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905:

(1) Within five years from the date of the registration of the mark under this chapter.

(2) Within five years from the date of publication under section 1062(c) of this title of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905.

(3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.

(4) At any time if the mark is registered under the Act of March 3, 1881, or the Act of February 20, 1905, and has not been published under the provisions of subsection (c) of section 1062 of this title.

(5) At any time in the case of a certification mark on the ground that the registrant (A) does not control, or is not able legitimately to exercise control over, the use of such mark or (B) engages in the production or marketing of any goods or services to which the certification mark is applied, or (C) permits the use of the certification mark for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies.

Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in paragraphs (3) and (5) of this section any mark registered on the principal register established by this chapter, and the prescribed fee shall not be required.

5 .

Power of court over registration

In any action involving a registered mark the court may determine the right to registration, order the cancellation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action. Decrees and orders shall be certified by the court to the Commissioner, who shall make appropriate entry upon the records of the Patent and Trademark Office, and shall be controlled thereby.

15 U.S.C. § 1119.