 Does the Trademark Office Make Mistakes?
Everybody makes mistakes, including the United States Patent and Trademark
Office in the registration of trademarks. It might miss your similar
product or trade name in approving a trademark for registration.
Even without a mistake, circumstances can change to permit cancellation of
a mark.
How Do I Find
Out? The United States Patent and Trademark Office publishes
an "Official Gazette - Trademarks" in which the Trademark Office
gives the public a 30-day opposition period for marks that are entitled to
registration on the Principle Register. Notices are also posted on
the Office’s web site at http://www.uspto.gov/news/og/trademark_og/index.jsp
under the subtitle "Trademark Official Gazette."
Marks registered on the Supplemental Register are not given a 30-day
opposition period, but are published in the Official Gazette after
registration along with the marks in the Principle Register under the
subtitle "Registration Certificates." A person might also
find out about a registration by its use in commerce, or by some other
means well after the date of registration. In any case, a person who
is damaged by a registration is entitled to seek to have the registration
canceled.
What are My
Rights? If you find out about a forthcoming registration of a
mark during the 30-day opposition period and you believe that a
registration of that mark will damage you, then you can file an opposition
to that registration before it becomes final. If you discover a mark
that has already been registered, you can seek to have it canceled.
For example, if the registration resembles your mark or trade name for
a similar product or service in the United States, then you can oppose the
registration and, if it is already issued, you can seek to have it
canceled. However, your objection must be timely and the type
of proceeding depends on when you file your objection. The Patent
Office publishes a current schedule of fees
for filing such objections, currently $300.
What Do I Complain About? A common complaint would be that there
is a likelihood of confusion to the consuming public. There are
other specified statutory grounds for opposition or cancellation. A
complaining party must prove one of the statutory grounds for opposition
or cancellation in order to have the registration canceled.
The following is a list (not exhaustive) of other significant grounds
for cancellation of a mark: merely descriptive or deceptively
misdescriptive; primarily geographically descriptive; primarily
geographically deceptively misdescriptive; primarily merely a surname;
disparages members of a particular group; scandalous; falsely suggests a
connection with the complaining party's name or identity; functional
product design; the product design has not acquired distinctiveness; no
bona fide use of the mark in commerce prior to the filing of the use-based
application; no bona fide intent to use the mark in connection with the
identified goods/services as of the filing date of the application; mere
background design that does not function as a mark separate and apart from
the words displayed thereon; registered to other than the rightful owner;
ornamental and has not become distinctive as an indication of the source
of defendant's goods; not been used as a trademark or service mark;
represents multiple marks in a single application; abandoned due to
nonuse or due to a course of conduct that has caused the mark to lose
significance as an indication of source; name of a particular living
individual without the individual's consent; product design is generic; or
dilute the distinctive quality of complaining party's famous mark.
My Mark or Trade Name
is Not Registered. Does that Matter? A person opposed to the
registration of a mark does not have to have a registered mark in Patent
Office or even be the exclusive owner of a competing mark or trade
name. As long as you believe you are damaged, you have the right to
petition for cancellation even if you are not using the mark in question
as trademark.
A couple of examples might be helpful in understanding what is
objectionable---
The registration of "Western Metalworking" as title for
specialty magazine was cancelled from the supplemental register.
There was a likelihood of confusion with "Metalworking,"
magazine, which was registered on principal register. It was found
that purchasers of advertising space might believe "Western
Metalworking" magazine was the western edition of
"Metalworking" magazine.
The registration of "Copper Tan" for a sun tan lotion was
canceled from the supplemental register. This prior use (but not
registration) of "Coppertone" as a mark for sun tan lotion took
priority. The Copper Tan registrant was permitted to employ on its
product statutory phrase "Reg. U.S. Pat. Off," which led to
confusion and damaged the makers of unregistered "Coppertone."
Two Types of
Proceedings. There are two different protest proceedings: An
"Opposition" proceeding can be filed within 30 days after public
notice of marks entitled to be registered, and a "Cancellation"
proceeding can be filed usually within 5 years, but in limited
circumstances can be made at any time. These proceedings are inter
partes, that is, they are proceedings where the complaining party
participates in the process, much like a lawsuit in court.
30-Day Opposition
Period. The person who is damaged by a registration can file
an "Opposition" to a registration within 30 days after
publication of notice of marks entitled to be registered in the Official
Gazette. Since a registration on the supplemental register is
not published in the Official Gazette for opposition, it is not subject to
an opposition proceeding.
An "Opposition" is filed with the Trademark Trial and Appeal
Board. If it is the last minute within that 30-day period, you can
request a 30-day extension of time. Two further extensions of time
may be requested but only upon a showing of good cause.
5-Year Cancellation
Period. For the vast majority of cancellations, one may file
a petition for cancellation within five years from the date of
registration of the mark.
No-limit Cancellation Period.
A mark or trade name can be contested after the above 5-Year Period under
certain circumstances. Namely,
- if the registered mark becomes the generic name for the goods or
services (e.g., super glue); or
- if the registered mark becomes the functional name; or
- if the registered mark was abandoned; or
- if the registration was obtained fraudulently or contrary to the
laws for certification and collective marks (a certification mark is
symbolic of guaranty of meeting of certain standards and a collective
mark is symbolic of membership of user in some collective group or
organization); or
- if the registration is on immoral, deceptive, or scandalous matter;
or matter which may disparage or falsely suggest a connection with
persons, living or dead, institutions, beliefs, or national symbols,
or bring them into contempt, or disrepute; or be a geographical
indication; or
- if the registered mark is on the flag or coat of arms or other
insignia of any state or nation; or
- if the registered mark is a name, portrait, or signature identifying
a particular living individual except by his written consent, or the
name, signature, or portrait of a deceased President of the United
States during the life of his widow, if any, except by the written
consent of the widow; or
- if the registered mark has not been published because it was
registered under trademark laws prior to the 1946 Lanham Act.
The Lanham Act, as amended, is the current law applying to
trademarks. It is also known as the Trademark Act of 1946 and
appears generally as 15 USC 1051, et seq. The earlier trademark
laws are the Act of March 3, 1881 and the Act of February 20, 1905; or
- if the registered mark has been used by, or with the permission of
the registrant, so as to misrepresent the source of the goods or
services on, or in connection with, which the mark is used.
Mark
Incontestability. The general rule is that the right of the
registrant to use such registered mark or trade name in commerce for the
specified goods or services that has been in continuous use for five
consecutive years after the date of registration can become incontestable
upon filing an affidavit. There are exceptions. A significant
exception is when someone else acquired a valid right to the mark or trade
name under the law of any State or Territory by use of the mark or trade
name continuing from a date prior to the date of registration.
Attorney Fees. Our fees for litigation in the
form of a trademark opposition or cancellation are charged at the rate of
$250 per hour. A fixed price for services is available upon
request. The fixed price will generally be below the lowest national
average rate and will be determined after disclosure of the facts of the
case sufficient to estimate the time required. Actual hours required
vary widely and depend on the facts of the case.
The 2008 national average total cost for opposition/cancellation
litigation was about $80,000, as reported in a 2009 report by the American
Intellectual Property Law Association.
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