A Complete Overview Of Trademark Registration Cancelation

Trademark owners frequently have circumstances where their trademark application has been declined by the U.S. Patent and Trademark Office because of preexisting trademark registration. If the denial to register is maintained, then filing a request for cancelation of the cited trademark registration might be an effective means to make sure that their trademark rights are ideal.

What is an appeal for cancelation? 

In the USA, trademark holders have the right to abandon a trademarkregistration that it believes might be causing damage to its trademark rights. Petitions for cancelation of a TrademarkRegistration Service are heard before the U.S. Trademark Trial and Appeal Board, the adjudicative body of the USPTO. 

Tips to defend a trademark cancelation

So, what can be done to form a strong guard to a trademark cancelation? A sensible strategy for defending a cancelation action should take into consideration timeframe, legal costs, and legal positions.

The cost of a trademark cancelation

The primary costs of responding to a Petition to Cancel are usually not extremely high. You will want to budget for:

• Filing an Answer;
• Serving Initial Disclosures; and
• Conducting the mandatory Discovery Conference.

After initial disclosures are catered, a party may advocate discovery requests. The discovery stage is where lawful costs can get into tens of thousands effortlessly, particularly with responding to document requests, evaluating document production and taking statements.

What are effective official positions in defending against trademark cancelations?

It should come as no wonder that formulating a smart lawful strategy necessitates good communication and close cooperation with your trademark legal representative. One choice to think about early on is the option of an equally favorable settlement.

Counterclaims to take into account against the petitioner

At times an effective defense goes on the wrongdoing, but only if you have legitimate claims to bring against the other side. In a few cases where the petitioner owns a minimum of one registered mark associated with your proceeding, it may be useful to discover any prospective weaknesses in the other side’s registration.

Grounds for Trademark cancelation

The initial obstacle to clear in having a trademark canceled is reputation. A requester should show that they have a reputation to request the cancelation.  The petition should show that they will be spoiled by the registration directly in some way.

This early hurdle is meant to keep out meager inter meddlers.  Once standing has been set-up, there should be legal grounds to have the trademark canceled. If the cancelation is filed in five years of registration, the trademark can be abandoned for the same reasons a notice of resistance could have been filed.

Most common grounds for trademark cancelation:

• A possibility of confusion exists.
• The trademark has been abandoned.
• The trademark was not in use as alleged in the application.
• A fraud occurred during the trademark registration procedure.
• There was no bonafide intent to use the trademark in commerce.
• Dilution of a well-known trademark exists.
• Trademark is deceptive, scandalous or immoral.
• The trademark is a surname or merely descriptive.

These are all grounds for Online Trademark Registration cancelation within the first five years.