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/learning-and-resources/official-gazette/trademark-official-gazette-tmog 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 2015 national average total cost for opposition/cancellation litigation was about $50,000 through discovery and about $95,000 to completion of the litigation, as reported in a 2015 report by the American Intellectual Property Law Association.