Overview of Trademark Non-Use Cancellation

Some people mistakenly believe that if they successfully register a trademark, they are bestowed perpetual legal right and ownership over that mark. In reality, a trademark can be canceled (also known as being declared “dead”) if the mark has not been used for three years, or if you fail to maintain your trademark filings.

During the trademark application process, the applicant agrees that the trademark will either be used in commerce with the goods or services listed in the registration or it will not be used in commerce due to special circumstances. Most applicants indicate their mark will be used in commerce. As a result, when that mark is dormant and not used in commerce with goods and services, it is at risk of being canceled. If this happens, a competitor can step in and purchase the canceled trademark.

Four Ways Trademarks Get Cancelled or Abandoned

There are generally four scenarios in which a trademark winds up canceled or abandoned. Those include:

1. An application was unsuccessful in securing trademark registration.
2. The trademark registrant failed to maintain the necessary filings with the United States Patent and Trademark Office (USPTO). Specifically, new trademarks need to be renewed after five years. After that, your mark will need to be renewed after year nine. Failing to meet the deadlines will result in a canceled trademark.
3. The trademark registrant failed to use the mark in commerce with the goods and/or services described in the registration application. As mentioned earlier, you are obligated to use your trademark. Failure to use the mark for three years will likely result in the “death” of your trademark registration.
4. A competitor decides to file a third-party petition. You need to be prepared for the possibility of a competitor filing a petition to cancel your trademark if they believe it is too similar to their own mark.

Develop a Trademark Monitoring Strategy

It is important to maintain a robust trademark monitoring strategy. Why? Because such a strategy can help prevent trademark non-use cancellation by tracking your use of the trademark to ensure it is being used in commerce with the goods and/or services described in the registration application. An effective monitoring strategy will also keep tabs on what trademarks your competitors are registering.

Have Questions? Schedule a No Obligation Consultation with an Experienced Trademark Attorney in Los Angeles Today

If you have questions about strategies to properly monitor your trademarks, or you want to begin the process of registering a trademark, then it is imperative to work with a reputable and experienced trademark attorney in Los Angeles such as the professionals at the Omni Legal Group.  Omni Legal Group represents clients throughout the greater Los Angeles area, including Beverly Hills, Santa Monica, Culver City, and many others. For further information or schedule a no obligation consultation, please call Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.