Invalidating a trademark Contactdating
The owner must file a "Declaration of Use" between the fifth and sixth year following registration, attesting to the continued use or excusable nonuse of the mark on or in connection with the goods and/or services in the registration.
In addition, the owner must file a combined Declaration of Use (or Excusable Nonuse) and Application for Renewal between the ninth and tenth year after registration, and every 10 years thereafter, attesting to the continued use or excusable nonuse of the mark on or in connection with the goods and/or services in the registration and requesting to renew the registration.
The terms "trademark" or "mark" are commonly used to refer to both trademarks and service marks.
Although federal registration of a mark is not mandatory, it has several advantages, including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods and/or services listed in the registration.
We can assist you with determining which grounds may be appropriate to assert against a registration based on whether the registration is on the Principal or Supplemental Register and based on how many years have passed since the trademark registration issued.
If you have any questions, please feel free to contact our office for a courtesy trademark consultation.
Generally, the court will consider evidence addressing various factors to determine whether there is a likelihood of confusion among consumers.
If the registration is less than five years old, the party challenging the trademark rights can rely on any ground that could have prevented registration initially.
A trademark is generally a word, phrase, symbol, or design, or a combination of these elements, that identifies and distinguishes the source of one party's goods from those of others.
A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than goods.
Other factors that courts typically consider include how and where the parties' goods or services are advertised, marketed, and sold; the purchasing conditions; the range of prospective purchasers of the goods or services; whether there is any evidence of actual confusion caused by the allegedly infringing mark; the defendant's intent in adopting its mark; and the strength of the plaintiff's mark.
The particular factors considered in a likelihood-of-confusion determination, as well as the weighing of those factors, vary from case to case.
If these documents are not timely filed, the registration will expire or be cancelled and cannot be revived or reinstated.