A canceled trademark registration in the United States Patent and Trademark Office (USPTO) is a trademark registration that’s no longer valid. Once a registration is canceled, it’s considered dead and cannot be used by the USPTO to refuse registration of a trademark filed by someone else. The owner of a canceled trademark registration loses all of the benefits of trademark registration, and it potentially creates a situation where someone else could register a confusingly similar trademark for identical or related products/services.
What Results in a Canceled Trademark Registration?
The USPTO cancels trademark registrations for a number of reasons. For example:
- The owner didn’t file a proper Section 8 Declaration of Use
- The owner didn’t file a proper Section 71 Declaration of Use
- The owner didn’t file a proper Section 8 and 9 Renewal
- The owner didn’t properly respond to a post-registration office action
- The Trademark Trial and Appeal Board (TTAB) granted a trademark cancellation that was filed against the registration
- The owner filed a voluntarily surrender of the trademark registration
What Does a Canceled Trademark Registration Mean?
I think it’s much easier to answer this question by discussing what a canceled trademark registration doesn’t mean. A canceled trademark registration doesn’t mean that the trademark itself isn’t in use or that the trademark has been abandoned.
Unintentional Cancellation
Trademark registrations are often canceled without the knowledge or consent of their owners. This generally happens because the owners don’t realize that their registrations need to be maintained and renewed periodically to keep them in full force and effect. In addition, sometimes owners of registrations never receive any notice that a third-party has filed a petition for cancellation against their registration (usually because the owners didn’t keep their contact information current with the USPTO). If the registration owner doesn’t receive notice, then obviously the owner can’t defend the cancellation. The TTAB then issues a default judgment and grants the cancellation, which results in a canceled trademark registration.
Intentional Cancellation
Conversely, there are times when the owner of a registration chooses to allow the registration to be canceled even though the trademark itself may still be in use. For instance, perhaps the owner doesn’t have the money and resources to defend against a trademark cancellation. Or, perhaps the owner isn’t making enough money from the use of the mark to warrant the maintenance and renewal fees. Or, maybe the owner agreed to voluntarily surrender the registration as part of settling a trademark dispute with another party.
What Does Cancellation Not Tell Us?
Regardless of whether the cancellation is intentional or unintentional, the point is that a canceled trademark registration doesn’t tell us whether or not its owner still enjoys common law trademark rights and, if so, how substantial and expansive those common law rights may be.
Can a Canceled Trademark Registration Be Reinstated?
It’s extremely difficult to have a canceled trademark registration reinstated. In fact, about the only way to achieve reinstatement is by proving that the USPTO made an error (e.g. the USPTO didn’t process a maintenance or renewal document that was timely filed and paid for). Even then, the request for reinstatement needs to be made within a certain period of time after cancellation of the registration. So, for all intents and purposes, canceled registrations almost never become active registrations again.
If the registration was canceled after the TTAB issued a default judgment and granted a petition for cancellation, the owner of the canceled trademark registration can file a motion to set aside the default judgment. It is within the TTAB’s sole discretion whether to grant such a motion, and it will normally only do so if the owner can prove a very good reason why no answer to the petition for cancellation was filed. If the owner is able to persuade the TTAB to vacate the default judgment, then the canceled trademark registration will be reinstated and the trademark cancellation will begin again.
Do You Have Questions?
I’m experienced US trademark attorney Morris Turek. If you have questions regarding a canceled trademark registration you stumbled upon while conducting a trademark search, please feel free to contact me for your completely free consultation. You can reach me by phone at (314) 749-4059, via email at morris@yourtrademarkattorney.com, or by sending me a message using the contact form found below. I look forward to speaking with you soon.