Trademark Cancellation Proceedings

Strengthen Your Intellectual Property

The process can be complex and lengthy. You are likely focused on developing your company and are probably working full-time in that capacity. Taking on this task yourself can limit your ability to focus on your business.Prevent future issuesReceive proactive legal risk management that will help you avoid problems before they arise by tapping into senior attorneys with considerable business experience.

What is a service mark?

A trademark is essentially a brand name. It’s a word, phrase, symbol, and/or design that distinguishes the source of goods of one party from another. A service mark is any word, name, symbol, device, or any combination, used (or intended to be used) in commerce to identify and distinguish the services of one provider from the services provided by others, and to indicate the source of the services.

 

When should I get one?

It depends on a myriad of factors, but a lot of businesses will trademark and incorporate simultaneously. It’s advisable to trademark at least your name and logo in order to prevent others from ripping off your company and be provided a legal recourse if this ever happens.

 

Is my trademark protected?

Trademark rights may arise through qualifying use without federal registration. The existence and geographic scope of those rights depend on factors such as distinctiveness, priority, and market penetration.

Registration on the Principal Register provides important benefits, including a legal presumption of ownership and the exclusive right to use the registered mark nationwide for the listed goods or services, subject to applicable limitations and earlier rights. Cancellation of a federal registration does not, by itself, eliminate every right that may exist through continued use.

When does the USPTO deny applications?

Applications are routinely rejected based on the “likelihood of confusion” standard. According to the USPTO, “likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source. Each application is decided on its own facts, and no strict mechanical test exists for determining the likelihood of confusion.” As you can see, there is no bright-line rule to follow. That’s why utilizing a top trademark lawyer experienced with the USPTO makes sense.

 

How long does it take?

There is no fixed completion time for a TTAB cancellation proceeding. Timing depends on the claims, discovery, motions, settlement discussions, suspensions, and whether the case proceeds through trial and briefing.

After institution, the Board issues a schedule establishing the relevant deadlines. Follow that order and any subsequent changes rather than relying on a general estimate. Cancelling a registration through a contested proceeding is different from applying to register a trademark.