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

Fri Feb 14 18:17:31 UTC 2025

I had a big dispute on this with an opposing counsel. Even when I
explained, they could not understand why we needed the matter concluded
before that 5-year anniversary, since my leverage was a petition to cancel
based on confusion.
Tim Ackermann
The Ackermann Law Firm

E:  tim at ackermannlaw.com
P:  817.305.0690
F:  214.453.0810
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O: 1701 W. Northwest Hwy. Ste. 100
     Grapevine TX 76051

On Fri, Feb 14, 2025 at 12:14 PM Davis, Ted via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

>           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).
>
>
>
>
>
> [image: Kilpatrick Townsend & Stockton LLP]
> Theodore H. Davis Jr.
> TDavis at ktslaw.com
> <TDavis at ktslaw.com>Kilpatrick Townsend & Stockton LLP
> 1100 Peachtree Street NE | Suite 2800 | Atlanta, GA 30309-4528
> *T* 404 815 6534 | *M* 404 213 4967 | *F* 404 541 3172
>
> Kilpatrick Townsend & Stockton LLP
> 3 Times Square | New York, NY 10036
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> My Profile <http://www.ktslaw.com/en/People/D/DavisTheodoreH>| vCard
> <http://www.ktslaw.com/vcard/TheodoreH.Davis.vcf>
>
>
>
> [image: Signature 365 Pixel]
>
>
>
> *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?
>
>
>
> *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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