Legal Bases And Reasons For Cancellation Of A Trademark

Categories: Asma Raza

The registered trademark is not solid, permanent or “bulletproof”. The owner will have to renew his registration from time to time to keep it active. In addition, someone else can dispute the registration through a process known as trademark invalidation. There are various legal grounds or grounds for invalidating a trademark. In a previous article, I looked at site leaving as the reason why the registration may have been canceled. This article summarizes these and some other reasons for removing the mark.

Abandonment

One of the most common reasons a person might try to cancel a registration is because they believe the trademark it refers to has been abandoned. It simply means that the owner has stopped using the trademark and has given up all rights. However, proving abandonment isn’t always that simple. If someone stops using a trademark with the intention of not using it again, they resign. But how can you prove that you didn’t intend to use it again? In most cases, you are unlikely to be able to do this.

If your trade mark application has been refused on the basis of an existing registration, you must check that the mark is used. Termination is one of the main reasons for removing a trademark as it may pave the way for your claim. If the owner has provided their mark, it is unlikely they will respond to your cancellation request. In that case, you won’t have to spend a lot of time or money to quit.

Priority and likelihood of confusion (Trademark Opposition)

When the Trade Mark Office evaluates applications, it looks for conflicting trademarks itself. However, sometimes the third party believes that the recording infringes their rights. They may have a trademark registration that they feel is too similar. Or, they may not be registered but instead have trademark rights under common law. Priority and likelihood of confusion are grounds for removing a trademark when someone believes that it has superior rights.

Why is this called “Priority and Likelihood of Confusion”? This is because you need to unsubscribe from both. “Priority” simply means that the requester (such as the “requester” inverted) was first. In fact, they say they have the name “dibs”. Their priority claim may be based on the filing date of the federal trade mark. Or they can use their brand first. But they must also rely on the likelihood of confusion with a registered trade mark. It just means that their brand and trademark are too similar.

The striking feature of priority and the risk of confusion is that after 5 years of registration, it is no longer possible to cancel the registration on this basis.

Generality

While some of the grounds for invalidating a trade mark are no longer available after a trade mark has been registered for 5 years, due to its general nature, there is still a possibility of cancellation. A mark becomes generic when it is commonly used as the product or service for which it is used. You are probably using certain brand names as general terms without even realizing it. For example, if you have a cut you can ask someone to bring you a “bandage”. However, BAND-AID is actually the brand used for adhesive bandages. If you want to know which actor was in that movie, you can tell someone to google him. You clearly wanted to check it with a search engine (whether it’s Google Search or not).

When a name becomes generic, it is no longer a brand or character. It is no longer able to identify a specific brand of a product or service and instead becomes synonymous with the product / service itself. This usually happens when something becomes so popular and successful that it becomes ubiquitous. You might think it’s just a good thing, but from a brand perspective, it’s literally the death of the brand.

Description

Just like generality, this is another reason to invalidate the mark due to its specificity. However, unlike the general rule, a registration can only be canceled because it is descriptive within 5 years of registration. Although the Trademark Office checks requests for descriptive characters, sometimes these are locations. These records should be submitted to third parties as descriptive terms are important in marketing. Giving a person the exclusive right to use descriptive terms can be detrimental to competition.

Do you wish to invoke one or more of the above grounds for trademark invalidation?

This is the case of sight deposit, trademark withdrawal, please note that this is a mini-process with process, procedure and schedule. It is highly unlikely that a self-advocate will be able to request or defend an appeal. If you would like me to analyze your situation, please call me at 042-37176593-4, email asma@raza-associates.com , or complete the contact form below. on this page to set up your first free consultation today. I’m looking forward to speak with you.

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