Cancelling Somebody Elseâ€™s Trademarks
One of the tools in the arsenal of experienced trademark professionals is cancellation proceedings that allow brand owners to cancel older trademarks that are no longer in use. By removing such trademarks from the register of trademarks, brand owners can successfully register their brands, even if their brands would have been found confusingly with such prior, but no longer used, trademarks.
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NARRATOR: Lorraine came up with a novel educational toy for children. She calls it LITTLE FEET.
NARRATOR: She sells it through Amazon and her product is quickly becoming popular.
NARRATOR: She decided that itâ€™s the right time to trademark LITTLE FEET in both Canada and the U.S.
NARRATOR: After careful market research, she decides to use Trademark Factory for the free trademark search and registrability opinion.
NARRATOR: She filled out the form, uploaded the logo and booked her trademarkability consultation in a couple of days.
NARRATOR: As scheduled, she receives a call from a Trademark Factory agent.
TRADEMARK FACTORY (On the phone): Hello, Lorraine. We have done the trademark searches for LITTLE FEES and have your results ready. Iâ€™m about to walk you through your trademarkability report, as long as youâ€™re in front of a computer. Are you in front of a computer?
TRADEMARK FACTORY: Great. So open this link and tell me when it loads.
LORRAINE: I have it.
TRADEMARK FACTORY: Perfect. So as you see, in both Canada and the U.S., we found a previously registered trademark CUTE FEET for â€œskipping ropes, balls, and other toys for childrenâ€.
LORRAINE: Oh my God! This is terrible, horrible, horrifying, and horrendous!
TRADEMARK FACTORY:Well, yes and no.
LORRAINE: What do you mean?
TRADEMARK FACTORY: Itâ€™s certainly less than perfect because LITTLE FEET will most likely be considered confusing with CUTE FEET.
LORRAINE: This is absolutely terrible, horrible, horrifying, and horrendous!
TRADEMARK FACTORY:Well, the good news is that we did some researchâ€¦
LORRAINE: I ainâ€™t paying for no research!
TRADEMARK FACTORY: No, youâ€™re not. This is what we did as part of the free trademark search we did for you.
TRADEMARK FACTORY: Yes. As I was saying, we did some research and could not see any activity from the owner of CUTE FEET for quite some time.
TRADEMARK FACTORY: Their website is down:
TRADEMARK FACTORY: Their last facebook update was 3 years ago
TRADEMARK FACTORY: and their last tweet was 2 years ago:
TRADEMARK FACTORY: It may well be that theyâ€™re not around anymore.
LORRAINE: So how is this good news? They still have their trademark. And your report shows that its only due for renewal in 6 years in the U.S. and in 11 years in Canada. Iâ€™m not gonna wait that longâ€¦
TRADEMARK FACTORY:Of course youâ€™re not. And thatâ€™s where we can help.
LORRAINE: What, you got a time machine?
TRADEMARK FACTORY: I wish...
LORRAINE: No seriously, what can you do with this existing registration?
TRADEMARK FACTORY: We can initiate cancellation proceedings against CUTE FEET registrations in both Canada and the U.S.
LORRAINE (dreamily): Oh, cancellation proceedings...
TRADEMARK FACTORY: This way, any interested party can ask the Trademark Office to request the owner of a registered trademark to show that they are still using the mark.
LORRAINE: And anyone can initiate these proceedings against any registered trademark? Really?
TRADEMARK FACTORY: Not exactly. While anyone who pays the government fee can file the cancellation request, in the U.S. in order to file a petition for cancellation, you gave to be a trademark owner who believes that the other trademark is damaging to your own trademark rights.
LORRAINE: Well, CUTE FEET is certainly damaging my ability to go forward with LITTLE FEET.
TRADEMARK FACTORY: Yes, but there are two more limitations.
TRADEMARK FACTORY: First of all, you have to have a genuine belief that the trademark is not currently being used by the registered owner. The reason is simple: youâ€™re not supposed to bother trademark owners unless you think they have abandoned their trademarks.
LORRAINE: So I canâ€™t go after TOYS â€˜Râ€™ US trademark, right?.
TRADEMARK FACTORY: Yes. And second, unless you are pretty confident that the trademark owner is not around anymore, you can only go after trademarks that have not been used continuously for at least three years.
LORRAINE: What does it mean?
TRADEMARK FACTORY: In both Canada and the U.S., a trademark will not be cancelled if the owner can show that they used it at any time in the preceding 3 years. In the U.S., a trademark owner can even save their trademark if they have an intention to resume use in the nearest future.
LORRAINE: But didnâ€™t you mention something about the owner not being around anymore?
TRADEMARK FACTORY: Yes. If the owner is not around anymore, they wonâ€™t respond to the Trademark Officeâ€™s request, and the trademark will be cancelled.
LORRAINE: I see.
TRADEMARK FACTORY: But again, this should be used as the last resort because youâ€™re not supposed to pester trademark owners with unfounded demands.
