E-mail comments to -
site_management@transjurlex.com

Trademark Act §1064 Petitions to Cancel

• During the first five years of registration a petition for cancellation may be filed by any party who believes they are harmed by the registration of another's mark.
• After five years, the grounds for filing such a petition are much more restrictive. The available grounds at that time are that:
  1. A mark has become generic.
     • Partial cancellation with regard to specific goods and/or services is available.
  2. A mark is functional.
  3. A mark has become abandoned.
  4. Registration of a mark was obtained through fraud.
  5. A mark is violative of (a), (b) and/or (c) of §1052
  6. A mark is used with the permission of the registrant in a way which misrepresents the source of goods and/or services.
  7. The registrant lost control of or failed to properly use a certification mark.
• After the above five year period, the filing of a §1065 affidavit makes a registrant's right to the use of a mark incontestable, subject to another party's pre-existing rights in the mark and the above seven grounds. There must also be no decision pending on the validity of or rights in the mark.
  • The party seeking to make their right to use incontestable must file the affidavit in the year following the required five year period of use, stating, among other things, the goods and/or services in relation to which the mark is used.

Nothing in this site is intended in any way to constitute legal advice or to create an attorney-client relationship. The author, Jay M. Tyndall, shall not be liable for any damages of any type, whether actual or consequential, which may arise from the use or reliance of any reader on the content of this site or any site to which it links. No guarantee or assurance is made that any information transmitted to or via any unsecure portion of this site will remain confidential.