Friday, June 27, 2008

A Disturbing Trend

What do you do if the mark that you want to register at the Patent & Trademark Office is already registered by someone else? Conventional wisdom would say to try to buy the mark from them. If that doesn't work, most people give up and find a new mark. There is a disturbing trend, however, of the person who wanted to register the mark going filing to cancel the registration of the current owner.

We have seen several of these kinds of cancellations filed recently, all of which have argued that the registration should be cancelled for abandonment due to non-use or even fraud. Non-use is presumed if a mark has not been used in commerce for two consecutive years. In some cases, there are even allegations that the owner of the mark fraudulently represented in their Section 8 Affidavit of Continued Use to the PTO that they had been using the mark on the goods or services in the registration when in fact, according to the person trying to get the registration cancelled, they had not.

So far, we have not seen any decisions on these types of cases, but they represent a very disturbing trend of aggressive tactics to obtain a registration for a mark. As always, it is critically important for a mark owner to continue to use the mark so that there is no basis for someone else to seek a cancellation of the mark.

There is nothing to stop someone from filing a cancellation petition, but at a bare minimum you can fight it back with definite evidence of use, the ultimate cure.

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