## Facts

- Checkers Drive-In Restaurants, Inc. owned a federally registered service mark for restaurant services.
- The Lanham Act required Checkers to file an affidavit of continued use under 15 U.S.C. § 1058 within the fifth–sixth year after registration to keep the registration in force.
- A separate restaurant entity, Checkers Restaurant Group (CRG), filed a cancellation petition against Checkers’ registration before the Trademark Trial and Appeal Board (TTAB).
- While the TTAB matter was pending, CRG filed for bankruptcy, triggering an automatic stay under 11 U.S.C. § 362 that halted the TTAB proceeding.
- Checkers, a creditor in CRG’s bankruptcy, did not file its § 1058 affidavit within the statutory window; after settlement approval in bankruptcy court, Checkers filed the affidavit in December 1990.
- The Patent and Trademark Office (PTO) rejected the affidavit as untimely and canceled the registration.
- Checkers sought judicial review; the district court granted summary judgment to the Commissioner of Patents and Trademarks.

## Issues

1. Whether the automatic stay under 11 U.S.C. § 362 barred or suspended Checkers’ obligation to file a Lanham Act § 1058 continued-use affidavit.
2. Whether the Commissioner was required to cancel the registration once the § 1058 affidavit was not timely filed, regardless of the bankruptcy stay and related TTAB litigation.

## Decision

- The D.C. Circuit affirmed summary judgment for the Commissioner.
- The court held that filing the § 1058 affidavit was an independent, unilateral maintenance act to preserve Checkers’ own registration, not an action “against the debtor” or an act to collect a claim or control estate property within § 362.
- The court held that the Commissioner lacked discretion to excuse untimeliness; the statute required cancellation when the affidavit was not filed within the prescribed period.

## Legal Principles

- The bankruptcy automatic stay generally applies to proceedings against the debtor and specified acts affecting the debtor or the bankruptcy estate; it does not bar a non-debtor from satisfying its own independent statutory filing duties to maintain federal rights.
- Lanham Act registration maintenance requirements (including § 1058 affidavits) operate independently of private disputes and are not tolled merely because related litigation is stayed.
- When the Lanham Act mandates cancellation for failure to make a required maintenance filing within the statutory period, the PTO must cancel and may not preserve the registration on equitable grounds.

## Conclusion

The court upheld cancellation of Checkers’ registration because the bankruptcy automatic stay did not prevent the registrant from filing its required § 1058 affidavit, and the PTO was required by statute to cancel the registration for untimely filing.


Checkers Drive-In Rests., Inc. v. Comm'r of Pats. & Trademarks, 51 F.3d 1078 (D.C. Cir. 1995)