TMEP 1904.07(a): Invalidation Resulting From Cancellation Due to Third-Party Challenge

This is the October 2015 Edition of the TMEP

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1904.07(a)    Invalidation Resulting From Cancellation Due to Third-Party Challenge

Invalidation may occur due to cancellation proceedings instituted by a third party before the TTAB, under §14 of the Trademark Act, because, for instance, the mark has become generic. See 15 U.S.C. §1064. If the third party is successful and the TTAB issues an order granting the cancellation of the registered extension of protection, the USPTO will cancel the registration in due course. See TMEP §1607 and TBMP §§303, 307–309 regarding cancellation of registration.

Invalidation may also occur pursuant to an order of a federal court of the United States cancelling the registered extension of protection, under §37 of the Trademark Act. See 15 U.S.C. §1119. Such order may result from, for example, infringement proceedings involving the holder and a third party, or the disposal of the holder’s assets. The USPTO will cancel the registration pursuant to the court order. See TMEP §1610 regarding a court order concerning a registration.

Regardless of whether by order of the TTAB or a federal court of the United States, after cancellation, the USPTO will notify the IB that the registered extension of protection to the United States has been invalidated. See TMEP § 1904.07(d) regarding the issuance of the notice of invalidation.