Orange County Trademark Cancellation Lawyer
Trademarks are “deceptively simple.” The process looks easy…fill in some blanks, submit your application, and then you get a certificate indicating your mark is registered. What many don’t realize is that what you put in those blanks will determine whether your certificate is worth the paper upon which it is printed. Worse yet, many won’t learn this until their registration is scrutinized many years later when they seek to enforce or defend their trademark rights.
Third parties can seek to cancel your registration on a number of grounds during the first five years of registration. For example, someone can seek to cancel your registration on the grounds that they began using the mark prior to you (or prior to your filing date where your trademark application was filed on an intent to use basis), because your mark is alleged to be descriptive of your underlying goods or services, or because you committed a significant error during the prosecution of your application.
In addition to defending against cancellation actions, the attorneys at The Kinder Law Group work with clients to initiate cancellation actions. For example, a trademark cancellation can help to remove registrations from the register that might be blocking a trademark owner’s ability to obtain registration of their mark. The Kinder Law Group has handled numerous matters before the Trademark Trial and Appeal Board – the following are just a few representative samples:
Representative Cases
(Client Denoted in Blue)
Gary Christopher v. Ryan Grepper
Proceeding No.: 92070792 (July 20, 2020)
Practice Area: Trademark Cancellation
Outcome: Trademark registrations cancelled by Trademark Trial and Appeal Board.
Description: Cancellation before the Trademark Trial and Appeal Board for COOLEST coolers trademark registrations based upon client’s earlier trademark rights.
Tara Brands, LLC v. Tiburon Holdings, Inc.
Proceeding No.: 92068088 (March 20, 2019)
Practice Area: Trademark Cancellation
Outcome: Trademark registration cancelled by Trademark Trial and Appeal Board.
Description: A fraudulent trademark registration for ANATOMY was blocking client’s application to register the ANATOMY trademark for hair care products. Petitioned to cancel the fraudulent registration and successfully moved the Trademark Trial and Appeal Board for terminating sanctions when the opposing party failed to respond to discovery.
Tamara Latta v. Yapp Media, LLC
Proceeding No.: 92066869 (January 10, 2018)
Practice Area: Trademark Cancellation
Outcome: Trademark registration cancelled by Trademark Trial and Appeal Board.
Description: A fraudulent trademark registration for SPORTSYAPPER was blocking client’s application to register the SPORTSYAP! trademark for a sports app. Petitioned to cancel the fraudulent registration and successfully moved the Trademark Trial and Appeal Board for default judgment when the opposing party failed to respond.
LUV.IT Technologies, Inc. v. Bedrock VC, Inc.
Proceeding No.: 92065031 (March 26, 2018)
Practice Area: Trademark Cancellation
Outcome: Successfully defended attempt to cancel client’s trademark registration.
Description: When a company attempted to register LUVIT as a trademark, the U.S. Patent and Trademark Office refused registration based upon our client’s registration for LOVE IT. The company then resorted to trademark bully tactics and attempted to cancel our client’s trademark registration. Through careful and strategic tactics, The Kinder Law Group used the motion and discovery processes to place the case in position for judgment on the pleadings. The Trademark Trial and Appeal Board granted the judgment on the pleadings and dismissed the cancellation attempt.
Streamline Design & Silkscreen, Inc. v. Paper, Denim and Cloth, Inc.
Proceeding No.: 92062238 (March 29, 2016)
Practice Area: Trademark Cancellation
Outcome: Trademark registrations cancelled by Trademark Trial and Appeal Board.
Description: Several fraudulent trademark registrations for RESIN were blocking client’s application to register the IRON & RESIN trademark for retail clothing store services. Petitioned to cancel the fraudulent registrations and successfully moved the Trademark Trial and Appeal Board for default judgment when the opposing party failed to respond.
And many others…..
Trademark Laws
15 U.S.C. § 1064. Cancelation of registration. A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of dilution under section 43(c), by the registration of a mark on the principal register established by this Act, or under the Act of March 3, 1881, or the Act of February 20, 1905:
(1) Within five years from the date of the registration of the mark under this Act.
(2) Within five years from the date of publication under section 12(c) hereof of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905.
(3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 4 or of subsection (a), (b), or (c) of section 2 for a registration under this Act, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.
(4) At any time if the mark is registered under the Act of March 3, 1881, or the Act of February 20, 1905, and has not been published under the provisions of subsection (c) of section 12 of this Act.
(5) At any time in the case of a certification mark on the ground that the registrant (A) does not control, or is not able legitimately to exercise control over, the use of such mark, or (B) engages in the production or marketing of any goods or services to which the certification mark is applied, or (C) permits the use of the certification mark for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies:
Provided, that the Federal Trade Commission may apply to cancel on the grounds specified in paragraphs (3) and (5) of this section any mark registered on the principal register established by this Act, and the prescribed fee shall not be required. Nothing in paragraph (5) shall be deemed to prohibit the registrant from using its certification mark in advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant. Such uses of the certification mark shall not be grounds for cancellation under paragraph (5), so long as the registrant does not itself produce, manufacture, or sell any of the certified goods or services to which its identical certification mark is applied.
