If the requirements of §10.40 of this chapter are met, an attorney authorized under §10.14 to represent an applicant, registrant or party in a trademark case may withdraw upon application to and approval by the Director.
An opposition or cancellation proceeding is just like a case in court. Even if you do not have an attorney, you will be expected to follow the Rules of Practice for the TTAB and the Federal Rules of Evidence, which are followed by the TTAB. You may find it difficult to properly conduct your case without legal counsel.
602.05 Permissive Withdrawal of Attorney of Record. 37 C.F.R. 2.19 (b). If the requirements of §10.40 of this chapter are met, an attorney authorized under §10.14 to represent an applicant, registrant or party in a trademark case may withdraw upon application to …
A plaintiff in an opposition or cancellation proceeding may unilaterally withdraw its complaint without prejudice, e ven in the f ace of a defendant’ s adv erse motion such as a motion to dismiss, motion for summary judgment, or motion for a more definite statement, pro vided that the withdra wal is filed prior to defendant’ s
One scenario would be if the opposing party closed its business or abandoned its trademark. There are also circumstances that may require a trademark practitioner to advise a client to withdraw an opposition or cancellation proceeding. For example, if a party initiates an opposition or cancellation proceeding and then learns of unfavorable facts that will negatively impact his …
TEAS form. Requests to withdraw must be filed using the TEAS Request for Withdrawal as Attorney of Record/Update of USPTO's Database After Power of Attorney Ends form.
An applicant may expressly abandon its application by filing with the Office a written statement of abandonment or withdrawal of the application, signed by the applicant or the applicant's attorney or other authorized representative. A request for abandonment or withdrawal may not subsequently be withdrawn.
An opposer may withdraw its opposition without prejudice at any time before the applicant's answer is filed. After the answer is filed, however, the opposition may not be withdrawn without prejudice except with the written consent of the applicant or the applicant's attorney or other authorized representative.
In general, you must answer a petition for cancellation within 40 days of the TTAB instituting the cancellation proceeding. You must electronically file the answer through the ESTTA system and you need to serve a copy of the answer on the petitioner (usually by email).
A petition for cancellation of a trademark registration may be filed at any time. However, a mark which has been registered for more than five years may only be cancelled on the grounds enumerated in Trademark Act § 14.Jul 2, 2020
Change of legal counsel: When the trademark owner decides to change his/her legal counsel/trademark agent, then a request is made to the trademark office to record the change in the legal counsel/trademark agent. This is generally known as the request to change in the address for service in India.
A trademark cancellation proceeding is exactly what it sounds like. It's a legal case, similar to a civil lawsuit (although it is by contrast processed in the Trademark Trial and Appeal Board (TTAB)), in which a complainant is provided with the opportunity to attack and ultimately cancel a defendant's trademark rights.
A canceled trademark registration in the United States Patent and Trademark Office (USPTO) is a trademark registration that's no longer valid. Once a registration is canceled, it's considered dead and cannot be used by the USPTO to refuse registration of a trademark filed by someone else.
Civil court procedure is similar to the one followed by the Registrar of the Trademark. If the Appellate Board passes for cancellation, an intimation is given to the Registrar to cancel the trademark. A writ petition to the High Court can be made against the order of the Appellate Board.Oct 12, 2021
In most cases, trademark cancellations are filed because a trademark owner believes another registered trademark is infringing upon its rights. This is one method of avoiding federal trademark litigation in the courts. Trademark cancellation is an increasingly common occurrence.
By far the most common result with a trademark cancellation is that one side or the other gives up very early in the process. This is part of the reason that we aggressively pursue these types of actions. Here are the most important aspects of the trademark cancellation process that you may encounter.
In fact, there has been an increase in filings every year since at least 2015. There were 2,253 petitions filed in 2018. While oppositions are far more common (6,496 in 2018), both are effective methods for protecting your trademark rights.
When registering for a trademark or filing a declaration of use, it’s imperative to be specific when listing the products or services the trademark is being used for. Saying that it’s being used on all of a company’s products when it’s only being used on specific items, for instance, may be grounds for cancellation.
