Anaya Nolan
In the United States, common law trademark rights are acquired by using the mark in business. These rights are limited to the geographic area in which the mark is used. For example, if a coffee blend is sold under the name BLASTER in California only, the trademark rights to that name exist only in California. Federal registration, on the other hand, is a formal acknowledgement of rights already in existence and provides additional rights not available under common law. It is possible to cancel a federal trademark registration, but this does not invalidate the trademark itself. A petition for cancellation can be filed at any time after a federal trademark registration has been granted, but if the registration is more than five years old, the grounds for cancellation are limited. The Trademark Trial and Appeal Board (TTAB) and the Federal Courts share the power to cancel federal trademark registrations issued by the United States Patent and Trademark Office (USPTO).
Characteristics and Values
| Characteristics | Values |
|---|---|
| Can a common law mark cancel a federal registration? | No, but it can be a ground for challenging the registration. |
| Can a federal trademark registration be cancelled? | Yes, by the Trademark Trial and Appeal Board (TTAB) and the Federal Courts. |
| Who can file a petition for cancellation? | Any person who believes that they are or will be damaged by the registration of a mark. |
| When can a petition be filed? | Any time after a federal trademark registration has been granted, but if the registration is more than five years old, the grounds for cancellation are limited. |
| What are the common grounds for cancellation after five years? | The registered trademark is generic of the goods and/or services described in the registration. |
| What are the benefits of federally registering a trademark? | It empowers the Patent and Trademark Office (PTO) to police the mark by rejecting subsequent applications, gives the holder the right to file a lawsuit in federal court to enforce their rights, and makes it easier to apply for foreign trademark registrations or to stop the importation of infringing goods. |
| What are common law trademark rights? | Trademarks are words, phrases, symbols, or sounds that you use to identify your business and are acquired just by using your trademark in your business. |
| What is the difference between common law and federally registered trademarks? | Common law trademark rights are limited to the geographic area in which the mark is used, while federally registered trademarks have a wider geographic reach of protection. |
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What You'll Learn
Common law trademark rights vs. federal trademark registration
Although it is commonly assumed that once a federal trademark registration is obtained, it confers the exclusive right to use the mark on particular goods or services, this is not always the case. Trademark law is complex, and a trademark registration does not guarantee the exclusive right to use the mark in all circumstances.
Under common law, trademark rights within a certain territory are based on the priority of using a mark within that territory. Trademark "registration" is more of a formal acknowledgment of rights already in existence. In the United States, trademark rights are granted based solely on the use of the mark without any registration. This means that an unregistered prior user may have superior rights within a certain territory.
Common law trademark owners must use state courts and laws to enforce their trademark rights, whereas registered trademark owners can use federal courts and law. This means that decisions can vary according to state laws, whereas federal law provides a uniform set of laws, resulting in more predictable decisions and remedies. The federal law remedies also broaden in worse cases of infringement, known as "counterfeiting".
Another difference is that common law trademark owners must first establish that they have a common law trademark to sue for infringement. This involves a fact-intensive process of proving when and where the mark has been used in association with certain goods or services. On the other hand, registered trademark owners do not have this burden, and the onus is on the defendant to show why the mark should not be afforded federal protection.
A petition to cancel a federal trademark registration can be filed at any time after it has been granted, but if the registration is more than five years old, the grounds for cancellation are limited. The most common ground for cancellation of a trademark registration that has been registered for more than five years is that the registered trademark is generic for the goods and/or services described in the registration.
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Grounds for cancellation
A common law trademark refers to the rights belonging to the first person or company to use a particular mark on goods or services in a limited geographical area. Common law trademark rights may be used as a defence against infringement claims, and a common law trademark owner can cancel a federal registration less than five years old. However, it's important to note that common law trademark rights can be challenging to enforce due to the lack of a public record of trademark use and registration.
After five years, the grounds for cancellation of a federal trademark registration are limited to those listed in the statute. The most common ground for cancellation is that the registered trademark is generic for the goods and/or services described in the registration. Other grounds for cancellation include:
- The registered mark has never been used in commerce in connection with the goods or services recited in the registration.
- The registered mark has become the common descriptive name of an article or substance, or the registration was obtained fraudulently or contrary to specific provisions.
- The registered mark is being used to misrepresent the source of the goods or services in connection with which the mark is used.
- Non-use of the mark in commerce due to a trade embargo, provided the holder is willing and able to continue using the mark.
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Cancellation process
Trademark cancellation is the legal process of removing a registered trademark from the books to allow the trademark to be registered by another party. The Trademark Trial and Appeal Board (TTAB) and the Federal Courts share the power to cancel federal trademark registrations issued by the USPTO. The USPTO is chiefly concerned with maintaining and protecting the trademark rights of worthy owners. However, if the USPTO determines that an existing owner of a trademark does not have the right to the trademark, it will strip the applicant of the mark.
