USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
Trade mark oppositions (or extensions of time to oppose) can be filed during the 30-day publica - tion period. Up to a 90-day extension is available for good cause. Another extension of 60 days can be obtained with consent of the applicant. 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, abandonment, 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 pro - ceedings 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 can - cellation 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 distinctiveness; • product configuration mark is functional; • mark is ornamental or otherwise fails to func - tion 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 Cancellation . In 2020, the PTO created the following special abbreviated procedures to eliminate certain fraudulent marks: • Expungement – Applies where the regis - trant never used the mark for some or all of the goods or services. 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 Opposition or Revocation/Cancellation Proce- dure .
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