Detailed Explanation on Trademark Opposition, Cancellation and Declaration of Invalidity

March 2, 2020

Student on computer

Trademark Opposition, Cancellation and Declaration of Invalidity Explained

 

The process of trademark registration may not be incessantly simple. First, you need to submit the information to the Trademark Office (through an agency); then Trademark Office will conduct preliminary review; if the application passes the preliminary review, then it will enter into a three-month announcement publication period, or the opposition period: during this period, any person may file opposition to your trademark. Once some persons file an opposition, you will receive a notice of defence, and your trademark will enter into the review stage. If no other person file opposition to your trademark during this period or you succeed in the defence, you will then receive the certificate of trademark registration. By this time, the trademark is truly belonging to you, and you may put the “®” mark next to your trademark.

Not-in-use Registered Trademarks Are Often Targeted

If the trademark has been registered in a certain time, why are there situations like “declaration of invalidity” and “cancellation”? This is relevant to the use of the trademark. If you only register the trademark and do not actively use it, probably some people will target it. Considering the huge economic value of a trademark, it is not unusual for competitors to take action. If some people want to ride on your trademark, most of the time it is done by way of “cancellation”. “Cancellation” means that “the trademark will be cancelled if it has not been in use for three years”.

Trademark Opposition

According to the statistics of the Trademark Office, the number of cases of cancellation application has increased each year. There were 29,000 cases in 2015; 40,000 in 2016; 57,000 in 2017. Of course, there were several cases done with bad faith.

As to action “declaration of invalidity”, many reasons are leading to that. Cancellation, non-renewal (the valid period of a trademark is only 10 years, and you will lose your trademark if you fail to renew before expiry), cross-category protection for famous trademark and similarity with other trademarks are some of the examples. All in all, if some people try to attack your trademark, you are in danger.

 

Trademark protection: how to react to trademark opposition and cancellation?

First, the threshold of filing an opposition application is rather low: You only have to pay around a thousand dollars for trademark opposition to raise opposing opinions at the time of announcement of a preliminary review of that trademark. These loopholes are often maliciously taken advantage of by trademark opposers. Having no requirements on identity and limitations on the reason of opposition, opposers are allowed to oppose to any trademark. Opposition does not incur much loss on the part of the opposer and it may even delay or deny the registration of the trademark opposed to.

 

For opposition, the Trademark Office will conduct a preliminary screening. Then you will have to prepare defence according to the reason of opposition (also the reason for review) drafted by the opposer. Comparing the major reasons for review in the recent 3 years, the most disputed one is the standing to sue. There is a parallel relationship between the proof of standing to sue of the opposer as a prior right holder or an interested party and the proof of identity.

 

As to the opposer: it is not the case that you can file an opposition once you have submitted a copy of your identity card. You must prove that you are a prior right holder or an interested party.

As to the opposed party, you must prepare a “proof of prior use” earlier than that of the opposer, or the proof that the parties are not in competition.

Moreover, if you do not want your registered trademark to be “cancelled”, you must prove that you have used and have been using the trademark. These proofs include (you should retain the proof of actual use to prevent malicious cancellation):

  • Trademark on the product (the most direct proof)
  • License to use the trademark (if you did not use it but authorized someone else to use it)
  • Proof of date (within 3 years before the date of application for cancellation)
  • Proof of use of a trademark within the geographical scope as stipulated in the Trademark Law