USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
A partial cancellation is possible. The petitioner may either elect to only challenge the registra - tion as to some of the goods or services, or the TTAB or court may find in favour of cancellation for only some of the goods or services such as where the registrant is still using the mark for some goods but has abandoned the mark as The USCO can cancel copyright registrations sua sponte where it discovers material errors in the registrations or upon request from the party listed as the copyright owner in the registration certificate (or its agent). The USCO, however, does not conduct adver - sarial cancellation proceedings and will not can - cel a registration based on an adverse claim by a third party. The USCO encourages parties to address disputes over the ownership of a copy - right in court. to others. Copyright In general, a party can challenge the validity of a copyright registration in federal court as a defence to an infringement claim or via a declar - atory judgment action. That said, only the USCO can cancel a copyright registration. If the claim is successful, the court directs that party to volun - tarily cancel the registration at the USCO. 5.5 Legal Remedies Against the Decision of the Trade Mark Office The TTAB only can adjudicate on registrability. It cannot issue injunctions or award damages. In the event that the examiner of a trade mark application refused registration after a final Office Action, the applicant may file an appeal with the TTAB in which both the applicant and the exam - iner submit arguments. If the TTAB rules against the applicant, the applicant can then appeal
the decision to Federal Circuit. Alternatively, an aggrieved party is also able to appeal by filing a civil action in a federal district court to review the decision of the TTAB on an open record de novo with the opportunity to submit new and additional evidence. In the case of opposition or cancellation actions, if a party wishes to appeal, the party may appeal to the Federal Circuit on a closed record or file an appeal in federal district court on an open record as above. It is important to caution that the deadlines to file appeals are strict and complex. The failure to timely submit cannot be cured by a late filing. 5.6 Amendment in Revocation/ Cancellation Proceedings Amendments of an application or registration are possible in an opposition or cancellation pro - ceeding; however, these amendments generally must be made with consent of the other party. 5.7 Combining Revocation/Cancellation and Infringement A trade mark cancellation action can be adju - dicated together with an infringement claim in federal court (or as part of an opposition process in the TTAB). A cancellation action cannot be a standalone basis on which to assert a claim in federal court, but it can be a supplemental claim or counterclaim in federal court. The claims gen - erally are considered at the same time by the same tribunal. 5.8 Measures to Address Fraud There is no specialised process for the cancel - lation of fraudulently filed trade marks. However, an applicant who seeks to cancel a fraudulent - ly filed registration can: (1) petition to cancel/ oppose the mark based on fraud, (2) file an
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