A surrender of a trademark registration is a voluntary request that the United States Patent and Trademark Office (USPTO) cancel the registration. There are a handful of reasons why you might choose to voluntarily surrender your trademark registration. For example:
- You’re no longer using your trademark in commerce and have no plans to resume use
- A trademark cancellation or concurrent use proceeding was filed against your registration
- You entered into a settlement agreement with a third-party that requires surrender of your trademark registration
What are the Consequences of Surrendering a Trademark Registration?
Assuming that your registration isn’t the subject of a pending trademark cancellation or concurrent use proceeding, the only consequence of surrendering your trademark registration is losing the benefits of federal trademark registration. It doesn’t prevent you from seeking registration of the identical mark for the same products/services sometime down the road if you so desired. However, there’s no guarantee that the USPTO would approve your new application or that someone else wouldn’t have registered a similar trademark in the meantime. So, it’s very possible that surrendering your registration could lead to problems registering your trademark again in the future.
Now, if a trademark cancellation or concurrent use proceeding has been filed against your trademark registration, a voluntary surrender of your registration could have significant consequences. In those two cases, if you file a voluntary surrender without the written consent of every adverse party (i.e. the petitioner or the concurrent use plaintiff), judgment will be entered against you and you’ll no longer have the right to register your trademark again in the future. That is to say, you would be barred from registering the identical (or nearly identical) trademark for the same (or essentially the same) products/services. So, if you wanted to avoid that outcome, you would need to secure the written consent of every adverse party to the surrender of your registration without prejudice.
Regardless of whether your registration is the subject of a trademark cancellation or concurrent use proceeding, surrendering a trademark registration doesn’t affect any legitimate common law trademark rights you may own at the time of surrender.
How Do I File a Surrender of a Trademark Registration?
The way in which you surrender a trademark registration depends on the current status of your registration. If your trademark registration isn’t the subject of a cancellation or concurrent use proceeding, then you should fill out and file the “Surrender of Registration for Cancellation” form that’s available on the USPTO website. It doesn’t cost anything to submit this form and the USPTO will generally send you a notice of cancellation within a few days after submitting the form.
On the other hand, if your trademark registration is the subject of a cancellation or concurrent use proceeding, then you need to file the voluntary surrender directly with the TTAB. Please note that the TTAB doesn’t provide a form that you can just complete and submit. Instead, you’ll need to prepare your own voluntary surrender, file it using the ESTTA system, and serve it on the opposing party (generally via email). There’s no fee for submitting the voluntary surrender and the TTAB will generally act on it within a few weeks.
When Can I File a Surrender of a Trademark Registration?
You may surrender your trademark registration at any time no matter the status of the registration. Doing so results in a canceled trademark registration and your mark will be forever shown in the USPTO records as a dead trademark. Moreover, the public will be able to see that you voluntarily surrendered your registration and on what date.
Any Questions for Me?
I’m experienced US trademark attorney Morris Turek. If you’re looking to file a surrender of your trademark registration, but perhaps have concerns regarding the consequences of doing so, please contact me at your convenience for your free consultation. I can be reached at (314) 749-4059, through email at morris@yourtrademarkattorney.com, or by sending me a brief note through my contact form located toward the bottom of this page. I look forward to hearing from you soon.