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 “abandonment” and how is it proven?
In order to successfully bring a case for trademark abandonment, a plaintiff (petitioner) needs to prove the following elements by a preponderance of the evidence:
1. non-use of the trademark for at least 3 consecutive years by the trademark owner; and
2. an intent not to resume use of the trademark by the owner
Section 45 of the Trademark Act goes on to define “abandonment” of a trademark registration as
When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
In you or your company have received a petition for cancellation, it is important to quickly act on the complaint and follow Trademark Trial and Appeal Board rules of procedure. The best way to determine your rights and legal options in a petition for cancellation matter is to speak to a trademark cancellation lawyer. If you fail to do so, there is the possibility that your registration could be cancelled, thereby exposing your valuable brand to further peril.
If you have any questions regarding your trademark cancellation matter, please feel free to contact me and I will be happy to provide you with a complimentary consultation.