Are you considering filing a trademark cancellation, but wonder if doing so would pose unnecessary consequences? The decision to cancel a trademark should not be entered into lightly. While the concept is simple, the procedure may be longer than you expected it to be. With that in mind, today we'll unpack what cancelling a trademark looks like, the legal ramifications and the benefits of doing so.
What is the window to file a trademark cancellation?
Typically, the window to file a cancelation is within the first five years after registration of a mark. After five years on the register, the mark may have acquired distinction or may have existed on the record without being challenged for long enough for you to have missed your chance.
Additionally, while it is possible to cancel a trademark registration that has been filed by someone else, there are some exceptions to that rule.
Some cancellations can only be filed within 5 years of the registration date of the mark. These include claims for mere descriptiveness and likelihood of confusion. The time limit does not apply to cancelations brought for reasons of being generic, functional, abandonment, and fraud, which can be brought at any time.
A generic mark is a word understood by the public as the common term for a product or service. For example, the word “milk” would be generic for dairy product commonly extracted from cows. There is no more common term to refer to this product than simply saying “milk.” However, the term “milk” would not be generic for non-dairy items. A mark can start out as protectable and then fall to generic depending on its use by the public.
An abandoned mark is one that has been abandoned by the registered owner for a certain period of time. These marks need to be removed, or canceled, from the register to clean up the record and allow others to proceed with their marks, which may be held up by a mark that has been abandoned.
What happens after filing a cancellation?
Upon filing a cancelation, the Trademark Trial and Appeal Board (TTAB) will set deadlines and timelines that span approximately the next seventeen months of your case. Consult an attorney before you attempt to cancel a trademark. You will need an experienced trademark attorney to guide you through the terms of art and various steps to ensure they are done correctly.
Are there any benefits to filing a trademark cancellation?
If you're still considering a trademark cancellation, you really have to consider whether or not the cancellation would actually benefit you.
For example, let's say a trademark on the register was filed before your application was ever filed. Even though you are the prior user, that registration is blocking your application from moving forward. In this situation, the examining attorney assigned to your application would have issued an Office Action and cited the prior-filed application as a basis for that rejection.
These Office Actions typically refer to 2(d) likelihood of confusion. It is possible to overcome this Office Action with a well-worded response to Office Action drafted by your attorney, in which case you may not need to file the cancelation in order to get to registration.
However, even if you make it past the hurdle of Office Action, you may want to consider the cancellation as there is benefit from having a clear record with no prior-filed marks and a limit of possible registrants who may later challenge, or even try to cancel your trademark application.
To receive help registering your potential trademark or filing for cancellation, contact our law firm today. Our trademark lawyer in Raleigh NC can help answer questions, get your logo registered, and more.
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