question.jpgIn Trademarks

What is the basis for a trademark being canceled?

The basis canceling a federally registered trademark varies depending on the timing of the cancellation proceeding. The five year mark is the significant point in time for this discussion. Within the first five years from when a mark was registered, it can be canceled for any reason which would have originally barred registration. For example, if the Patent and Trademark Office, in originally granting the trademark application, was unaware of a prior trademark registration which would have prevented this mark from being registered (because of a likelihood of confusion), this would be appropriate grounds for seeking cancellation within the first five years. Similarly, within the first five years, the party seeking cancellation can argue that the trademark is merely descriptive (and thus, not capable of registration without secondary meaning) or that the mark is merely a surname.

However, after five years from the mark’s registration, this standard changes. From that time going forward, a trademark registration cannot simply be challenged for any reason which would have denied its original registration. Instead, a mark will only be canceled if it had been abandoned, if it was fraudulently registered, if it is or has become generic or if it is immoral, deceptive, scandalous or disparaging.

This five-year distinction is similar to the idea of incontestability.