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 governed by several federal statutes and federal regulations, as well as relevant case law. These trademark cancellation rules include the following:
- the Lanham Act of 1946, otherwise known as the Trademark Act, 15 U.S.C. Section 1501 et seq.;
- the Trademark Rules of Practice, which rules can be found in Parts 2 and 7 of Title 37 of the Code of Federal Regulations (“CFR’);
- the rules of pertaining to trademark assignments, which may be found in Parts 3 and 7 of 37 CFR; and
- the rules relating to the conduct of U.S. trademark attorneys and the representation of clients before the United States Patent and Trademark Office, found in Parts 10 and 11 of 37 CFR
It is important to note that USPTO rules regarding trademark opposition and trademark cancellation cases before the Trademark Trial and Appeal Board take their inspiration from, and align with, the Federal Rules of Civil Procedure.
Therefore, U.S. trademark opposition lawyers should pay careful attention to the interaction of all relevant statutes and rules related to inter-partes proceedings.
Knowledge of both Trademark Office rules and Federal Rules of Civil Procedure are important in vigilantly representing a client in an action where their trademark has been opposed or a party is seeking to cancel their U.S. trademark registration.
The Trademark Office makes copies of Title 37 CFR and other relevant statues and rules available for sale from the U.S. Government Printing Office, or on the United States Patent and Trademark Office website.
By reviewing the trademark statutes and rules related to TTAB proceedings, a U.S. trademark attorney will be better prepared to be deal with the complexities found in opposition and cancellation proceedings before the Board.
Need advice on trademark cancellation rules? To discuss the possible representation of your company in a Trademark Cancellation matter, contact us now.