Trademark Cancellation

So what can you do if you really want to use a name, slogan, or logo and it looks like there’s a registration for that name, slogan, or logo; but when you check online, the business has gone out of business or that product is no longer being sold or service isn’t being offered under that name (In other words, it’s just been abandoned). 

Well, in those situations, if a Registered Trademark is what is stopping you from moving forward with your brand, whether it’s during prosecution or as part of a broader strategy, you can file a petition to cancel that Trademark Registration. 

So, when does this occur? Well, it occurs, like I said a second ago, during what’s called Prosecution or Step 4 of the E5 Trademark System, Examination. So, sometimes an examiner will cite a registered mark against your application, but you’ll discover that that business is no longer functioning and that the product is no longer sold.  Well, you can petition to cancel that mark so that the examiner will withdraw that hurdle to your registration and get your mark allowed. Another example is, as part of a broader branding strategy, as your competitors go out of business or quit using marks and brands, you can actually grow the space (the scope) of your Trademark protection by cancelling marks and petitioning for the cancellation of marks that might be interpreted as limiting the scope of your own mark. And also, a Trademark Cancellation can eliminate uncertainty.

So, as part of due diligence or some other transaction, you might have a fear or an investor might have a fear that some other mark gives its owner the rights to sue your company. And of course, investors, during a business transaction, are looking to minimize the risk that you’re taking on.

Well, if that mark has indeed been abandoned and perhaps the owner of the mark is out of business, you can petition to cancel that registration and eliminate the uncertainty that that registered mark creates. So, this is the majority, not all, but the majority of cases when a Trademark Registration Cancellation comes up. 

So, if there’s a mark out there that you need to cancel or if somebody else is trying to cancel your own mark, Give me a call.