In the latest issue of the Trademark Reporter, Sandra Edelman discusses the pros and cons of seeking cancellation of a Section 44(e) or 66(a) registration during the three-year period before a statutory presumption (of abandonment) has elapsed, in her article entitled “Why Wait Three Years? Cancellation of Lanham Act Section 44(e) and 66(a) Registrations Based on Non-Use Prior to the Three Year Statutory Period for Presumption of Abandonment.”
Based on the statutory definition and the prima facie evidence of abandonment that arises when there has been proof of non-use of a mark for more than three years, it is undoubtedly easier for a party to prevail on a claim of abandonment when there has been more than three years of non-use. Absent evidence of three years of non-use, however, a party can still succeed on a claim of abandonment, but it will need to carry its burden of persuasion by a preponderance of direct and/or circumstantial evidence that the mark owner has ceased using the mark without an intent to resume use.
[T]here are viable bases for cancelling Section 44(e) and 66(a) registrations on the ground of abandonment prior to the third anniversary of registration. In addition, as the opinions in Honda v. Winkelmann and Sandro Andy demonstrate, Section 44(e) and 66(a) registrations, particularly those that cover an excessive identification of goods and services, may also be vulnerable to cancellation on the ground that there was a lack of bona fide intent to use the mark on each and every good or service covered by the registrations.
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TTABlog note: Again I thank The Trademark Reporter for granting permission to provide links to these two commentaries, which are Copyright © 2014 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 106 TMR No. 6 (November-December 2014).
Text Copyright John L. Welch 2015.