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.
An opposition proceeding is commenced by filing in the Office a timely notice of opposition with the required fee. The notice must include proof of service on the applicant, or its attorney or domestic representative of record, at the correspondence address of record in the Office, as detailed in §§ 2.101(b) and 2.119.
Any…
The Trademark Trial and Appeal Board (TTAB) is an administrative board of the United States Patent and Trademark Office. The TTAB hears and decides adversary proceedings between two parties, namely, oppositions (party opposes a mark after publication in the Official Gazette ) and cancellations (party seeks to cancel an existing registration). The TTAB also handles…
Many of us learn best through the use of memory devices known as mnemonics. So in honor of all you Scrabble ® fans out there, here is a “G-R-E-A-T” way to interview and select a trademark lawyer to represent your legal interests before the Trademark Trial and Appeal Board:
“G” is for Geography. Since trademark…
