Trademark Cancellation

A registered trademark holds power. It’s not just a name or logo – it’s a symbol of trust, quality, and brand identity. 

But sometimes, certain trademarks shouldn’t have been registered or continue to exist. 

Here’s where trademark cancellations come into play.

Why Consider Cancelling a Trademark?

1. Protecting Your Brand: If another mark is confusingly similar to yours and it misleads consumers, you might seek its cancellation to protect your brand’s reputation.
2. Prevent Dilution: A diluted market with similar trademarks can weaken your brand’s distinctiveness and value.
3. Legal Strategy: If you’re considering expanding your business or entering new product lines, eliminating conflicting trademarks can prevent future infringement issues.
4. Erroneous Registration: The trademark was initially registered without proper justification or based on incorrect information.

What is a Trademark Cancellation?

A trademark cancellation is an official procedure to challenge the validity of a registered trademark, aiming to remove it from the registry.

Common Grounds for Cancellation:

• Non-use: The owner hasn’t genuinely used the mark for a considerable period.
• Genericness: The mark has turned into a general term for its products/services.
• Likelihood of Confusion: It’s too similar to another mark, causing confusion.
• Improper Registration: Registered with misleading information or bad intent.

Steps in the Cancellation Process:

1. Petition: A Petitioner files a Petition for Cancellation with the USPTO, detailing reasons for the challenge.
2. Response: The Owner responds, defending their mark.
3. Discovery Period: Both sides present supporting evidence.
4. Oral Arguments: Both parties may have the chance to verbally present their case.
5. Decision: The USPTO makes a decision after reviewing the evidence.

Key Deadlines and Timelines for Cancellation Actions:

Initial Five Years: Trademarks are most vulnerable during their first five years. Opposing parties can challenge the mark on broader grounds, including its potential similarity to other marks or lack of distinctiveness.

Post-Five Years: After five years (and before ten), assuming the registrant has filed a Section 15 – “Declaration of Incontestability,” the mark becomes “incontestable.” 

If a mark is incontestable, you can only file a cancellation on the following grounds:

• The mark has become a generic term.
• The mark is abandoned (non-use).
• The mark was acquired fraudulently.

Potential Outcomes of a Cancellation Proceeding at the USPTO:

Full Cancellation: The mark is removed from the registry.

Partial Cancellation: The mark is limited to certain goods/services.

Rejection: The petition gets dismissed and the trademark stays registered.

How To Defend Against a Cancellation Action:

• Demonstrate Use: Present evidence of continuous use.
• Highlight Distinctiveness: Show differences between your mark and others.
• Legal Precedents: Cite previous decisions that favor your position.
• Negotiate: A mutual agreement can lead to a resolution without going through the entire process.

Trademark cancellations are essential mechanisms in the world of intellectual property.

They allow the marketplace to remain fair, ensuring consumers are not misled, and brands retain their unique identity. 

Contact Ana Law if you have any more questions about Trademark Cancellations.