Insight on Opposition & Cancellation Proceedings
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.
Redskin n. slang (often disparaging and offensive). a north American Indian. Random House Dictionary of the English Language 1618 (2d Ed. 1987).
In a monumental decision, the U.S. Patent and Trademark Office has cancelled several trademark registrations of the Washington Redskins national football league team, on the grounds that the term “redskins” is disparaging…
The Trademark Trial and Appeal Board recently published a summary of Trademark Opposition and Cancellation filing and performance results for the fiscal year 2013.
As predicted, the number of trademark litigation proceedings before the board increased as compared to the preceding year. While it could be theorized that the increase was due to more trademark…
A U.S. trademark cancellation proceeding is a legal case, similar to a civil lawsuit (although it is by contrast processed in the Trademark Trial and Appeal Board).
Trademark owners often have situations where their trademark application has been refused by the U.S. Patent and Trademark Office due to a preexisting trademark registration.
If the refusal…
As any trademark opposition attorney knows, you do not always get to choose your opponents. Some opposing counsel are cooperative, professional, and seek common ground between the trademark opposer and trademark applicant. This approach often results in a favorable result for both parties. There are times, however, when an opposing trademark lawyer takes a “win…
To trademark opposition attorneys, winning a trademark opposition should mean one thing and one thing only: achieving a favorable outcome for the client. In this regard, a successful conclusion to a trademark opposition can take one of two main forms: (1) judgment on the merits; or (2) a negotiated settlement.
Judgment on the Merits…
It’s quite often been said that “ignorance of the law” is no excuse. This is particularly true in the case of U.S. trademark opposition attorneys and trademark cancellation lawyers who practice before the U.S. Trademark Trial and Appeal Board.
Under U.S. law and federal regulations, all U.S. trademark opposition and petition to cancel proceedings are…
As has been discussed in prior postings, the Trademark Trial and Appeal Board’s rules for U.S. Trademark Opposition and U.S. Trademark Cancellation proceedings are contained in the Trademark Board Manual of Procedure (“TBMP”) an over 1,000 page “how-to” guide of handling inter-partes matters before the Board.
The purpose of the TBMP is to provide trademark…
A petition for cancellation of a U.S. trademark registration is available to any party who believes that an already existing federal trademark registration should not be allowed to remain an active registration due to a variety of grounds, including abandonment of the trademark.
What is meant by trademark abandonment and how is it proven?
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The Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office (“USPTO”) is the administrative forum that adjudicates all trademark opposition and cancellation proceedings that are filed in the United States Patent and Trademark Office. A case is commenced by the filing of a Notice of Opposition (in the case of…
In the market for a trademark law firm? Keep it simple by thinking like a consumer and try to find the best quality lawyer or trademark law firm at the most competitive price. In choosing a trademark lawyer, be mindful to take into account the following factors:
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