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Hi. I’m trademark attorney Morris Turek. I protect individuals and businesses throughout
the world by assisting them with their important trademark matters.
Has someone filed a trademark cancellation against your trademark registration and you
don’t know what to do? Perhaps you need some help filing a trademark cancellation
against someone else’s registration? Maybe you’re just looking for some general information
about trademark cancellation proceedings? If so, you’ve come to the right place.
A trademark cancellation proceeding is basically a lawsuit that challenges the continued registration
of a particular trademark. It is instituted by filing a Petition for Cancellation with
the Trademark Trial and Appeal Board and paying the required fee. Although it can be wildly
expensive and extremely time-consuming to pursue or defend a trademark cancellation
all the way through trial, the good news is that the vast majority of cancellation proceedings
are resolved amicably between the parties before such time and money is spent.
During the first five years, a trademark registration can be challenged for a wide variety of reasons.
More often than not, a cancellation proceeding is filed by someone who owns prior rights
in an identical or confusingly similar trademark. But, a trademark registration may also be
canceled for a number of other reasons. If the owner of the trademark registration is
unsuccessful in defending or settling the cancellation, the Trademark Office will cancel
the trademark registration, and all the benefits and protections associated with federal registration
will be lost.
After a trademark registration reaches its five year anniversary, it can only be canceled
on extremely narrow grounds. Typically, a trademark registration over five years old
is challenged on the basis that the trademark is no longer in use and that the owner has
abandoned the trademark. Of course, the owner of the trademark registration would have an
opportunity to defend the trademark cancellation proceeding and to preserve the registration.
Thankfully, you can reduce the chances of your trademark registration being canceled
by conducting a trademark search prior to filing your trademark application, making
sure that your trademark application contains only accurate and truthful information, and
continuing to properly use your trademark in commerce after your trademark is registered.
If you have any questions about pursing a trademark cancellation against someone else’s
registration, or need some help defending a cancellation proceeding filed against your
trademark registration, please feel free to give me a call. I look forward to hearing
from you soon.