Suppose that you want to register a trademark that identifies a source of goods or services for your business. What if you file a federal trademark application and the U.S. Patent and Trademark Office refuses registration of the trademark based on a likelihood of confusion with another trademark registration? Can you cancel the cited trademark registration with the U.S. Patent and Trademark Office because of non-use in commerce? The answer is “YES!” if the trademark has been abandoned for non-use or never been used in commerce or before a particular relevant date.
Under U.S. trademark laws, a petition for cancellation of a trademark registration may be filed at any time by any person who believes that he is or will be damaged. For trademark registrations within five years, the grounds for cancellation of a trademark registration include that the trademark has been abandoned due to nonuse with intent not to resume use and nonuse for three consecutive years. For trademark registrations older than five years, a petition for cancellation of trademark registration is enumerated in Trademark Act § 14, 15 U.S.C. §1064, which provides for cancellation of a trademark registration that has been abandoned for non-use. In either situation, this means that the trademark has been used in commerce, but subsequently was abandoned for non-use. Continue Reading