About Trademark Law

Trademark Opposition and Cancellation

Trademark Opposition

After a trademark examining attorney determines the mark meets the requirements for Federal registration, the application is published in the Official Gazette of the USPTO. Upon publication, a any person “who believes that he or she would be damaged by the registration of a mark on the Principal Register” may attempt to prevent the registration of the mark by filing notice of opposition within thirty days of the date of publication, or within an extension of time granted by the Trademark Trials and Appeals Board. 15 U.S.C. §1063(a); 37 C.F.R. §2.101(c); TMEP §1503.03.

Opposition is made by filing a complaint with the Trademark Trials and Appeals Board. The opposing complaint must be correctly formatted, signed by the plaintiff or the plaintiff’s attorney, and state the legal basis for opposition.

Grounds for opposition include, without limitation, the following:

• the mark is descriptive
• the mark is deceptive
• the mark is confusingly similar to another mark
• no bona fide use of the mark
• the registrant is not the rightful owner of the mark
• the mark is geographically descriptive

Trademark Cancellation

A trademark registration may be cancelled by a third-party who brings a petition to cancel. A petition to cancel can only be brought by “any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register […].” 15 U.S.C. § 1064.

If the registration is less than 5 years-old, then grounds for cancellation include:

• the mark is descriptive
• no bona fide use of the mark
• the registrant is not the rightful owner of the mark

The following are grounds for cancelling any registration, including those more than 5 years-old:

• the mark is deceptive
• the mark is confusingly similar to another mark
• the mark is no longer in use (abandonment)
• the mark is geographically descriptive

What if my trademark registration is opposed or petitioned for cancellation?

If an opposition to your trademark registration or a petition to cancel your registration is filed, it is critical that you file an appropriate and timely response with the US Patent and Trademark Trial and Appeals Board (“TTAB”). Failure to appropriately respond may result in a default judgment, which means that you lose the case and the right to present any evidence in your defense.

Have a Question about Trademark Opposition or Cancellation? Call a Hartmans Law attorney for a Free Consultation.