Section 14 and 15 of the Lanham Act operate independently of each other. It is not clear whether the fifth anniversary date of a trademark registration will fall into the initial five year period where no restrictions for asserting challenge grounds exists. However, there was a case before the Trademark Trial and Appeal Board where the Board held that the fifth anniversary date was deemed to be within the first five-year period.
Therefore, any ground that could have been asserted against the registration initially could be grounds for the cancellation petition. It should also be noted that if the last day of the five-year period falls on a federal holiday or a Saturday or Sunday, then filing a Petition to Cancel on a Monday would be acceptable even if the Monday falls outside the five-year period. If the registration you wish to cancel is on the Supplemental Register, rather than the Principal Register, then there are no restrictions pertaining to the grounds that can be asserted, even if the registration is over five years old.
It is important to pay attention to the date of registration when you are seeking to invalidate trademark rights. We can assist you with determining which grounds may be appropriate to assert against a registration based on whether the registration is on the Principal or Supplemental Register and based on how many years have passed since the trademark registration issued.
If you have any questions, please feel free to contact our office for a courtesy trademark consultation. Please do not include any confidential or sensitive information in a contact form, text message, or voicemail. The contact form sends information by non-encrypted email, which is not secure. Submitting a contact form, sending a text message, making a phone call, or leaving a voicemail does not create an attorney-client relationship. Can I register a trademark that has already been registered in another country by someone else?
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Contact us. Cancellation decision by the Opposition Board makes the trademark lose its exclusive right retroactively. A trademark invalidation is inter partes proceeding in which a party having legal interest to the result can null a trademark registration under Article 46 of the Trade Mark Law. If the registration is less than five years old, the party challenging the trademark rights can rely on any ground that could have prevented registration initially.
Likelihood of confusion and descriptiveness are the most common grounds asserted to invalidate trademark rights. Invalidation decision by the Trial Board of JPO makes the trademark lose its exclusive right retroactively in principle.
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