IP Tech Knowledgy

If you believe an existing trademark registration is blocking your ability to register your own trademark, investigate whether you have the right to cancel the blocking registration. If you started using the mark before the registrant, if the registrant is no longer using its mark, or if the registrant perhaps was fraudulent in its application, that registration is susceptible to being terminated. Other infirmities listed in 15 U.S.C. §1064  can also be grounds for cancellation.  A registration is not sacrosanct. The process of cancelling a registration is to file a Petition For Cancellation with the Trademark Trial and Appeal Board, which is an administrative tribunal that handles disputes over trademark registrations, including cancellation actions, as part of US Patent and Trademark Office. If the registrant truly has abandoned its use of the mark and has no interest, there is a decent chance it will not fight back, and you will win the case by default. If, however, the registrant is using the mark, or has plans to restart its use, or if the Registrant believes it can overcome other claims in the Petition, the parties will have to dispute whether the registered mark should be cancelled.

Even if you receive an initial refusal based on an existing registration, and you believe you can distinguish your mark from the blocking mark with an argument to the USPTO, still assess whether you have grounds to cancel the blocking mark.  In arguing to distinguish your mark from the blocking mark you might need to narrow your claim of rights. Narrowing your rights might allow a future would-be infringer to avoid liability by asserting that you have agreed that your rights are narrow. Cancelling the blocking mark, if possible, avoids having to provide that narrowing argument, and would keep your registration broader and stronger.

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com