TMEP 1904.07: Invalidation of Protection in United States

This is the October 2015 Edition of the TMEP

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1904.07    Invalidation of Protection in United States

A registered extension of protection to the United States may be invalidated. See Common Reg. 19. “Invalidation” means a decision by a competent administrative or judicial authority of the United States, revoking or cancelling the effects, in the territory of the United States, of an international registration with regard to all or some of the goods/services covered by a registered extension of protection to the United States. Common Reg. 1(xixbis); see Article 5(6). In other words, a registration is invalidated when it is revoked or cancelled, in whole or in part, pursuant to a decision of the USPTO or by order of a federal court of the United States.

Generally, there are four reasons invalidation of a registered extension of protection to the United States may occur: (1) cancellation proceedings instituted by a third party before the Trademark Trial and Appeal Board (“TTAB”); (2) order of a federal court of the United States; (3) failure to file an acceptable §71 affidavit or declaration; or (4) holder’s voluntary surrender of the registered extension of protection. Each of these reasons is discussed below.

Invalidation may be in whole or in part, that is, it may be as to all or some of the goods/services covered by the registered extension of protection to the United States. See Common Reg. 19(1)(v). In the case of partial invalidation, the USPTO will not cancel the registered extension of protection but, instead, delete the relevant goods/services from the USPTO’s electronic records for the registration. An updated registration certificate will not issue.

The holder has the same rights and remedies as the owner of a national registration issued on the Principal Register by the USPTO. 15 U.S.C. §1141i(b)(2), 37 C.F.R. §7.25. Accordingly, the cancellation procedures mentioned above that result in an invalidation of a registered extension of protection are governed by the substantive and procedural law of the United States, and are the same as for national marks registered by the USPTO. See Guide to International Registration, B.II.91.01–.02.