Can a registered trademark be challenged [Must-Know Tips]

Last updated : Sept 2, 2022
Written by : Verda Edgell
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Can a registered trademark be challenged

Can a registered trademark be removed?

Any person may file an application for removal or cessation of protection of a trade mark for non-use. Please Note: Unless stated otherwise, all references in this manual part to the removal of a trade mark from the Register also apply to the cessation of protection of a protected international trade mark.

Can a registered trademark be challenged in the UK?

Invalidation. Invalidation is the legal procedure, which allows anyone to try and remove a trade mark from our register as if it had never been registered. You can apply to remove the entire registration, or only some of the goods or services that it covers. You will need to send us a form TM26(I).

Can a registered trademark be challenged in India?

A registered trademark can be challenged by any aggrieved party in India. An aggrieved party is any person or company : Whose interest lies in the removal of the trademark in question, or.

How do I appeal a trademark?

An applicant for registration of a trademark may appeal to the Board from any final refusal to register its mark, and can initiate an appeal by filing a timely notice of appeal with the Board with the required fee. 37 CFR § 2.6(a)(18) sets forth the required fee.

How do I challenge a trademark registration?

Several options exist to challenge another party's trademark registration or application, depending on the particular circumstances and grounds for challenging: You may challenge a trademark registration issued by the USPTO by filing a petition to cancel the registration with the Trademark Trial & Appeal Board (TTAB).

How do I cancel a trademark registration?

The first step in canceling a trademark is to file a petition for cancellation. In your petition for cancellation, you will need to show you have standing to cancel the trademark. You will also need to pay the registration fee. It can be done either on paper or electronically.

What happens when someone opposes your trademark?

If someone decides to oppose your trademark, they file a notice of opposition. This notice will list any and all allegations and their reasons why they believe your application should be rejected. Once the notice has been filed, you have 30 days to answer.

How do I oppose a trademark UK?

If you want to oppose the registration of a trade mark then you must file a TM7 'Notice of opposition and statement of ground'. If your opposition is only based on Sections 5(1) and/or 5(2) grounds the fee will be £100.

Can you trademark a name already in use but not trademarked?

1. Can You File for a Trademark That Exists? Updated November 12, 2020: If you're wondering, "can you trademark something that already exists," the simple answer is "no." Generally speaking, if somebody has used a trademark before you, you can't register the trademark for yourself.

Can we oppose trademark after 4 months?

Any person can file for trademark opposition to the Registrar within four months from the date of advertisement of the registration application in the trademark journal by giving a notice in Form TM-O and payment of fees.

How many years does a registered trademark last?

Life of a trade mark Your trade mark registration lasts for ten years from its filing date. You can renew your trade mark registration 12 months before your renewal is due, or up to six months after.

How long does a trademark opposition take?

Approximately 4 to 6 weeks after being approved for publication your trademark application will be published for opposition for 30 days. During this period any party wishing to object to the registration of the trademark.

Why would a trademark be Cancelled?

There are several legal grounds that exist to cancel a trademark registration, including priority, abandonment (by non-use of at least three consecutive years together with an intent not to resume use), and fraud. There are additional grounds as well, such as priority of use and genericness.

How do you settle a trademark opposition?

  1. Retracting your trademark application.
  2. Having a good evidence to win the trademark opposition case.
  3. Making rectification to the trademark.

Who can cancel a trademark?

(15 United States Code, Section 1067.) At the conclusion of this hearing, the Patent and Trademark Commissioner may: refuse to register the opposed mark (in an opposition case) cancel the registration of a mark or place restrictions on its use (in a cancellation case)

How often do Trademarks get rejected?

by Brette Sember, J.D. If you've filed a trademark application, you're probably excited to get started using your mark. But not so fast — according to the United States Patent and Trademark Office (USPTO), about 18% of applications are rejected.

How often are trademarks opposed?

How Often Are Trademarks Opposed? It's not often that trademarks are opposed, but opposition and cancellation proceedings can be a real threat once they have been instituted. In a recent USPTO study, only 2.8 percent of 4 million applications published went through an opposition proceeding.

How do you object a trademark application?

  1. The examiner, public or third party can file an opposition within four months.
  2. The status of the application will be change to Opposed.
  3. The grounds of opposition is stated.
  4. After this, notice the applicant about the opposition, and the grounds stated.

What if trademark is already registered?

If someone else has already registered your trademark, you'll be unable to register the mark. However, trademark protection is not absolute. If you can show that you used the trademark prior to the registration of the other trademark, you may still own the mark. You can't simply notify the trademark office, though.

What happens if someone else trademarks my brand name?

Trademark Registration Then, the owner can face a lawsuit for using the same name as someone else even if the second party registered a trademark for the company after the first owner created the company. These situations usually require the services of a lawyer to both understand and pursue.

