TRADEMARK CANCELATION V OPPOSITION
Once the United States Patent and Trademark Office (“USPTO”) approves a federal trademark application, the trademark is published for opposition. The trademark appears in the Official Gazette for a 30-day opposition window. If a party, or group of parties, feels that registration of the trademark will be harmful to them, they may file a Notice of Opposition during the opposition window seeking withdrawal of the trademark registration by the USPTO.
Even after the opposition window has closed, a party who believes they may be harmed by a trademark registration may have the trademark registration canceled, either fully or partially. I'm often asked to help determine whether an opposition or cancellation should be initiated. While the proceedings are similar, there are differences between other than the limited opposition window.
Both an opposition and a cancellation proceeding are adversarial proceedings initiated in the United States Patent and Trademark Office's Trademark Trial and Appeal Board ("TTAB") that seek to nullify and trademark registration or application for registration. Both require a Notice of Opposition/Cancelation that is nearly identical to a federal court complaint. The filer must set forth a fact supporting each element of its claims and must also establish standing, or his right to oppose the registration by demonstrating how the opposer would be damaged.
Typical grounds for both a cancellation and an opposition include the likelihood of confusion, priority (opposer was the first to use the mark), the trademark is descriptive of the goods or services claimed, the mark is not distinctive, or the mark has become a common descriptive name of an article or substance. Other, less asserted grounds include, abandonment of the trademark through non-use, fraudulent or illegal registration, the applicant is precluded from the registration via court order, the trademark includes a government insignia, the trademark contains immoral, deceptive or scandalous matter, and the mark identifies a living individual without that person's consent.
If a registration is five or more years old, however, certain grounds for cancellation are not available. See below for grounds for cancellation:
Within 5 Years of Registration
a merely descriptive, merely geographically descriptive mark, or a mark that is merely a surname;
a mark that falsely identifies the source of goods or services;
non-use or lack of bona fide intent to use for intent to use applications;
abandonment of a mark of at least 3 years;
fraud;
dilution
5 or More Years of Registration
mark has become the name of the good or service (generic);
abandonment;
functional mark;
abandonment;
fraud;
lack of control over the trademark;
misrepresentation of goods or services;
disparaging;
immorality or scandalous mark
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
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ahaji@ahajiamos.com