Trademark Cancellation

Collen - The U.S. Trademark Cancellation Law Firm

U.S. Trademark cancellation proceedings have seen a dramatic increase in the last couple of years.  This is due in large part to USPTO rules that have resulted in more trademark cancellation proceedings being brought on the grounds of abandonment.

According to 15 U.S.C. Section 1127, trademark abandonment occurs when a trademark's use has been discontinued with an intent not to resume use.  Non-use of three consecutive years shall be prima facie evidence of abandonment.  An intent not to resume use may be found by taking account all objective evidence.  As such, a registrant cannot avoid a finding of trademark abandonment by simply alleging that it had intended to resume use.

In the United States, a trademark registration can be either cancelled in whole, or in part, based on abandonment.  If a trademark cancellation proceeding has been filed against your company's trademark registration on grounds of abandonment, you have several options to avoid an adverse judgment.   Collen represents both domestic and international companies in trademark abandonment proceedings before the U.S. Trademark Trial and Appeal Board.

To discuss your case, please contact James Hastings of Collen for a complimentary consultation.

A trademark registration for nutritional supplements was recently cancelled by the U.S. Trademark Trial and Appeal Board.

Background.  The case, Food Global Innovation GP LLC v. Tuong Nguyen, sought cancellation of U.S. Reg. No. 4799824 of VITASTRONG and Design was nutritional and herbal supplements.  The grounds for cancellation were abandonment.   The Petitioner had

A petition to cancel a trademark for abandonment is becoming more common.  This is due, in part, to the USPTO’s recent focus on clearing the registry of “deadwood” trademarks.

Trademark registrations that are subject to cancellation have one of two characteristics:

  • all of the goods or services have been abandoned;
  • some of the goods or

A recent petition to cancel a trademark registration is a good lesson in what constitutes a well-drafted cause of action.

In Bonehead Brands, LLC v. Direct Impulse Design, Inc.,  Petitioner sought to cancel Reg. No. 3182681 of the mark BONE HEAD OUTFITTERS and Design for various apparel items in International Class 25.   The Respondent

The Trademark Trial and Appeal Board recently released its TTAB filing statistics for fiscal year 2018.   These updated figures include year-to-year changes in the filing of appeals, notices of oppositions, and petitions for cancellations.  It also provides useful information on the disposition of cases.

Highlights include the following:  (percentage in parentheses signifies change over 2017)

Trademark cancellation proceedings based on abandonment continue to present challenges to trademark registrants.   In the latest case before the US Trademark Trial and Appeal Board, however, the registrant’s trademark registration was spared.

In AD5 Inc. v. Jennifer M. Estes dba #SELFiE T’s, the Petitioner sought to cancel Reg. No. 4642072 of the Registrants #SELFIE