If you wish to trademark any intellectual property, you do not technically need to hire an attorney. It is possible but difficult to handle trademark registration on your own. However, hiring an experienced trademark attorney to assist you with the registration process will almost certainly make it a much smoother experience for you.
An experienced trademark attorney will help you conduct a thorough trademark search to make sure your desired trademark is available for you to register. Additionally, your trademark attorney can help you determine the best approach to any potential trademark infringement you encounter in the future. If you need to oppose another party’s trademark registration, or if you believe that another trademark that has already been registered qualifies for cancellation, an attorney will be essential in the proceedings that will follow.
CAN ANY ATTORNEY FILE A TRADEMARK?
If you wish to hire legal counsel as you navigate the trademark registration filing process, it is best to work with an attorney specializing in intellectual property and trademark-related legal matters. Most attorneys focus on one or more practice areas and generally will not accept cases that fall outside the purview of those practice areas. Generally, it is best to work with an attorney who has solid experience handling cases similar to yours.
CAN YOU CHALLENGE A TRADEMARK REGISTRATION?
The USPTO regularly publishes an Official Gazette, a periodical that includes all trademarks currently under review for registration. The purpose of the Official Gazette is to inform the public about trademark applications and newly registered trademarks, so they have the opportunity to challenge a trademark’s registration. It is possible to challenge a trademark by issuing your objection in writing to the USPTO within 30 days of a trademark’s display in the Official Gazette.
Typically, the acceptable grounds for challenging a trademark published in the Principal Register of the Official Gazette include confusing similarity with an existing mark or potential damage that the proposed mark may cause to the challenging party. Essentially, filing a trademark opposition is the best way of preventing a competing trademark from being registered.
TRADEMARK OPPOSITION VS. TRADEMARK CANCELLATION
It’s important to know the differences between the two primary forms of challenging a trademark. Trademark opposition occurs when a party formally objects to the registration of a proposed trademark. Trademark cancellation seeks to cancel a trademark that has already been registered. If you notice a trademark in the Principal Register that has not yet been approved, your attorney can help you file your opposition. If you discover a trademark that is already registered and you believe valid grounds exist for its cancellation, your attorney will help you with the trademark cancellation petitioning process.
Trademark cancellation is commonly used because it can effectively allow the petitioning party to avoid a protracted federal trademark infringement case. In most cases, parties that file for trademark cancellation typically do so because they believe the trademark in question is infringing upon their rights. If the trademark owner does not fight the cancellation, this can be a relatively easy way for the petitioning party to eliminate perceived competition from the market and protect their own trademark.
HOW LONG DOES IT TAKE TO CANCEL A TRADEMARK?
It is also possible to petition the USPTO to cancel a trademark that has already been registered. Any party may file a petition for the cancellation of a trademark at any time. However, if the mark in question has been registered and in use for more than five years, the party petitioning for cancellation may only cite abandonment of the mark, misuse of the mark, or fraud as acceptable grounds for cancellation.
Once the USPTO receives a legitimate petition to cancel a registered trademark, the registrant and owner of the trademark in question must respond to the petition within 40 days. If they do not, the USPTO will likely issue a summary judgment in favor of canceling the trademark. The cancellation hearing offers both the registrant and the petitioning party the opportunity to make their cases concerning the mark. This process can involve many months of hearings and can easily extend beyond one or two years.
HOW DO YOU RESPOND TO A PETITION TO CANCEL A TRADEMARK?
Your Orange County trademark cancellations and oppositions attorney can help you determine the best way to respond to a petition to cancel your trademark, but it’s vital to remember the 40-day window you have in which to challenge the petition. You can file your answer to the petition electronically through the USPTO’s Electronic System for Trademark Trials and Appeals or formally serve a copy of your answer directly to the petitioner.
Section 300 of the Trademark Trial and Appeal Board Manual of Procedure (TBMP) includes all applicable regulations you must follow when responding to a petition to cancel your trademark. It is vital to follow these regulations carefully, or you risk a summary judgment in favor of canceling your trademark. Your attorney can help you navigate these regulations and craft your answer accordingly. Your answer should include all affirmative defenses that support your desire to continue using the trademark.
It’s also important to remember the potential for filing your counterclaim for cancellation. If another party has filed a petition to cancel your trademark, it is likely because they hold a competing trademark. Consult your Orange County trademark cancellations and oppositions attorney to determine whether you may have grounds to file your counterclaim to have the petitioner’s competing trademark canceled.
WHAT HAPPENS WHEN TRADEMARKS ARE CANCELED?
When a trademark is formally canceled, it is effectively available to be registered by a new owner. If you own a trademark but abandon it or stop using it for three years, the USPTO will cancel your trademark registration, and you will no longer have any of the legal protections that come with having an officially registered trademark. Another party may register the trademark, or you may file a petition to revive your trademark if you meet certain criteria. If the USPTO deems that your trademark does not qualify for revival, you will need to submit USPTO registration again.
WHAT TO EXPECT FROM THE TRADEMARK TRIAL AND APPEAL BOARD
The USPTO’s Trademark Trial and Appeal Board (TTAB) handles all trademark cancellations and opposition petitions. If another party has submitted a petition to oppose your trademark’s registration, you must serve your response through the TTAB within 40 days, or the TTAB will likely issue a summary judgment against you. If you receive a notice of a petition to cancel your trademark, the TTAB will handle the proceedings as well.
Ultimately, dealing with the TTAB in any capacity can be very challenging. Hiring an experienced Orange County trademark cancellations and oppositions attorney is your best option when confronted with a petition to oppose your trademark registration or cancel your existing trademark. Your attorney can help you determine the best approach to the situation and help you keep your trademarks as protected as the law allows.
WHY YOU NEED TRADEMARK ATTORNEY FOR YOUR LEGAL COUNSEL
Navigating the USPTO’s regulations and policies and the trademark laws of the United States can be incredibly difficult. Depending on the nature of your business, you may encounter trademark disputes regularly. Trademark opposition and cancellation proceedings could become essential parts of your business strategy as you establish your brand identity. You may also unexpectedly experience disputes raised by other parties who contest your right to a registered trademark. Hiring an experienced Orange County trademark cancellations and oppositions attorney is the best way to handle any of these situations.
The attorneys at Blake & Ayaz have years of experience in intellectual property law. We have helped many Orange County business owners protect their trademarks and pursue legal actions against other trademark owners under the laws and policies of the USPTO. We understand how daunting some trademark disputes can be for trademark owners and can help you navigate your trademark dispute with greater confidence. If you are ready to discuss your legal options with a reliable attorney, contact Blake & Ayaz today and schedule a consultation with an experienced Orange County trademark cancellations and oppositions attorney.