In a recent blog post, the U.S. Patent & Trademark Office said that it may add a streamlined trademark cancellation proceeding. This process would focus on canceling trademark registrations for marks that are not in use. Of course, they are still researching this option. And it may be years before it comes to fruition (if at all). Here is what you need to know, whether you already have a trademark registration, or will be filing an application.
Problem: Too Many Bad Registrations
Ultimately the streamlined trademark cancellation idea comes in response to a big problem. The USPTO’s research found that over half of trademark registrations include at least some goods/services that are not being sold in connection with the trademark. That means that someone applying to register their trademark might be denied based on a registration that isn’t even valid!
Many people understand this “clutter” among trademarks when they are looking for an available name. Sometimes it seems like all of the good names are already taken. However, if a name is registered but not being used, someone else should be able to use it. While a trademark cancellation is supposed to solve this problem, going through a cancellation can be a lengthy and expensive process. Therefore, the USPTO wants to create a streamlined trademark cancellation process specifically for trademark registrations that are not being used.
Streamlined Trademark Cancellation Proposal
The details of this proposed process are still fluid at this point. Basically, it would be a simpler cancellation proceeding. A standard trademark cancellation may involve many legal issues. But this proceeding would only involve non-use of the trademark for one or more products/services listed in the registration. The narrow scope of this proceeding gives it several advantages.
The USPTO blog post mentions an approximate 70 to 170 day period for the streamlined trademark cancellation. That would be much faster than a standard cancellation. And because it would be faster, the government filing fees and legal fees involved would be lower as well. This overall faster and cheaper process would mean more applicants could challenge registrations, and successfully register their trademarks. But it also means others could more easily challenge your registration. So how does this impact registrants?
Ensuring a Strong Registration
This, to me, is the main difference between filing your trademark application yourself or using a do-it-yourself trademark service, versus hiring a trademark attorney:
To someone filing their own application, the finish line is getting the registration. But to a trademark attorney, the finish line is having a registration that will stand up to legal challenge.
When you file your own trademark application, you risk making mistakes where someone can later challenge the validity of your registration. The new streamlined trademark cancellation will make it even easier for someone to do this. Earlier I said that the USPTO found that more than half of registrations included products/services not for sale with the mark. That is because experienced trademark attorneys did not file the vast majority of these.
More cancellations will be filed when the barriers to cancellation (time and cost) are lowered. You need to protect your brand and make sure that your registration is not subject to challenge. The best way to do that is to avoid going at it alone. Make sure that you work with an experienced trademark attorney. They can help you file your trademark application. This will help you avoid cancellations today, and streamlined trademark cancellations in the future.
Want To Avoid Risking Your Registration In a Streamlined Trademark Cancellation?
The best way to do this is to avoid filing by yourself or with a document preparation services like LegalZoom or Trademarkia. If you want to make sure things are done properly, please call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
