Trademark Cancellation

Rothwell Figg - The U.S. Trademark Cancellation Law Firm

A trademark cancellation can seriously impact the value of a company's brand. Conversely, it can be brought strategically to remove a competitor's trademark registration from the Registry that is negatively impacting a party's rights.

More information on how to cancel a trademark registration may be found in our informative article here.

Trademark cancellation proceedings are heard before the U.S. Trademark Trial and Appeal Board. Approximately 2,500 U.S. trademark cancellations are filed each year.  The complaint, known as a petition for cancellation, can seek cancellation of a trademark registration in its entirety.  Alternatively, a petitioner can request a partial cancellation of a third-party's registration to remove certain goods or services from the registration.

In the United States, there are numerous grounds to cancel a trademark registration.  These include likelihood of confusion, abandonment of the mark, mere descriptiveness, and fraud in the procurement of the registration.  If a trademark cancellation proceeding has been filed against your company's trademark, you have several options to avoid an adverse judgment.   Rothwell Figg represents both domestic and international companies in trademark cancellation proceedings before the U.S. Trademark Trial and Appeal Board.

This is due in large part to USPTO rules that have resulted in more trademark cancellation proceedings being brought on the grounds of abandonment or non-use of certain goods contained in the registration.

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.

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

The U.S. Patent and Trademark Office  (USPTO) has adapted to the COVID-19 era.  Yet, performance challenges in certain operational areas remain.  This is the conclusion of the USPTO FY 2020 Annual Report.  Our previous article on TTAB statistics in the age of COVID-19 may be found here.

TTAB FY 2020 performance.   The TTAB is responsible

Recent TTAB filing statistics reveal that COVID-19 has not substantially impacted U.S. trademark opposition filings.  While trademark opposition filings are slightly below pace compared to last year, trademark cancellation activities are on the rise.  This is good news for brand owners and practitioners everywhere.  Our previously reported summary of 2019 TTAB statistics may be found

We recently spoke with Martin Hermida, intellectual property consultant at ClarkeModet in Uruguay, to discuss how COVID-19 has impacted Uruguay trademark opposition and cancellation rules and procedures.

1. How has the COVID-19 pandemic impacted your national trademark office’s policies and procedures regarding Uruguay trademark oppositions, cancellations, and invalidations?

The COVID-19 pandemic has not affected

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 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)