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.

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

Food for thought.  A trademark cancellation may result from abandonment of a trademark.

In Local Foods LLC v. Foodsmith Bowen Osborn, the Petitioner sought cancellation of Registrant’s FOODSMITH and Design trademark for “health food, namely freshly prepared meals consisting primarily of local and organic meat, fish poultry, vegetables, properly proportioned, for delivery and pickup”