[E-trademarks] Needing to Cancel a registration that is over 5 yrs old for LOC

[Stephen McArthur]

Is there any way to cancel a trademark registration for likelihood of
confusion when it's within its 1 year Section 15 window but they haven't
yet filed the declaration?

I know if we file the Cancellation, then pursuant to TMEP 1605.4, they
cannot file the §15 affidavit since there is a pending proceeding. However,
it looks like under 1064, asserting LOC is not allowed after 5 years,
regardless of whether they've actually filed the declaration of
incontestability.

I just want to make sure I am reading this correctly. You cannot file and
win a cancellation proceeding with the TTAB citing likelihood of confusion
for a registration that is over 5 years old, even if they haven't filed
their declaration of incontestability, right?


*The McArthur Law Firm*Stephen Charles McArthur
8383 Wilshire Blvd., Ste. 800
Beverly Hills, CA 90211
(424) 258-6815
www.smcarthurlaw.com

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