Trademark Opposition & Cancellation


Publication and Opposition

If the trademark application is approved for publication, the mark is published in the Official Gazette of the USPTO. Within 30 days of publication (extendable to 180 days) interested persons may file a petition opposing the proposed registration of the published mark. An interested person is anyone who has a real interest in the outcome of the proceedings and objectively believes that they will suffer damages if the mark is registered. The opposition may typically raise any legal defects in the application. However, opposition is frequently based on one or more of the statutory bars provided in Section 2 of the Lanham Act where the mark;

a. Consists of or comprises immoral, deceptive, or scandalous matter;

b. Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation.

c. Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent;

d. Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive;

e. Consists of a mark which when used on or in connection with the goods of the applicant is merely descriptive or deceptively mis-descriptive of them, or when used on or in connection with the goods of the applicant is primarily geographically descriptive of them.

f. Consists of a mark that is primarily merely a surname; or

g. Comprises any matter that, as a whole, is functional.


Cancellation Proceedings

Even after a trademark has been registered on the Principle Register, it is still subject to the possibility of cancellation. Any person that believes he/she is or will be damaged by the registration may petition to have the mark cancelled from the register. A cancellation proceeding may be filed any time after registration provided the cancellation request is based on one of the following;

a. The mark is or has become generic.

b. The mark is functional.

c. The mark has been abandoned.

d. Claims of fraud in obtaining the registration.

e. Claims of violating the registration of collective or certification marks.

f. Claims the mark does not meet Section 2 requirements in that the mark;

i.   Consists of or comprises immoral, deceptive, or scandalous matter.

ii.  Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation.

iii. Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent;

A petition for cancellation based on any other grounds, e.g. prior use of a confusingly similar mark or claims of descriptiveness, must be made within five years of the mark’s registration. Beyond this, the mark becomes incontestable as to common objections and the owners right to use the mark in connection with the goods or services for which five years use has been demonstrated shall be incontestable.