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Can a registered trademark be challenged

Comment by Season Fertal

I frequently get asked what are the main challenges in registering a trademark I want to tell you about the three challenges that applicants face repeatedly the first is knowing how to search the database of the US Patent and Trademark Office for potential conflicts that would block registering the mark it's a large complex database and really without experience knowing how to use the various search tools it's it's nearly impossible to do a valuable search the second main challenge is that the process is very long it takes about a year on average to register a trademark and tracking and monitoring the status of the application and the deadlines that arise during the process is a real challenge if you aren't equipped for that we've built custom software at Eric Feldman associates that allows us to go out every day and track for developments in the application and allows us to dock it and monitor upcoming deadlines for every single application we find finally the third challenge is how to respond to the Patent and Trademark Office if there is a refusal of the application and very frequently there is a refusal sometimes it's a procedural issue sometimes it's a major substantive issue like a likelihood of confusion or a descriptiveness refusal knowing how to research and find examples to bolster the arguments in response to the trademark office to try to win approval for the application is a huge challenge and that one that we've undertaken hundreds and hundreds of times for our clients if you'd like to talk further about how we can work together to apply to protect your company's trademarks please give me a call or send me an email I'd be happy to start that discussion Oh

Thanks for your comment Season Fertal, have a nice day.
- Verda Edgell, Staff Member

Comment by wackyjaxie2

okay good afternoon everyone and welcome to today's webinar what you need to know if your trademark is challenged my name is brendan and i'm from the communication team at ip australia and before we begin the webinar i'll just start with a few housekeeping items you'll find a copy of today's slides and some other useful information available for download from the control panel we also welcome any questions from you you can submit your your questions at any stage by using the questions box however as we would like to finish right on 1pm today we'll wait until the end of the formal presentation to answer your questions okay now we've got those housekeeping um out of the way i'd like to introduce today's presenter natalia karen chitskaya natalya started out at rp australia as a trademark examiner and from there she moved into the oppositions and hearings area where she has been working as an assistant hearing officer for over a year i'll hand over to natalia now and we can get underway welcome natalia hi brendan thank you for having me um hopefully today i can introduce everyone that's listening in to oppositions and hearings um so we'll just begin this one okay so with oppositions and hearings um you may not be too familiar with this topic but basically it's it's an important topic for everyone so whether you're considering applying for a trademark whether your trademark registration is currently in the pending or accepted stage or whether you've had a trademark registration for a number of years it's very important to be familiar with the oppositions and hearings side of the story having a trademark registration isn't the end of the journey and so this webinar will hopefully introduce you to some of the topics that we cover in our positions and hearings so we have a number of different types of oppositions at ip australia the ones that i'll be touching on today uh to do with oppositions um to our registration of a trademark and also an opposition to the removal or cessation of protection for non-use of a trademark so i will touch on these two and um i'll go through more information as we go through the slides and again at any time if you have any questions feel free to pop them into the question box so an opposition to registration of a trademark is where say you've applied for a trademark and your trademark has been accepted by the office there is a two month acceptance period where your trademark will be advertised on our website and any person can then choose to oppose your trademark registration so this is where the opposition may start so what happens is if you see you're the applicant you've applied for a trademark registration um it's been advertised it's up on our website anytime within a two-month period any person any business can choose to then oppose your trademark so how do they file an opposition what they do is any person can choose to file a notice of attention to a post what happens is we then provide a copy to the party that's applied for the trademark and the opposition essentially starts so um the opposition to a trademark consists of the notice of intention to oppose and the statement of grounds and particulars so i will touch on these notices as we go along but the main takeaway point from this slide is if a notice of intention to a pose or a statement of grounds in particulars aren't lodged with the office then um the trademark sorry for that just um just having a few technical difficulties at the moment okay so um skipped a few slides i'm just going to go back so yep so if a statement of grounds and particulars isn't lodged basically the trademark will get registered however if the person chooses to lodge a segment of grounds and particulars then the opposition will proceed and that will commence the next stage so the next stage is the statement of grounds in particulars what this document is is it outlines the grounds so basically the reasons for why someone wants to oppose your trademark if you do have a trademark registration um at this stage of the opposition process we don't usually get any evidence we don't require any evidence from the party submitting the statement of grounds in particulars and it just acts as a general overview of what grounds might be applied within the opposition so it might be something like a question of ownership a question of reputation a question of um whether the opponent considers that the trademark registration has been applied for in bad faith so there are different topics that this technical grants and particulars covers and we do have a copy of the form on the ip australia website so you can definitely go online have a look at our form have a look at the different grounds you don't necessarily have to use our form if you don't want to but it is there as a guideline if you are considering opposing a trademark or if someone has opposed yours and you just like to see what grounds there are that they can choose from okay so what to do if your trademark is being opposed so if you happen to have applied for a trademark registration it's been accepted but you receive a notice of intention to oppose and a segment of grounds and particulars from a party the key thing with this is to remember that most correspondents if not all correspondents will be coming to e-services so if we do send you these documents you will receive them within e-services and basically the main thing is to decide whether you'd like to take action so if you like to continue to defend your trademark and you want to defend your trademark essentially to defend your application to the trademark then you need to file a notice of intention to defend so the notice of intention to defend is basically you saying yes i'd like to pursue my trademark registration um i will engage in these opposition proceedings if as a trademark applicant you don't file this form with us then your trademark will automatically be removed from the register so essentially it won't proceed to registration um very very important just to keep in mind all the deadlines we do put them in our letters but just important to take note of them and file the correct form when we need it and we do make sure to tell our customers that you know the notice of intention to defend is due one month from the date of our letter things like that so i'm going to just show you a table of the life cycle of the opposition to registration this is just an overview of what happened so with an opposition to registration it's quite a lengthy process as i've said earlier the acceptance period for a trademark is two months so within two months anyone can submit a notice of intention to a pose when we do get a notice of intention to oppose we give that to both parties and then there is a one month deadline to submit the statement of grants and particulars so the opponent has to provide the statement of grounds and particulars within a one month period this then um proceeds onto the notice of intention to defend so from the sentimental grounds in particulars the applicant or the owner of the application to the trademark has one month to file the notice of intention to defen

Thanks wackyjaxie2 your participation is very much appreciated
- Verda Edgell

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