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

Fri Feb 14 18:13:30 UTC 2025

          You’re reading it correctly: It’s the fifth anniversary of a registration’s issuance, and not the filing of a declaration of incontestability, that triggers Section 14’s statute of limitations on particular grounds for cancellation. See, e.g., Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 1579 n.6 (Fed. Cir. 1990) (“[S]ection [14] is not dependent on the filing of a declaration under section 15 which provides incontestable rights of use . . . .”); W. Worldwide Enters. v. Qinqdao Brewery, 17 U.S.P.Q.2d 1137, 1139 (T.T.A.B. 1990) (“[A] registration that is over five years old may be cancelled solely on the grounds set forth in Section 14[3], irrespective of whether or not the owner of the registration has filed an affidavit under Section 15.”). In other words, incontestability and the statute of limitations are separate and independent concepts that have only the fifth anniversary of a registration in common.

          The only exception—which has no basis in the statute—is if a registrant puts its registration into play before the registration’s fifth anniversary but a counterclaim to cancel it is filed after that anniversary. See, e.g., Williamson-Dickie Mfg. Co. v. Mann Overall Co., 359 F.2d 450, 453-55 (C.C.P.A. 1966); Sunbeam Corp. v. Duro Metal Prods. Co., 106 U.S.P.Q. 385, 386 (Comm’r Pats. 1955).

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Theodore H. Davis Jr.
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<mailto:TDavis at ktslaw.com>Kilpatrick Townsend & Stockton LLP
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Stephen McArthur via E-trademarks
Sent: Friday, February 14, 2025 1:02 PM
To: Carl Oppedahl <e-trademarks at oppedahl-lists.com>
Cc: Stephen McArthur <stephen at smcarthurlaw.com>
Subject: [E-trademarks] Needing to Cancel a registration that is over 5 yrs old for LOC

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,

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?

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