Cancel trademark in DWD smoothly

Aug 6th, 2022
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How to Cancel trademark in DWD

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[Morris] Hi, Im trademark attorney Morris Turek. I protect individuals and businesses throughout the world by assisting them with their important trademark matters. Has someone filed a trademark cancellation against your trademark registration and you dont know what to do? Perhaps you need some help filing a trademark cancellation against someone elses registration. Maybe youre just looking for some general information about trademark cancellation proceedings. If so, youve come to the right place. A trademark cancellation proceeding is basically a lawsuit that challenges the continued registration of a particular trademark. It is instituted by filing a petition for cancellation with the Trademark Trial and Appeal Board and paying the required fee. Although it can be wildly expensive and extremely time consuming to pursue or defend a trademark cancellation all the way through trial, the good news is that the vast majority of cancellation proceedings are resolved amicably between t

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Request a paper copy of the Request for Express Abandonment (Withdrawal) of Application form by contacting the Trademark Assistance Center at 1-800-786-9199 if you do not want to submit the form electronically.
Simply, to file a Petition to Cancel with the TTAB, one must state the his/her interest in the case, the cause to action of the case (why the mark deserves to be canceled) and pay the required fee.
In general, you must answer a petition for cancellation within 40 days of the TTAB instituting the cancellation proceeding. You must electronically file the answer through the ESTTA system and you need to serve a copy of the answer on the petitioner (usually by email).
Any person aggrieved by the registration of trademarks may apply to get it cancelled. An aggrieved person is the one who is affected adversely by the trademark. A person interested in a trademark can apply for its cancellation. Though any person can apply for it, he can do so only on the grounds mentioned in the Act.
A canceled trademark registration in the United States Patent and Trademark Office (USPTO) is a trademark registration thats no longer valid. Once a registration is canceled, its considered dead and cannot be used by the USPTO to refuse registration of a trademark filed by someone else.
As per section 58 of the Trademark Act 1999, the registered proprietor can legally get cancel the trademark application from the register.
Some attorneys (including myself) offer a registrant a flat-fee to try to amicably resolve the cancellation (instead of litigate it). But, that flat-fee will probably be at least $1,000-$1,500.
When a trademark is revoked or invalidated, it is removed from the register and the trademark right is terminated either entirely or in part. The trademark is deemed not to have been valid, as from the outset, to the extent that the trademark has been invalidated.
How to Answer a US Trademark Opposition? Six Steps to Consider Review the Opposers Complaint. The Notice of Opposition must contain: Analyze the Opposers Claims. Review the U.S. Trademark Board Rules. Draft the Answer. Consider affirmative defenses. Consider any possible counterclaims. Conclusion.
A: The Cancelled Sec. 8 status refers to a trademark registrant who has failed to file renewal of the trademark registration. It does not mean that the registrant stopped actually using the mark nor that some other user is not using the trademark in commerce.

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