Trademark Cancellations

A registered trademark can potentially exist in perpetuity- assuming that your trademark mark is kept in proper order. Your registered trademark can become abandoned if you fail to make the proper filings before the United States Patent and Trademark Office (USPTO). Furthermore, a registered trademark is subject to cancellation by third parties under certain conditions.

The two most common reasons for a trademark cancellation are non-use by the registrant and the mark becoming generic. Although a trademark can indeed exist forever, these trademark rights are subject to continued use in commerce. Substantial non-use in commerce provides the opportunity for third parties to file a cancellation before the USPTO. The third party would need to properly detail the grounds for such non-use, and provide specific details that clearly show that you have not been using your mark. It is thus important to continue to use your registered trademark in commerce, and make the necessary filings before the USPTO.

A second ground that can be used to cancel a trademark is that the mark has become generic. This means that your mark has become so associated with the underlying good or service that it is used interchangeably with your mark. Once a registered trademark becomes generic, it is no longer subject to trademark protection- and is thus subject to cancellation. Owners of trademarks, including registered trademarks, should take steps to protect their marks to ensure they do not become generic.

There are other reasons for cancellation, such as fraud in obtaining the registration, which can lead to the cancellation of a trademark at any time. Some registered trademarks, after they have become "incontestable," are more difficult to cancel. Fraud is one allegation that can be brought at any time; however the standards for proving fraud can be at times difficult.

Our law firm has experience bringing and defending against trademark cancellations. It is possible to represent yourself before the USPTO during a trademark cancellation-- however we recommend using the services of an attorney that is familiar with trademark law and has experience with cancellations.

We provide a brief (ten minute) telephone consultation free of charge. To schedule a consultation, please contact us online, or call us at 310-277-0444. In office consultations, and in depth telephone consultations, are available for a $80 consultation fee.

InventionPatent.Net- An intellectual property information resource for patents, trademarks, and copyrights, written and edited by Owen Smigelski, Esq.

As in-house counsel, I cannot provide legal advice or information to individual clients.
I recommend consulting with:
Raymond Wagenknecht
Biotech Beach Law Group PC
Toll Free: 886-875-9562
Tel: 619-238-1179
www.biotechbeachlaw.com