Any person who believes that they are or will be damaged by the registration of a mark on the principal register may file a petition to cancel a registration of a mark, stating the grounds relied upon, upon payment of the prescribed fee. The petitioner must prove that the mark will cause harm if it is not canceled. The petition must be filed within five years from the date of the registration of the mark. If the registration is more than five years old, the grounds for cancellation are limited. The most common grounds for cancellation of a trademark registration that has been registered for more than five years are that the registered trademark is generic for the goods and/or services described in the registration.
A junior applicant can file a Petition for Cancellation before the TTAB if they believe that a senior, existing applicant is negatively affecting and/or preventing its own mark from registering. The Lanham Act, officially known as the Trademark Act of 1946, is a federal statute in the United States that governs trademark law. It was enacted by President Truman and provides a comprehensive framework for the registration, protection, and enforcement of trademarks.
Trademark case law is very complex, comprising a number of federal Acts dating back to 1881. Almost every Petition to Cancel requires a legal argument. While the basic arguments are not difficult to make, the long case law history and expansive rules of procedure can make litigation tricky. It is strongly recommended to work closely with a qualified trademark attorney who can provide personalized advice and assistance throughout the process.
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Petition for cancellation
A petition for cancellation of a trademark registration can be filed at any time after a federal trademark registration has been granted by the United States Patent and Trademark Office (USPTO). However, if the registration is more than five years old, the grounds for cancellation are limited. In such cases, the Trademark Act provides that the registration can only be cancelled on the grounds listed in the statute.
The Trademark Trial and Appeal Board (TTAB) and the Federal Courts share the power to cancel federal trademark registrations issued by the USPTO. A petition for cancellation can be filed by any person who believes that they are or will be damaged by the registration of a mark. The petition must be filed with the required fee and must state the grounds for cancellation.
Common grounds for cancellation include non-use, abandonment, genericness, descriptiveness, likelihood of confusion, fraud, bad faith, or prior rights. For instance, a petition for cancellation may be filed if a trademark owner believes that a registered trademark is damaging their trademark rights, or if a junior applicant believes that a senior applicant is negatively affecting their mark from registering.
It is important to note that trademark law can be complex, and it is recommended to consult with an experienced trademark attorney before proceeding with a petition for cancellation. The choice to hire a lawyer may exist for everyone, and many parties in cancellation proceedings choose to work with one.
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Trademark law complexities
Trademark law is a complex area of intellectual property law, with a multitude of intricacies and challenges. The process of trademark procurement can be a labyrinth of legal complexities, even for experienced entrepreneurs. The law is designed to protect consumers from being misled about a product or service's origin or quality and to incentivize manufacturers to maintain quality. While federal registration is beneficial, it does not guarantee the exclusive right to use the mark, and common law rights may supersede federal registration in certain cases.
One complexity arises from the fact that trademark rights are based on the priority of use within a territory. This means that an unregistered prior user may have superior rights to a federal registrant within that territory, requiring a careful evaluation of complex facts and law. Additionally, international agreements such as the Paris Convention, the Madrid Protocol, and the TRIPS Agreement further complicate trademark law by introducing minimum standards and procedures for cross-border recognition and protection.
Trademark law also intersects with the First Amendment, with some courts holding that it trumps trademark law under certain circumstances, especially when parodies are non-commercial in nature. Another complexity arises from the fact that trademarks can lose protection through a process called genericide, where a trademark becomes so widely used that it loses its distinctiveness and legal protection, such as the term "escalator."
The cancellation of trademark registrations is another intricate aspect of trademark law. While a petition for cancellation can be filed at any time after federal registration, the grounds for cancellation are limited for registrations older than five years. Common grounds for cancellation include the mark becoming generic or the abandonment of the mark.
Given the complexities of trademark law, engaging a qualified trademark attorney is essential to safeguarding a brand effectively. A skilled attorney can guide businesses through the intricacies of trademark procurement and provide valuable insights tailored to their unique needs.
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Frequently asked questions
Yes, a common law mark can cancel a federal registration. However, it is important to note that a common law trademark has geographical limitations. Common law trademark rights are based on the priority of use of a mark within a certain territory.
A common law trademark refers to the rights belonging to the first person or company to use a particular mark on goods or services in a limited geographical area.
A petition to cancel a federal trademark registration can be filed at any time after the registration has been granted. However, if the registration is more than five years old, the grounds for cancellation are limited. To file a petition, one must state their interest in the case, the cause of action (why the mark deserves to be canceled), and pay the required fee.
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