What if someone else's trademark is in your way and that it isn't actively used anymore?
Did you know that there is a process that allows you to cancel that trademark?
Learn more about it by watching this video!
Let's say you file a trademark, and you get a response from the trademark's office that your trademark is confusingly similar to somebody else's trademark, or if you do a trademark search, and you see that there is another trademark that's similar to yours, and you're wondering, "Is there is anything that can be done to get that other trademark off the register so that it no longer poses a threat?" Yes, there is. There is this process called "trademark cancellation proceedings" that exists in both Canada and the U.S. that allows you to request the trademark's office to inquire with the owner of that other trademark to see if they're still around. To see if they're still using the trademark. If they can't prove that at the end of the day, the trademark's office will do what they call "clearing the dead wood", and they will remove that other trademark registration from the register.
In Canada, the request to cancel somebody else's trademark can be filed by anybody. It doesn't have to be the trademark owner. Usually, if a law firm or a trademarking company is handling those things for trademark applicants, it will be the firm that would file that cancellation request in its own name, in order to protect the identity of their client, because the last thing you want to do is attract the other side's attention to your own trademark application. In Canada, you can easily do that.
In the U.S., in order to file a petition for cancellation, you have to actually be the trademark holder who believes that the other trademark is damaging to your own trademark rights. So in Canada, all you have to do is ask the trademark's office to issue a notice to the other trademark holder and say, "Please prove that you're still around. Please prove that you're still using the trademark." In the U.S., you have to explain to them why you believe it's a good idea for the trademark's office to make that request. So you have to prove that you have a genuine interest in killing that other trademark.
To get this whole process running, you have to have a genuine belief that the other trademark is not currently being used by the registered owner. The reason for that is simple. You're not supposed to use the system to just bother trademark owners right and left unless you genuinely believe that they've abandoned their trademark, that they're no longer using them. Unless you're pretty confident that the trademark owner is not around anymore, you can only go after trademarks that have not been used consecutively for three or more years. The reason for that is that in both Canada and the U.S., a trademark will not be canceled if the owner can show that they used it at any time in the preceding three years.
In the U.S. a trademark holder can even save their trademark if they have any intention to resume use in the nearest future. That leaves us with the question, "What if you know that the company went bankrupt? What if you know that they closed the doors, they're not around anymore. They don't have a website, they don't have a Facebook page? They're done. They're gone." If they're not around anymore, most likely they won't respond to the trademarks office's request and their trademark will be canceled. But again, if they've only had their trademark registered for less than three years, you should only use the cancellation proceedings as the last resort only if you know that they're not around anymore. Because again, you're not supposed to pester trademark owners with unfounded demands.
Here's how this works, the trademark's office will issue a cancellation notice to the registrant. Then what happens is totally different between Canada and the U.S. It's actually a lot simpler in Canada. In Canada, once the trademark's office sends them the notice, the registrant, the owner of that other trademark, must file evidence. That evidence must pre-date the date of the notice. What that means is that if the trademark's office sends you the notice on let's say March 1st, you can't quickly put something on your website on March 2nd and say, "Well we're still using it." They have to provide receipts, invoices, labels, screenshots, some other evidence that they were actually using their brand before the notice was sent to them, so before March 1st in our example. If they can't provide that evidence or if they don't respond to the cancellation notice, their trademark will be removed from the Canadian trademark register. It will no longer pose a threat to your trademark application.
If they do respond and they do provide the evidence, then it may become more complicated because at that point you would need to either explain to the trademark's office that their evidence does not really show use or you may go and say, "You know it may show use for this product but it doesn't show use for that product." So you may partially cancel their trademark, but you want to make sure that you've done your research so that again, you're not attacking people for honestly and opening using their trademarks. Okay? So if it's obvious that the mark isn't used then these proceedings will be a waste of time and money.
In the U.S. the system is different. The registrant can actually simply say, "Yeah. Yeah. We're still using it. Now prove that we're not." It's up to the petitioner to provide some evidence that there's nothing out there. Obviously, it's difficult to prove a negative, so if they do respond it may become a lot more difficult for you to cancel somebody else's trademark. It can become a protracted and expensive exercise.
One of the questions we get about cancellation proceedings from our clients, for example, file their trademark and we got a response and office actions citing somebody else's trademark and when we're discussing the strategy of what to do about it, one option is, "Let's try to respond to the office action and overcome it by saying that really the two trademarks are not too close. They're not too similar. They're not confusingly similar. The other option is to see if we can kill the other trademark through cancellation proceedings."
The reason cancellation proceedings are a better option is that when the other trademark is no longer a threat, your trademark will get stronger protection because you won't have to narrow it down to explain to the trademark's office how there is no overlap between the two. When the other trademark is no longer around, you don't have to narrow it down. You don't have to cut corners. You don't have to show that ... Yeah, you only want your trademark to cover you this far, you don't have to worry about the overlap. Instead, you actually want to get as broad protection as you humanly possibly can. When the other trademark is no longer there, that's what you can do.
So I hope this gives you an idea of when and how you would use cancellation proceedings. Again, don't be mean. Don't go after other people's trademarks if you know that they're still around if they're still actively using them. But know that this is one of the tools that you can use if somebody else's trademark is in your way and you know that other owners are not there or they're no longer using their brand.
Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.