How do you prove that your trademark is not similar?
One of the most common rejections of trademark applications is likelihood of confusion. While you have the right to argue against this Section 2(d) refusal, arguing is not always your best option. When a trademark registration is blocking your application, what if you could remove the obstacle by carving an opening? A partial cancellation of a trademark registration is a surgical option to open a door through which your trademark application may progress to an allowance.
Need to win a likelihood of confusion argument and get your trademark application approved? US patent and trademark attorney Vic Lin has an 83% trademark allowance rate. Contact Vic at (949) 223-9623 or email vlin@icaplaw.com to see how we can put our trademark expertise to work for you.
When should you consider a partial trademark cancellation?
A partial cancellation of a registered trademark might be a wise option under the following circumstances:
- The blocking trademark is a registration and not a pending application;
- Only a subset of the goods or services has been cited in the Office Action has been related or identical to your applied-for goods or services; and
- The registered trademark does not appear to be used on those cited goods or services.
Though it is not a requirement, it certainly helps if it appears that the registration is unlikely to defend a partial cancellation. An experienced trademark attorney can sense when a particular registration owner might have a lower probability of responding.
What does a partial trademark cancellation accomplish?
Rather than kill an entire trademark registration, a partial cancellation seeks to remove only certain goods or services from the registration. It is a surgical approach to remove only those problematic items blocking the approval of your trademark application.
The goal is to overcome a likelihood of confusion rejection by removing only those goods or services cited in the Office Action. Your grounds for deleting those products must be based on reasons that can support a cancellation, such as nonuse.
A successful result would still leave the registration intact, albeit with fewer products. After the trademark registration has been successfully restricted, you can then submit an Office Action response or a request to lift suspension of your trademark application.
Why not just file a full trademark cancellation?
A full cancellation might be an option under the right circumstances, but why escalate to a war when you only need to win the battle? This is where an experienced trademark attorney can help you analyze the cited registration to determine if a precise, targeted attack would be wiser.
Moreover, registration owners are less likely to respond to partial cancellation requests. Put yourself in the shoes of a trademark owner. Suppose you own a trademark registration identifying 20 products. A third party requests partial cancellation of one item, and you actually are not selling that product anymore. Are you really going to fight back?
Can you counterclaim to restrict a trademark registration?
In a TTAB trademark opposition or cancellation, the defendant can file counterclaims against the plaintiff’s trademark registrations. So a partial cancellation is available as a potential counterclaim. Under the right circumstances, including such a counterclaim may give the defendant a fallback position to argue no likelihood of confusion between the parties’ respective trademarks.