A trademark owner must control the trademark and if it does not trademark rights can be lost. Therefore, if subsidiaries or sister companies will use a trademark there should be a written license agreement in place.
Many companies have been stripped of their exclusive trademark rights because they allowed their trademark to become genericized. Once the public views a trademark as a descriptor rather than branding or the designation of the source of goods, it could fall into the public domain and be used by anyone.
The initial step of trademark cancellation is the filing of the petition. The Petition is filed with the Electronic System for Trademark Trials and Appeals (ESTTA). The USPTO will then assign a processing number and schedule proceedings related to the petition.
37 CFR § 2.134(a) Surrender or Voluntary Cancellation of Registration. After the commencement ofa cancellation proceeding, if the respondent applies for cancellation of the involved registration undersection 7(e) of the Act of 1946 without the written consent of every adverse party to the proceeding, judgmentshall be entered against the respondent. The written consent of an adverse party may be signed by theadverse party or by the adverse party’s attorney or other authorized representative.
37 CFR § 2.106(c)The opposition may be withdrawn without prejudice before the answer is filed. Afterthe answer is filed, the opposition may not be withdrawn without prejudice except with the written consentof the applicant or the applicant’s attorney or other authorized representative.
Deletion of only some goods and services in a single class affecting only the registered extension ofprotection is an amendment for a Trademark Act § 66(a) registration. In a cancellation proceedingagainst a § 66(a) registration, if the respondent requests a deletion of some of the goods or services in asingle class, and such deletion will affect only the registered extension of protection to the United States,the deletion is considered an amendment and may be filed with the USPTO. [Note 9.] The USPTO willnotify the IB about the change in the registered extension of protection to the United States. [Note 10.]Similarly, if the USPTO is notified by the IB that a limitation of the list of goods and services affects theregistered extension of protection to the United States, but not the international registration, and suchlimitation results in a deletion of only some of the goods and services in a single class, the deletion isconsidered an amendment to the § 66(a) registration. [Note 11.]
plaintiff in an opposition or cancellation proceeding may unilaterally withdraw its complaint withoutprejudice, even in the face of a defendant’s adverse motion such as a motion to dismiss, motion for summaryjudgment, or motion for a more definite statement, provided that the withdrawal is filed prior to defendant’sanswer to the complaint. When a plaintiff unilaterally withdraws its complaint prior to answer, in the faceof a defendant’s pending motion for judgment, the proceeding will be dismissed without prejudice (unlessplaintiff specifies that it is withdrawing with prejudice), and the pending motion will be declared moot.
If a party to an inter partes proceeding before the Board does not wish to litigate the case, and is willing toaccept entry of judgment against itself, the party may file a statement with the Board indicating that itconsents to entry of judgment against itself. Upon receipt of such a statement, the Board will enter judgmentagainst the filing party. [Note 1.]
When an inter partes proceeding before the Board is settled, the parties should promptly notify the Boardof the settlement. It is not necessary that the parties file a copy of their settlement agreement with the Board.Rather, they may simply file a stipulation stating the desired disposition of the proceeding (i.e., “It is herebystipulated that the opposition be sustained,” “It is hereby stipulated that the petition for cancellation bedismissed with prejudice,” or the like). If there is a counterclaim, the stipulation should also state the desireddisposition of the counterclaim. If, in a proceeding with a counterclaim, the parties stipulate to the dispositionof the claim against which the counterclaim was brought, but there is no stipulation to dispose of thecounterclaim, and there is no withdrawal of the counterclaim, consent by one party to entry of judgmentagainst itself on the counterclaim, etc., the counterclaim will go forward, notwithstanding the fact thatjudgment has been entered on the original claim. See TBMP § 606.
If a settlement agreement is contingent upon amendment of a defendant’s subject application or registration,the request for amendment is governed by 37 CFR § 2.133(a) and should be filed with the Board. See TBMP
If an applicant fails to conduct his due diligence, then when the application is published for opposition, a third party may oppose the application alleging a likelihood of confusion between the applicant's mark and his registered trademark. If it is likely that confusion would occur between the source of the two marks and the opposer has senior rights in the mark, it may be wise to advise the applicant to abandon the application. However, there may be negative consequences to taking this action.
