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[gingerlion]

Hi.
Ive been searching the web but cant find much information about getting an inactive trademark cancelled.  

Someones registered a name that I wish to use for a cafe. Its the exact same name however they registered it 3 years ago and havent used it since.

I read somewhere that after 3 years I can appeal to have it cancelled due to inactivity? Does anyone know if this is right and how much it would cost and how long it would take?

Any help much appretiated.
Thanks
Rory

[JSonnabend]

To file a petition to cancel a mark is presently $300 per class.  You'll likely need to cancel only one class, but perhaps two.  

Attorneys differ on their charges for preparing the petition, but I generally charge two to three hours for the background fact check and preparation.  Occasionally clients decide to file a "meatier" petition for strategic reasons, and these require more time to draft.

If the cancellation action actually proceeds, your expenses will depend on the nature of the action.  It's closely akin to litigation.

- Jeff

[hamsol]

Is there a certain time frame .. 3yrs? Or can the petition start anytime?

thx,

Hamsol

[clarklawyer]

Is there a certain time frame .. 3yrs? Or can the petition start anytime?

thx,

Hamsol

A couple things to consider.

First, 3 consecutive years of non-use creates a presumption that the owner did not intend to reuse the mark.  The presumption can be overcome by providing the required evidence of intent to resume use.  

Similarly, an owner might abandon the use of a mark two weeks after registration upon finding that the business he intended to pursue was not profitable.

Second, in order to successfully register the mark, the registration must have attested to using the mark.   Perhaps that was done falsely, but it is also possible that your search that did not find the original use of the mark also failed to uncover an actual, more recent usage.

There may also be a standing issue.  I'm not sure that "I'd like to start using the mark myself" is enough, but I've never handled a petition to cancel.

[Rory]

Do you know what they would have to provide to show intention to resume use?

Also what do you mean by Standing issue?

[JSonnabend]

There may also be a standing issue.  I'm not sure that "I'd like to start using the mark myself" is enough, but I've never handled a petition to cancel.

There's no standing issue there.  "I want to use the mark and this guy's abandoned his use" is sufficient for cancellation.

Showing intent not to resume use is the bugaboo of abandonment.  Sometimes the registrant's own documents show an intent to abandon, but certainly not always, and getting those documents means real discovery, which can be expensive.  Other times, public statements or acts, such as expressly discontinuing a product line, can be used.

- Jeff

[CML]

Showing intent not to resume use is the bugaboo of abandonment.

"Intent not to resume use" is NOT the present standard for trademark abandonment.  Rather, The question is whether the trademark owner has an intent to resume commercial scale use of a mark.

[JSonnabend]

"Intent not to resume use" is NOT the present standard for trademark abandonment.  Rather, The question is whether the trademark owner has an intent to resume commercial scale use of a mark.

CML, I know you're trying really hard to discredit me, but the only thing you're doing is misstating the law, which helps no one.

The definition of abandonment is found in 15 U.S.C. § 1127 (emphasis mine).

Abandonment of mark.  A mark shall be deemed to be “abandoned” if either of the following occurs:

(1) When its use has been discontinued with intent not to resume such use.  Intent not to resume may be inferred from circumstances.  Nonuse for 3 consecutive years shall be prima facie evidence of abandonment.  “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

That's been the standard since before 1989, when this section was amended to add the provision about "bona fide" use the mark.  The amendment didn't change the substantive law, it merely sought to codify existing precedent, as the bill's committee report expressly stated.  The relevant passage from P.L. 100-667, Trademark Law Revision Act of 1988 – Satellite Home Viewer Act of 1988 Senate Report No. 100-515 is quoted below.

The committee intends that the revised definition retain the current standard for nonuse abandonment, which requires intent and may be inferred from 2 [subsequently amdended to three years] consecutive years of nonuse.

Of course, showing an intent to resume "commercial-scale" use of a mark would satisfy the "more than a token use" requirement.  It's not the only way to rebut the presumption, nor does a party asserting abandonment have a burden of proof on "intent not to resume commercial-scale use" once the presumption of abandonment has been triggered.

As for the law in the Second Circuit, where you correctly point-out I practice, the Circuit's law (which is substantively the same as every other Circuit as far as I'm aware), was recently stated in Hermes Intern. v. Lederer de Paris Fifth Ave., Inc., 219 F.3d 104 (2d Cir. 2000):

To establish the defense of abandonment, it is necessary to show either the owner's intent to abandon the mark, or a course of conduct on the part of the owner causing the mark to become generic or lose its significance as a mark. See Defiance Button Machine Co. v. C & C Metal Products Corp., 759 F.2d 1053, 1059 (2d Cir.1985), cert. denied, 474 U.S. 844, 106 S.Ct. 131, 88 L.Ed.2d 108 (1985).

Some courts have found inadequate a mark owner's attempt to claim "I never intended to abandon the mark", but you'll find that the owners in these cases failed to provide adequate evidence to support their claim, namely, evidence showing that the owner intended to resume use.  Practically speaking, absence of an intent to resume use is the same as intent to abandon -- they're simply two different ways to say the same thing -- as the case law such as Hermes Intern. recognizes.  

That's the law, CML.  Care to site authority supporting your position that "'Intent not to resume use' is NOT the present standard for trademark abandonment."?

- Jeff