[E-trademarks] PTO Petition for Cancellation vs, Federal Action to Order PTO to Cancel TM Regn

[Boots, Daniel L]

Carl – pls see my amended query below. Thanks!


Dan

Daniel L. Boots
Partner

[D] +1 317 968 5361<tel:+13179685361>

Indianapolis<https://www.dentons.com/en/global-presence/united-states/indianapolis>

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From: Boots, Daniel L <daniel.boots at dentons.com>
Sent: Monday, March 4, 2024 1:10 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Subject: PTO Petition for Cancellation vs, Federal Action to Order PTO to Cancel TM Regn

Carl -  would you please pose this query to the group:

Client wishes to pursue the cancellation of a federal registration for the mark XXXX (generic descriptor) GROUP that it feels is clearly confusing with its extensive family of long-existing XXXX marks for similar (generic descriptor) services. Opponent’s mark registered 5+ years ago but they are yet to file their Sec. 8/15 Declaration with the PTO. Section 14 of the Trademark Act (15 USC 1064) limits the grounds upon which we can raise in a petition to cancel filed with the TTAB if the petition is filed more than five years from the date of registration. This limitation of grounds does not depend on their filing of a §15 affidavit. We cannot file a mere cancellation action in federal court (akin to an “in rem” cybersquatting action?), so what is our best option - file an infringement/unfair comp action in federal court and include a prayer asking the Court to order the PTO to cancel the registration? And if so, may it be filed in DC (home of the PTO), or are we forced to file in the home district of the opponent to perfect personal jurisdiction. Any insights would be greatly appreciated!


Dan

Daniel L. Boots
Partner

[D] +1 317 968 5361<tel:+13179685361>

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