Trademark Use in Opposition Cancellation Proceedings 2025

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A cancellation is the removal of a trademark registration from the register in response to the filing of a cancellation action. The proceedings are initiated when a party with standing files a cancellation action with a designated administrative body within the trademark office or with the responsible court.
If the trademark registration becomes incontestable, a third party may only petition for cancellation of the trademark registration based on the registered mark becoming generic, or is functional, or has been abandoned for non-use, or its registration was obtained fraudulently.
These grounds are based on the principle that a trademark should not be registered if it lacks the necessary distinctiveness, is descriptive or generic, or is contrary to public policy or morality.
Incontestable by definition means incapable of being challenged. A bit of a misnomer, but incontestability status does prevent the following challenges: No one can challenge your mark on the grounds its terms are descriptive.
Unless a new trademark application has been filed for the same mark, no. Certificates of recordal designated inactive due to cancellation or expiration of the trademark registration or abandonment of the trademark application on which the recordal is based cannot be activated.

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The grounds for trademark cancellation can include issues such as non-use of the trademark, abandonment, fraud in the application process, genericness, or other factors that render the trademark registration invalid.
The enumerated defenses to incontestability in 1115(b) are: Either the registration or 1065 incontestability status was obtained fraudulently. Abandonment of the mark by the registrant. Use of the mark by the registrant (or others) which constitutes misrepresentation.
As the opposer who filed the opposition, you bear the burden of proof. That means that opposers have the burden of proving their case. What must be proven, therefore, depends on the specific claims contained in the Notice of Opposition.

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