Can I Lose My Trademark?


The short answer is “yes.” Recently, the Washington Redskins were notified that their trademark has been canceled by the U.S. Patent Office. In a rare ruling from the U.S. Patent Office it canceled six different trademarks containing the word “Redskin” because the Trademark Trial and Appeal Board wrote in a 2-1 decision “that these registrations must be cancelled because they were disparaging to Native Americans at the respective times they were registered.” The Redskins’ patents were challenged based on a law that prohibits registered names that are disparaging, scandalous, contemptuous or disreputable. The attorney for the petitioners claimed the team’s name was “racist and derogatory.” Interestingly, this ruling does not mean that the trademarks can no longer be used, only that there is no registration for the marks. The Redskins have appealed the decision.

Trademarks can be lost in other ways besides a petition as was the case with the Washington Redskins. An attack is usually done in one of four ways: (1) a petition, (2) cease and desist letter, (3) opposition to registration in USPTO or (4) lawsuit for trademark infringement.

Petitions to Cancel

Most petitions to cancel involving claims that the trademark is confusingly similar, merely descriptive, or is no longer in use and therefore “abandoned.” The entity filing the petition to cancel must prove that it will be directly harmed if the trademark is not cancelled. If the petition is successful or the defending party fails to respond the trademark will be cancelled.

Cease and Desist Letter

This is the most common way a trademark is challenged. It is basically exactly what it sounds like, a letter to the offending person or business demanding that it stop using a registered trademark. Most cease and desist letters also request payment of compensation or attorneys’ fees.

Opposition Registration in USPTO

A business can file a Notice of Opposition prior to a trademark even being registered. After a trademark registration has been reviewed by the USPTO and there are no legal issues then the trademark is “published for opposition.” For up to 30 days after your trademark is published a business or person may file an opposition proceeding against the trademark. The party attempting to register the trademark must respond. A failure to respond will result in cancellation of the trademark application.

Lawsuit for Trademark Infringement

Lastly, a person or business could file a lawsuit for trademark infringement claiming a trademark violates the exclusive rights to an already existing trademark. To be successful, a plaintiff in a trademark infringement lawsuit must demonstrate (1) it has a valid and legally protectable mark, (2) it owns the mark, and (3) the defendant’s use of the mark to identify goods or services causes a likelihood of confusion. Remedies for infringement include injunctive relief, an accounting for profits, damages and attorneys’ fees in rare cases.

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