U.S. Trademark Cancellation Attorney Services
Lapin Law Firm provides US trademark cancellation attorney services. Call us today for a consultation on your case. Trademark cancellations are not always necessary or required; it depends on the facts of your situation.
We can help you determine whether the cancellation of the trademark is appropriate for your needs.
Our experienced attorneys have the knowledge and expertise to help you through this complex process, which can be very time-consuming for many individuals not familiar with trademark law. For more information, please contact us.
How Do Trademark Cancellations Work?
Before a Trademark can be Cancelled, someone has to file a Petition for Cancellation with the United States Patent and Trademark Office (USPTO). The actual Trademark holder does not receive the Petition – Trademark Cancellations are registered by USPTO. This is important because even though Trademarks can be transferred between companies, Trademark Cancellations cannot. The Trademark must die with its original owner or holder.
If the Trademark Holder files a response to the Petition for Cancellation, then there is an administrative Trademark Trial. This is like a court proceeding where the Trademark Holder gets to present their case against giving up their Trademark. Trademark Cancellations can be fought, but it is more common for them not to be fought by the Trademark Holder if there is no active business using the Trademark.
If the Trademark Holder does not respond to the Petition for Cancellation within 30 days, then the Trademark is cancelled automatically. Trademark Cancellations are final and usually cannot be appealed (exceptions do exist).
The Trademark Office can also initiate Trademark Cancellations on its own. Trademarks that are considered “abandoned” Trademarks by the Trademark Office can be easily subject to Trademark Cancellations. Trademarks that are considered “generic” Trademarks by Trademark Courts can also be subject to Trademark Cancellations. Generic Trademarks are quite a bit more difficult to get approval for since generic Trademarks describe a type of good or service, not a single brand of good or service.
Trademark Cancellations are the only way to remove Trademarks once they are registered by USPTO. Trademark Termination can occur before Trademarks are approved but Trademark Terminations cannot be issued after Trademarks are already Trademarked.
Why Are Trademarks Cancelled?
Trademarks are cancelled for various reasons. Trademark holders can file to cancel Trademarks if they haven’t used them in three years, if the Trademark is deemed generic or already in use by another company, or if the Trademark could be considered offensive. Cancellations allow companies who want to use the Trademark opportunities that might otherwise have been unavailable to them. Trademark Cancellations allow Trademarks to be shared out and let companies more easily use Trademarks that they might want without fear of legal repercussions.
Trademark Cancellations are part of the trademark registration process. Trademark registration is granted by USPTO but Trademark registrations do not end with Trademark approvals; Trademark registrations continue on Trademark Cancellations. Trademark holders need to be aware of Trademark Cancellations for their Trademarks, and understanding Trademark Cancellation procedures are integral to successfully protect Trademarks.
What Is A Trademark Cancellation Proceeding?
A trademark cancellation proceeding is when the owner of a trademark, service mark or collective mark files an application with the U.S. Patent and Trademark Office to cancel another party’s registered trademarks, service marks or collective marks.
If the trademark cancellation proceeding is successful, then that party’s registered trademarks, service marks or collective mark will be cancelled as well as any pending applications to register those marks.
What Usually Happens To A Trademark If The Registration Is Cancelled?
If a trademark registration is cancelled, it usually becomes public knowledge and the trademark may be freely used by others. If someone has successfully opposed or objected to the registration of the trademark on grounds of fraud, misrepresentation or lack of use, the trademark is canceled.
If a cancellation is requested by the owner of another trademark that has been registered for 10 years and either party can show that the registration would be detrimental to its own trademark, the registration will also likely be cancelled.
Typical Goal Of A Trademark Owner In A Trademark Cancellation Proceeding
A trademark cancellation proceeding is typically instituted by the owner of a trademark to cancel the registration of another’s mark. The goal of such proceedings can be for one or more reasons, including that it is a confusingly similar mark, that the owner of the trademark has not been using it for five years or more and there is no intention to resume use, or that its registration was obtained fraudulently.
The trademark cancellation proceedings can be instituted with the United States Patent and Trademark Office or, in some cases, at the state level. The process may involve an opposition proceeding if there is a dispute over who has the right to cancel it.
When Can A Trademark Cancellation Proceeding Be Filed?
The Trademark Cancellation proceeding may be filed at any time after the mark has been in use for five years.
On What Grounds Can A Trademark Cancellation Proceeding Be Filed?
A trademark cancellation proceeding can be filed on the grounds that: The mark is generic and not distinctive, it consists of a listing of ingredients or other descriptive matter which does not serve to distinguish goods or services, the mark has been abandoned by its registrant or it is offensive to public decency.
How Long To Respond To A Trademark Cancellation Proceeding?
“In order to respond, you must file a Cancellation Response. You have six months from the date of service of the Notice on which to do so.”
What Must A Petition For Cancellation Include?
In your response you should include the following:
– A statement that you are the owner of record for your mark,
– The date when you first used your trademark in commerce, and
– Your signature.
If you need more information, please contact us.
How Can You Prevent Your Trademark From Being Cancelled?
Trademark Owners should monitor Trademark Registrations and Trademark Cancellations to make sure that their Trademark has not been cancelled. Trademark Owners should know their Trademark Cancellation rights. Trademark Owners should proactively seek Trademark Registrations to avoid Trademark cancellation. Trademark holders can also fight Trademark Cancellations by responding to the Petition for Cancellation with evidence that the Trademark is still in use.
Trademark Cancellations Are Serious Business
A trademark cancellation is a serious business. It can be devastating to the owner of the trademark as it means that their mark will stop being used and they will lose all rights associated with it. It can also be a huge financial burden for the trademark owner.
The person who wants to cancel a trademark must have legal grounds for doing so, and they cannot do it arbitrarily or without cause.
The Lapin Law Firm offers trademark cancellation services. We can file both voluntary and involuntary trademark cancellations depending on your needs. We can also protect you from future trademark infringement.
An Experienced US Trademark Attorney
The Lapin Law Firm is an experienced US trademark attorney that specializes in trademark law and copyright. We have been practicing for years and can handle all of your legal needs related to these subjects.
You can trust the Lapin Law Firm to handle all of your trademark and copyright needs. We offer free consultations, so contact us today!
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