TRADEMARK CANCELLATION PROCESS

Following the approval for registration of a mark, the USPTO will publish its approval of sai mark, alongside mark details, in its Official Gazette, after which a thirty day opposition period exists wherein parties opposed to the registration of the mark can file a notice of opposition, in the instance of harm that their business will suffer should the proposed registration see the light of day.

If this opposition period passes without remark, the mark will be officially registered, and as such grant the owner the right to litigate damages from parties using the same or similar marks inappropriately.

However, even after this opposition period, owners of business and associated marks can petition to cancel a trademark registration, if they can prove that the registered trademark does real damage to their previously existing mark or business. These cases are overseen by the Trademark Trial and Appeal Board, which has strict jurisdiction over only matters regarding trademark registration.

The cancellation process can serve as a useful tool for a party with serious grievances resulting from a registration.Proving this standing to cancel registration is the principal challenge of the process, as these grievances must be serious enough for the court to consider the aggrieved party as having legitimate standing.

If you are petitioning to cancel an application less than five years after the trademark was registered, the court might accept the following reasons for cancellation.

• The mark can be confused with your property or business, and or dilutes the usefulness or trade identity of another mark

• You were using the trademark at a date prior to the registration of the mark by the current mark registrant.

• The mark hasn’t been used or defended in at least three years

• There were uncorrected errors made in the initial filing of the existing mark

• The mark should have been registered supplementally, having a prior common usage as a place or last name.

After five years the possible reasons for canceling a registration broaden, including the abandonment of the mark, or a generic nature/scope to the mark that developed in that period.

If you have any questions, or require any assistance, the experienced lawyers at Sari Law Firm are alway available to provide clear and concise legal aid in regards to your trademarks.