USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
Marks registered on the Supplemental Register do not have a publication period and are not subject to opposition. Cancellation actions may be filed at any time, but grounds for cancellation actions narrow after five years of registration (15 USC § 1064). Cancellation actions against registrations five years or older can only be cancelled on limited grounds set forth in 15 USC § 1064 (3) such as genericness, fraud, abandon - ment, functionality and certain misrepresentations. Once a mark is five years old, it cannot be cancelled merely based on confusion with a prior trade mark or descriptiveness. A person seeking to oppose or cancel a mark should not wait too long after learning of a ground to do so because the defence of laches or acquiescence can be raised. The parties may generally suspend TTAB proceedings to allow time to negotiate a settlement. 5.2 Legal Grounds for Filing an Opposition or Cancellation Trade Mark Common grounds for filing an opposition or cancel - lation include: • likelihood of confusion with a prior registered mark, application or common law right; • descriptiveness; • genericness; • merely a surname; • deceptively misdescriptive; • not inherently distinctive and lacks acquired dis - tinctiveness; • product configuration mark is functional; • mark is ornamental or otherwise fails to function as a mark; • no use or bona fide intent to use (for intent to use applications); • use of name, image or signature of a living person without consent; • fraud on the PTO; • applicant is not the owner; and • dilution.
After five years of registration, the grounds to cancel a mark narrow to exclude some of these grounds. See 5.1 Timeframes for Filing an Opposition or Cancel- lation . In 2020, the PTO created the following special abbrevi - ated procedures to eliminate certain fraudulent marks: • Expungement – Applies where the registrant never used the mark for some or all of the goods or ser - vices. This proceeding is available between three and ten years after registration. • Re-examination – Applies where the registrant was not using the trade mark in connection with some or all of the goods or services prior to the relevant date. This proceeding must be brought in the first five years of registration, but it can only be brought against a US filing, not one based on a foreign registration or the Madrid Protocol. Copyright For formal cancellation of registration, see 5.4 Oppo- sition or Revocation/Cancellation Procedure . 5.3 Ability to File an Opposition or Revocation/Cancellation Trade Mark Any person or entity that believes they may be harmed by the registration of a mark may file an opposition or cancellation. The party need not own a trade mark registration or common law right, as long as it has a “legitimate interest” beyond that of an interloper. A party domiciled in the US may represent itself before the TTAB or hire an attorney. An entity domiciled out - side the US must be represented by a US attorney. The cost of an opposition/cancellation varies but can be very expensive. While proceedings are more lim - ited than federal litigation, such actions go forward as they would in federal court with pre-trial and trial issues. See 5.4 Opposition or Revocation/Cancella- tion Procedure .
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