Can a US trademark registration based on the Madrid Protocol be canceled?
Not every trademark registered with the USPTO had to have been used in US commerce prior to registration. The Madrid Protocol allows applicants to register a trademark in the U.S. based upon an international registration without having to show prior usage in the U.S. That being said, how can others attempt to cancel a US trademark registration based on the Madrid Protocol?
How to Cancel a US Trademark Registration based on the Madrid Protocol
If a pending trademark application has been rejected on the grounds of a likelihood of confusion over a Madrid Protocol US registration, it may be worth investigating whether the blocking trademark has been used in the U.S. for the registered goods or services.
A trademark registration may be subject to cancellation for abandonment if it can be proven that the Madrid owner has failed to use the mark in U.S. commerce for three consecutive years.
How to Avoid Cancellation of Your Registered Trademark
Foreign owners of U.S. registrations via the Madrid Protocol should take care to use the registered mark promptly after the U.S. registration date, and to avoid a 3-year consecutive period of non-use which would give rise to a legal presumption of abandonment. In particular, registration owners should not merely wait upon the sixth-year deadline under Section 8 or Section 71 to begin using the mark in U.S. commerce.