LORRAINE: I understand.
TRADEMARK FACTORY: In our case, CUTE FEET has been registered for 4 years in both Canada and the U.S. so we should be ok.
LORRAINE: So when we fiel this request, what happens then?
TRADEMARK FACTORY:Cancellation notice is issued to the registrant. In our case, it will issue to the owner of CUTE FEET trademark.
TRADEMARK FACTORY:What follows is different in Canada and the U.S. In Canada, the owner of the registered trademark will be required to produce evidence of use of their mark CUTE FEET at any time during the last 3 years.
LORRAINE: How can they prove? Canâ€™t they just reply that they use it and the Trademarks office will leave them alone?
TRADEMARK FACTORY:No. They canâ€™t just say they used it. The registrant has to file evidence and that evidence must pre-date the notice. The evidence may include invoices showing sales, receipts, labels, brochures, advertisements or signage.
LORRAINE: And if they donâ€™t? Obviously they closed, so?
TRADEMARK FACTORY:If they fail to produce evidence of use or donâ€™t respond to the cancellation notice, their mark CUTE FEET will be removed from the Canadian register and will no longer pose a threat to your application.
LORRAINE: Thatâ€™s it?
TRADEMARK FACTORY:Yes. Of course, I over-simplified it, but in essence thatâ€™s how it works. Of course, if the registrant files evidence or responds, then it may become more complicated, but thatâ€™s why itâ€™s always wise to do some preliminary research before starting cancellation proceedings. If itâ€™s obvious the mark is in use, then these proceedings will be a waste of time.
LORRAINE: So how is it different in the U.S.?
TRADEMARK FACTORY: There, the registrant is actually allowed to pretty much claim that they ARE using the trademark, and itâ€™s the petitioner who is asking for the cancellation who will need to provide evidence of non-use. Because proving a negative is very difficult, if not impossible, if the owner of a registered trademark responds, the cancellation proceedings can easily turn out to be protracted and rather expensive.
LORRAINE: What does it cost to file the request?
TRADEMARK FACTORY: The government fee to initiate cancellation proceedings in Canada is $400 Canadian per trademark. In the U.S., the government fee is $300 U.S. for each class of goods and services for which you are requesting cancellation.
LORRAINE: CUTE FEET is registered in two classes: Class 28, Toys, and Class 16, Books.
TRADEMARK FACTORY: So yes, for Canada the government fee will be 400 Canadian Dollars and in the U.S. it will be two times 300 U.S. Dollars, that is 600 Dollars.
LORRAINE: And your fees?
TRADEMARK FACTORY: We charge a fixed fee for initiating cancellation proceedings and if the registered owner responds, then we will charge an hourly rate to do all the required proving and the back-and-forth. If there is a response, then weâ€™ll need to see if it even makes sense to continue, because cancellation proceedings are designed to what they call it, â€œclear the deadwoodâ€
TRADEMARK FACTORY: Cancellation proceedings are designed to remove trademarks for which their owners clearly donâ€™t care anymore. It usually takes significant efforts to cancel a trademark that its owner claims to be actively using.
LORRAINE: So what do you recommend?
TRADEMARK FACTORY: Unless you want to do some more brainstorming and come up with a different brand, I recommend that we file your application LITTLE FEET and immediately initiate cancellation proceedings in both Canada and the U.S.
LORRAINE: Why is cancelling CUTE FEET a better option compared to arguing that CUTE FEET will not be confused with LITTLE FEET?
TRADEMARK FACTORY: If we argue that LITTLE FEET is not confusing with CUTE FEET for the same services, and if we are successful, then you will end up with a weaker trademark that will provide little protection if someone comes up with a similar but not identical brand. For example, if someone comes up with a new brand, SWEET FEET, then it would be very difficult for you to claim that SWEET FEET is confusingly similar to LITTLE FEET if you are on record claiming that LITTLE FEET was not confusingly similar to CUTE FEET.
TRADEMARK FACTORY: If you cancel CUTE FEET, then wonâ€™t have this problem.
LORRAINE: It looks like a useful tool.
TRADEMARK FACTORY: Yes, we say â€œuse it or lose itâ€. If you donâ€™t use your trademark, you may lose it if someone initiates cancellation proceedings against you. We actually have a cartoon called What Does Using a Trademark Mean? Make sure you watch it.
LORRAINE: OK, you persuaded me. Letâ€™s file LITTLE FEET and start the cancellation proceedings against CUTE FEET.
TRADEMARK FACTORY: See? Itâ€™s not really that terrible, horrible, horrifying, and horrendous!
LORRAINE: Yes, Trademark Factory makes trademarking easy to understand!
Disclaimer: Please note that this cartoon is not and is not intended as legal advice. Your situation may be different from the facts assumed in this cartoon. Your watching this cartoon does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this cartoon as the only source of information to make important decisions about your intellectual property.
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