There may be times when a trademark practitioner will need to advise a client that it is in his best interest to abandon a trademark application or withdraw a Trademark Trial and Appeal Board ("TTAB" or "Board ") proceeding.
The USPTO is chiefly concerned with maintaining and protecting the trademark rights of worthy owners. However, if the USPTO determines that an existing owner of a trademark does not have the right to the trademark, it will strip the applicant of the mark.
Trademark cancellations are held before the Trademark Trial and Appeal Board (TTAB) of the USPTO. The TTAB is a governmental agency and as such, has its own set of rules governing both cancellations and oppositions.
Like every else involving the USPTO, timing is key. The time in which a cancellation proceeding must be filed is a function of the nature of the proceeding and the grounds upon which it sands. Ultimately, there are a few key benchmark dates that the Petitioner should keep in mind.
First, it is important to note that trademark cancellation proceedings are bound by time-constraints and must be filed against a defendant within five (5) years from the date of the registration of the trademark.
The mechanics for filing a Petition to Cancel may be found in the Trademark Trial and Appeal Board Manual of Procedure (TTAB). Specifically, under 15 U.S.C.
The Trademark Trial and Appeal Board (TTAB) is taking major steps to cleanse and streamline the registration of new trademarks by effectuating the removal of antiquated trademarks listed in the register that are no longer used in commerce.
While it is necessary for the plaintiff to show that he/she would be “damaged” in order to file a cancellation proceeding, this preliminary threshold issue is not enough to sustain a Cancellation Request – the plaintiff must also demonstrate why the trademark itself no longer warrants the protections afforded to Registered Trademarks.
This blog discusses trademark cancellation proceedings. Say you have a federally registered trademark and then a company comes along (usually an alleged competitor) and demands through their intellectual property law firm that you cancel your trademark, and if not, they threaten to file a TTAB trademark cancellation proceeding.
In the scenario above, the party that seeks to cancel your trademark will have to file a Petition to Cancel Trademark. There has to be proper grounds to file the challenge (see below). Once filed, the case proceeds just like a civil litigation case. The responding party has 40 days to respond.
In order to initial a cancellation proceeding, there has to be proper legal grounds to make the challenge.
If the petitioner files the cancellation proceeding within 5 years of the disputed mark's registration, the petitioner can raise any valid ground that any opposer could have originally claimed in opposing the registration of the mark. For example, the most common grounds to attack the validity of a trademark are:
If the disputed mark has been registered for more than 5 years, the only grounds for cancelling a trademark are:
One common challenge is one company making the claim that the registered trademark is likely to cause consumer confusion with their registered trademark (yes, you can have two federally registered trademark holders battling it out). One federal court case from the 9th circuit discusses this important trademark concept:
If you need help with a trademark cancellation proceeding, or need help with responding to an office action letter, trademark denial or opposition, contact us to discuss your case. In some cases we may be able to offer a low flat rate legal fee. Call us at (877) 276-5084.
Patent and Trademark Office due to a preexisting trademark registration.
The time in which a cancellation action must be filed depends on the grounds for cancellation. A cancellation petition may be filed at any time (1) within five years of the trademark registration date, (2) at any time if the trademark becomes abandoned, or (3) at any time if fraud is alleged in the procurement of the trademark registration, ...
In the United States, trademark owners have the right to cancel a trademark registration of any other party that it believes may be damaging to its own trademark rights. Petitions for cancellation of a trademark registration are heard before the U.S. Trademark Trial and Appeal Board, the adjudicative body of the United States Patent ...
The Lanham Act provides that the defendant may assert equitable defense in all inter partes proceedings.
Some affirmative defenses include: (1) unclean hands; (2) laches; (3) estoppel; (4) acquiescence; (4) fraud; (5) mistake; (6) prior judgment; (7) third parties have used similar marks for similar goods, thus the mark is weak and entitled to a narrow scope of protection; or (8) any other matter that constitutes an avoidance.
The elements of laches are (1) unreasonable delay in assertion of a party's rights against another; and (2) material prejudice to another attributable to that delay. There are two categories of prejudice, loss of evidence or memory of witnesses due to delay and (2) economic prejudice.